ROBBINS RESEARCH INTERNATIONAL, INC. v. Hanok Vijaya Neethipudi / 24 global
Claim Number: FA2203001989776
Complainant is ROBBINS RESEARCH INTERNATIONAL, INC. (“Complainant”), represented by Evan N. Spiegel of Lavely & Singer Professional Corporation, California, USA. Respondent is Hanok Vijaya Neethipudi / 24 global (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tonyrobbinsmentorship.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2022; the Forum received payment on March 25, 2022.
On March 25, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <tonyrobbinsmentorship.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2022, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tonyrobbinsmentorship.com. Also on March 29, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a professional motivational speaker.
Complainant holds a registration for the TONY ROBBINS trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,154,395, registered June 5, 2012.
Respondent registered the domain name <tonyrobbinsmentorship.com> on May 11, 2021.
The domain name is confusingly similar to Complainant’s TONY ROBBINS mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the TONY ROBBINS mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent, for commercial gain, has made the website resolving from the domain name look like an official site of Complainant in order to pass Respondent off as Complainant online for the purpose of selling to unsuspecting Internet users non-genuine or bootleg products purporting to be those of Complainant.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the TONY ROBBINS mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the TONY ROBBINS trademark and service mark sufficient to establish its standing to pursue a claim under the Policy by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a UDRP Complainant’s registration of its mark with the USPTO sufficiently confirmed its rights in the mark under Policy¶4(a)(i). This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Israel). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <tonyrobbinsmentorship.com> domain name is confusingly similar to Complainant’s TONY ROBBINS mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the generic term “mentorship” (which can be taken to refer to an aspect of Complainant’s business) plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016), finding that the addition of a generic term and gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy¶4(a)(i).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to another’s mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
…[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <tonyrobbinsmentorship.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <tonyrobbinsmentorship.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TONY ROBBINS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hanok Vijaya Neethipudi/24 Global,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, for commercial gain, has made the website resolving from the disputed domain name look like an official site of Complainant in order to pass Respondent off as Complainant online for the purpose of selling to unsuspecting Internet users non-genuine or bootleg products purporting to be those of Complainant. This employment is not a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in that subsection of the Policy. See, for example, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018):
Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy¶4(c)(i)
And, because Respondent’s use of the domain name is evidently commercial in character, even if illicitly so, it cannot be said to constitute a legitimate noncommercial or fair use under the terms of Policy¶4(c)(iii).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <tonyrobbinsmentorship.com> domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy¶4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007), finding that a respondent’s registration and use of a disputed domain name, which resolved to a website virtually identical to a UDRP complainant’s official site, disrupted that complainant’s business, and, therefore, constituted bad faith registration and use of the domain name under Policy¶4(b)(iii)).
We are also convinced by the evidence before us that Respondent knew of Complainant and its rights in the TONY ROBBINS mark when it registered
the <tonyrobbinsmentorship.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018):
[T]he fact [that] Respondent registered a domain name that looked identical to the …[complainant’s]… mark and used that … to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.
The Panel therefore finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tonyrobbinsmentorship.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 27, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page