The Napoleon Hill Foundation
v. Dan Klatt
Claim Number: FA0707001045245
PARTIES
Complainant is The Napoleon Hill Foundation (“Complainant”), represented by Sana
Hakim, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rediscoverthinkandgrowrich.com>,
registered with Schlund+Partner Ag.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Timothy D.
O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On August 3, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 23, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@rediscoverthinkandgrowrich.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission from Complainant was received and determined
to be complete on
An Additional Submission from Respondent was received in a timely
manner according to the Forum’s Supplemental Rule #7.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(1) The
domain name is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) The
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) The
domain name was registered and is being used in bad faith.
Contention No. 1:
AS TO THE IDENTICAL OR CONFUSINGLY SIMILAR CONTENTION COMPLAINANT
STATES:
Complainant has used the trademark THINK AND GROW RICH since at least
as early as 1946 and owns five U.S. registrations for the mark: (1) U.S. Reg. No.
2,092,144 for computer software for educational use, including cd‑roms,
in the fields of self-development, self-improvement, and personal achievement;
(2) U.S. Reg. No. 1,938,630 for calendars, diaries and memorandum books; (3)
U.S. Reg. No. 1,973,581 for programs and seminars relating to personal
achievement; (4) U.S. Reg. No. 1,534,048 for prerecorded audio and video
cassette tapes; and (5) U.S. Reg. No. 1,533,049 for newsletters and study
guides relating to personal achievement. These registrations are all incontestable
under
The domain name at issue is <rediscoverthinkandgrowrich.com>. The domain
name is confusingly similar to Complainant’s THINK AND GROW RICH trademark and
is clearly intended to trade off Complainant’s substantial goodwill in its
registered trademark. Except for the
additons of the generic element “.com” and the generic terms “rediscover,” the
domain name is identical and confusingly similar to Complainant’s THINK AND GROW
RICH trademark.
Respondent’s
Response to Contention No. 1:
Respondent points out that his product has been out since 2003 and the
domain is the name of his product, “Rediscover Think and Grow Rich.” He argues that he goes overboard on the site
to make sure it’s clear to everyone that it’s based solely on the original
version of Think and Grow Rich, which Complainant has acknowledged is in the
public domain and anyone has a legal right to use
however they see fit.
Respondent contends that all these prominent notices make it clear this
is his product and it draws only from the version of the book that’s out of
copyright which anyone may teach from.
Respondent argues that the domain name is not confusingly similar to a
trademark because the word “Rediscover” means to do back and experience all
over again. That means to him, for
example, go back and dig up the original version of this great book we all know
and love.
Plus, with all the notices and disclaimers, and the fact that
throughout the book he makes it unmistakably clear he is only using The
Original 1937 Version, which anyone may legally teach from, and that he has no
association with them, it’s not confusingly similar or identical at all.
Respondent argues that his product is called “Rediscover Think and Grow
Rich.” That means anyone looking for it
would quite naturally go to <rediscoverthinkandgrowrich.com> to
find it. They would be confused and
probably unable to find it if it were not there. There would be no reason for anything other
than this product to be at the website bearing its name.
Respondent refers to his notes and disclaimers as evidence of his use
in good faith. He states that in fact,
all throughout the web site, he is referring to it as “The Original Version,”
and includes this text about a quarter of the way down from the top, also bold
and highlights:
I
believe one of the key differences is that in “Achievers Mastermind” and
“Rediscover The Original Think and Grow Rich” (and all his work) we use only
The Original 1937 Version of Napoleon Hill’s book, not the later versions that
have been changed.
NOTE: None of his “Original Think and Grow Rich”
materials are associated in any way with the Napoleon Hill Foundation, which
has changed the book several times over the years. His work is only based on The Original 1937
Version.
Complainant’s Additional Submission under Contention No.
1:
Complainant maintains that it owns multiple, incontestible
registrations for the mark THINK AND GROW RICH®, providing prima facie evidence that the mark is distinctive. Respondent argues that by adding the word
“Rediscover” there can be no likelihood of confusion. His arguments demonstrate a gross
misunderstanding of trademark law.
Complainant points out that the National Arbitration Forum previously
ordered the transfers of another domain name, <thinkandgrowrichseminars.com>, registered by the same Respondent to
Complainant. The arbitrator concluded
that the <thinkandgrowrichseminars.com> domain name was confusingly
similar to Complainant’s THINK AND GROW RICH mark. The addition of the term “Seminars” was not
sufficient to distinguish the domain name from Complainant’s registered
mark. Likewise here, Complainant argues,
the addition of the term “Rediscover” to Complainant’s mark is not sufficient
to avoid a finding that the domain name is confusingly similar to Complainant’s
mark.
Respondent’s
Response to Complainant’s Additional Submission:
Respondent asserts that the Foundation is basing its whole argument around whether his domain name is confusingly similar to their trademark.
Respondent states that all Complainant’s arguments hold no merit, because of the fact that there is one domain, <thinkandgrowrich.com>, which itself is in no way affiliated with the Foundation and is owned by an individual just like himself. That domain Respondent asserts is THE domain which uses their trademark, to attract people interested in the book and other materials based upon it. And this domain, <thinkandgrowrich.com>, is the one people would type first, when wanting to learn anything about the book, Think and Grow Rich.
Respondent points
out that <thinkandgrowrich.com> was registered only fairly
recently,
Respondent contends that because someone else was allowed to keep that domain name, all Complainant’s arguments about Respondent using this domain name do not hold any water, as long as this domain is allowed to stay independent of the Foundation.
Respondent states that <thinkandgrowrich.com> is THE website that is confusingly similar – because it is Complainant’s trademark.
Respondent argues that if something identical to their mark is not considered “confusingly similar,” than he fails to understand what issue Complainant might have with his domain name. Further Respondent contends that all potential for confusion “as to the source” disappears because of his good-faith disclaimers and prominent notes about the source of his materials.
Contention No. 2:
AS TO THE RIGHTS AND LEGITIMATES INTERESTS CONTENTION, COMPLAINANT STATES:
Respondent has no legitimate rights in the domain name <rediscoverthinkandgrow rich.com>. The domain name had and has no relevance to Respondent. Respondent was not commonly known as Rediscover Think and Grow Rich prior to obtaining the domain name in dispute and, apart from the domain name registration, is not currently known as Rediscover Think and Grow Rich. Respondent is not a licensee of Complainant’s THINK AND GROW RICH marks and is not otherwise authorized to use Complainant’s marks. Consequently, Respondent has no legitimate business purpose with which is can use the domain name and is not in fact using the domain name for a legitimate business purpose.
Respondent’s Web site at <rediscoverthinkandgrowrich.com> offers an audio program related to financial self-improvement, which is directly competitive to the goods and services provided by Complainant under its THINK AND GROW RICH marks. Such use, however, “does not represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”
Respondent’s
Response to Contention No. 2:
Respondent argues that his product is called “Rediscover Think and Grow
Rich.” That means anyone looking for it
would quite naturally go to <rediscoverthinkandgrow
rich.com> to find it. They would be confused and probably unable to
find it if it were not there. There
would be no reason for anything other than this product to be at the website
bearing its name.
Respondent further argues that the original version of THINK AND GROW RICH is in the public
domain and anyone has a legal right to use it however they see fit.
Complainant’s Additional Submission under Contention No. 2:
Complainant states that Respondent has filed a Response in this
proceeding arguing against the transfer of the disputed domain name on the
grounds that he supposedly has a legitimate interest in using Complainant’s
registered trademark THINK AND GROW RICH®, because the goods he allegedly sells
on his Web site drive from a book that may now be in the public domain. While the original Think and Grow Rich book may be in the public domain, Respondent’s
argument confuses copyright and trademark law, which is ultimately fatal to
Respondent’s defense.
Complainant advises it has never contended, and does not now contend, that Respondent’s sale or adaptation of formerly
copyrighted text that is now in the public domain is unlawful or should be
prohibited. However, Complainant
contends that trademark law and copyright law are separate and independent
bodies of intellectual property: the presence or absence of one does not affect
the other. Therefore, Complainant argues
the fact that Respondent’s product is derived from a work that may be in the
public domain under copyright law, is entirely irrelevant to whether, under
trademark law, Respondent is permitted to use Complainant’s registered
trademark in his domain name.
Complainant argues that under
Respondent’s Additional Submission on Contention No. 2:
Respondent states in the Foundation’s response, they point out that the National Arbitration Forum previously ordered the transfer of <thinkandgrowrichseminars.com> to the Foundation.
He argues that this is apples to oranges, and doesn’t compare to this situation at all. Respondent contends the Foundation owns a trademark on the use of Think and Grow Rich as applied to seminars and so that ruling is inapplicable to this case. While he does not appreciate the decision in that case, he does understand it, as he would if the domain in question today were <thinkandgrowrichbook.com> or <thinkandgrowrichcalendar.com>. Complainant has the trademark for books and calendars, as well.
Respondent argues that the word “Rediscover” is not trademark protected, because it’s generic and refers only to the public domain work.
Contention No. 3:
AS TO THE REGISTRATION AND USE IN BAD FAITH CONTENT, COMPLAINANT
STATES:
Respondent registered the domain name in bad faith. Complainant’s THINK AND GROW RICK marks have
all been registered for seven or more years before Respondent’s registration of
the domain name, constituting constructive knowledge of Complainant’s rights in
the marks. Where the Respondent has knowledge
of another’s trademark rights prior to the registration of an identical or
confusingly similar domain name, bad faith may be presumed.
Respondent’s
Response to Contention No. 3:
Respondent again points out that his product has been out since 2003 and
the domain is the name of his product, “Rediscover Think and Grow Rich.” He goes overboard on the site to make sure
it’s clear to everyone that it’s based
solely on the original version of Think
and Grow Rich, which they have acknowledged is in the public domain and
anyone has a legal right to use however they see fit.
Respondent refers to his notes and disclaimers as evidence of his use
in good faith. He states that in fact,
all throughout the website, he is referring to it as “The Original Version,”
and includes this text about a quarter of the way down from the top, also bold
and highlights:
I
believe one of the key differences is that in “Achievers Mastermind” and
“Rediscover The Original Think and Grow Rich” (and all his work) we use only
The Original 1937 Version of Napoleon Hill’s book, not the later versions that
have been changed.
NOTE: None of his “Original Think and Grow Rich”
materials are associated in any way with the Napoleon Hill Foundation, which
has changed the book several times over the years. His work is only based on The Original 1937
Version.
Respondent contends that all these prominent notices make it clear this
is his product and it draws only from the version of the book that’s out of
copyright which anyone may teach from.
Respondent maintains he is using the domain name in good faith. Respondent states that the original version is
available freely online, and yet fewer than a handful of people are teaching
anything based on Think and Grow Rich,
period. And considering he is offering
“Rediscover Think and Grow Rich” from <rediscoverthinkandgrow rich.com>, how could a reasonable person consider that as being anything other
than good faith?
Complainant’s Additional Response to Contention No. 3:
Complainant states that the disclaimer is insufficient to dispel the
inference of bad faith raised by his use of Complainant’s registered mark for a
website selling competing goods.
Complainant maintains that Respondent’s disclaimer effectively
demonstrates his bad faith by serving as evidence that Respondent known
confusion may be likely.
In any event, under both
Respondent’s
Additional Response to Contention No. 3:
Respondent notes that Complainant contacted him several months ago
about his use of this domain name and expressed their concerns about confusion
with its trademark. Respondent states
that he felt it would be respectful and appropriate for him to allay their
concerns, even if they had no merit, so he made sure there was no way anyone
would be confused. Although he knew he
didn’t have to make these changes, he did it as a good faith gesture, because he
did respect their work and sincerely believe we both would fulfill our work and
serve our purposes by working together.
Respondent states that in the Foundation’s response they assert that they’ve proven his domain is confusingly similar to their trademark, that he has no legitimate right to use his domain and that he registered it and is using it in bad faith.
Actually he states he registered his domain in good faith, to sell the product that’s called “Rediscover Think and Grow Rich”. And that name is obviously quite dissimilar from <naphill.org>.
And considering that <thinkandgrowrich.com> is identical to their registered mark, and that’s not considered confusingly similar, he believes there can be no question about his rights to keep his domain, <rediscoverthinkandgrowrich.com>.
Respondent further argues that considering the two-and-a-half years or so he has spent promoting his Rediscover Think and Grow Rich audio product, and all the related materials he has put out there in the market, with active links to his domain, he believes it’s not only the fair thing to conclude, it’s also the only appropriate decision to make to let him keep this domain.
Finally, Respondent argues that the domain name, <thinkandgrowrich.com>, which promotes “Think and Grow Rich” just as his domain, <rediscoverthinkandgrow rich.com> promotes “Rediscover Think And Grow Rich,” must have also been considered a legitimate use of the Foundation’s registered mark, otherwise they would have taken it away, too, so to be fair, he still maintains that he has a legitimate right to use the domain he’s put out there heavily to sell the product of the same name. Respondent believes that he has shown he is using it in good faith, to sell the product Complainant has acknowledged he has a legitimate right to sell.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
FINDINGS
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
I find the issues on
this element in favor of Complainant.
Complainant asserts
rights in the THINK AND GROW RICH mark through its trademark registrations for
the mark with United States Patent and Trademark Office (“USPTO”) (i.e. Reg.
No. 1,533,049 issued
Complainant contends that the <rediscoverthinkandgrowrich.com> domain name is confusingly
similar to Complainant’s THINK AND GROW RICH mark as the disputed domain name
contains Complainant’s mark in its entirety and adds the generic term
“rediscover” to the beginning of the mark and the generic top-level domain
(“gTLD”) “.com” to the end of the mark.
I find that neither of these additions distinguishes the disputed domain
name from Complainant’s mark within the parameters of Policy ¶ 4(a)(i). See
Westfield Corp. v. Hobbs, D2000-0227 (WIPO
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
I find the issues on
this element in favor of Complainant.
I note that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant
contends that the <rediscoverthinkandgrowrich.com>
domain name resolves to a website that advertises information on an audio
program related to financial self-improvement, which is in direct competition
to the goods and services Complainant provides under the THINK AND GROW RICH
mark. I find that Respondent’s use of
the <rediscoverthinkandgrowrich.com>
domain name is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
I find that there is no evidence to indicate that Respondent is commonly known by the <rediscoverthinkandgrowrich.com> domain name. Respondent’s WHOIS information indicates that Respondent is “Dan Klatt” and Complainant contends Respondent is not authorized to use the THINK AND GROW RICH mark. I find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
In its Additional Submission,
Complainant contends that while Respondent may be authorized to sell an
adaptation of the book Complainant markets under the THINK AND GROW RICH mark
under the provisions of copyright law, under the trademark law at issue in the
instant UDRP dispute, Respondent is not allowed to infringe on Complainant’s
registered mark in order to promote its product. I find that Respondent lacks rights and
legitimate interests in the <rediscoverthinkandgrowrich.com>
domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
I find the issues on this element in favor of Complainant.
Complainant states that
this is not the first UDRP proceeding between these two parties. Rather, Complainant states that in a previous
UDRP proceeding, the <thinkandgrowrichseminars.com> domain name was
transferred from Respondent to Complainant.
See Napoleon Hill Found. v. Klatt,
FA 581920 (Nat. Arb. Forum
Respondent is using the <rediscoverthinkandgrowrich.com>
domain name to advertise an audio program related to financial
self-improvement, which is in competition with Complainant, and presumably for
Respondent’s own commercial gain. I find
that the content of the website that resolves from the <rediscoverthinkandgrowrich.com> domain name, together with
the disputed domain name itself, is capable of creating a likelihood of confusion
as to Complainant’s source, sponsorship, affiliation or endorsement of the
website and disputed domain name. This
use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum
I find that Respondent’s use of a disclaimer on the <rediscoverthinkandgrowrich.com>
domain name does not mitigate the likelihood of confusion that Internet users
will think the disputed domain name is somehow affiliated with Complainant, and
thus does not negate a finding of bad faith registration and use under Policy ¶
4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO
Respondent makes the
additional point that a website was registered in May of 2004 with the domain
name of <thinkandgrowrich.com> and it is owned by an individual and not
by Complainant. He argues that is this
website is permitted to go unchallenged by Complainant when it is obviously a
violation of Complainant’s trademark and is obviously confusingly similar. He contends that Complainant should challenge
that website and not his.
I do not know the
circumstances surrounding that situation.
Research does reveal that this particular domain name was ordered
transferred to Complainant in Napoleon
Hill Found. v. <thinkandgrowrich.com>, D2002–0228
(WIPO May 14, 2002).
In any event this
particular circumstance and the reasons behind it are irrelevant to this
proceeding. Each case must be decided on
its own merits.
Respondent makes the
further argument that as Complainant does not own various other domain names
incorporating its THINK AND GROW RICH mark, it follows that Complainant does
not have rights in the disputed domain name.
However, research has discovered that Complainant is currently the owner
of the <thinkandgrowrich.org>, <thinkandgrowrich.net>,
<newthinkandgrowrich.com>, <thenewthinkandgrowrich.org> and
<thinkandgrowrichinstitute.com> domain names.
In a similar situation, a
respondent contended that failure to register the domain name at issue in that
case, which contained the complainant’s mark, prevented the complainant from
having rights in the disputed domain name.
The panel in that proceeding explicitly rejected the respondent’s contention,
instead finding that “[t]rademark owners are not required to create ‘libraries’
of domain names in order to protect themselves, and there are strong policy
reasons against encouraging this behavior.” Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO
I determine that each
UDRP proceeding should be examined on it own merits, without regard to other
considerations not relevant to the disputed domain name.
DECISION
Having established all three elements required under the ICANN Policy, I
conclude that relief shall be GRANTED.
Accordingly, it is Ordered that the <rediscoverthinkandgrowrich.com>
domain name be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: September 14, 2007
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