Giant Impact, LLC v. IQ Management Corporation
Claim Number: FA0708001063469
Complainant is Giant Impact, LLC (“Complainant”), represented by Charles
L. McLawhorn, of McAfee & Taft A Professional
Corporation, Tenth Floor, Two Leadership Square, 211 North Robinson,
Oklahoma City, OK 73102-7103.
Respondent is IQ Management Corporation (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <johnmaxwell.com>, registered with Tucows Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@johnmaxwell.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <johnmaxwell.com> domain name is confusingly similar to Complainant’s JOHN C. MAXWELL mark.
2. Respondent does not have any rights or legitimate interests in the <johnmaxwell.com> domain name.
3. Respondent registered and used the <johnmaxwell.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Giant Impact,
LLC, has a license with Mr. John Maxwell, a well-known speaker and author on
leadership, to promote Mr. Maxwell’s seminars and resources. Complainant therefore uses the JOHN C.
MAXWELL mark to promote its products, and holds a registered trademark with the
United States Patent and Trademark Office (“USPTO”) for the JOHN C. MAXWELL
mark (Reg. No. 2,855,728 filed June 2, 2003, issued June 22, 2004). Complainant also registered the
<johncmaxwell.com> domain name to promote its products online.
Respondent, IQ Management
Corporation, registered the <johnmaxwell.com> domain name
on
Complainant has noted that Respondent has previously been
ordered by National Arbitration Forum panels to transfer the domain name
registrations of other domain names that were found to be infringing upon those
complainants’ trademarks. The panels
found that each of the domain names were confusingly similar to the
complainants’ marks, and were registered and used in bad faith by Respondent,
who did not have any rights or legitimate interests in the marks. See Tommy Bahama Group, Inc. v. IQ Mgmt. Corp., FA 601456 (Nat.
Arb. Forum
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Under Policy ¶ 4(a)(i),
Complainant’s rights in the JOHN C. MAXWELL mark date back to Complainant’s
trademark application filing date with the USPTO. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see also National Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum
Complainant filed a trademark application with the USPTO on
Respondent’s <johnmaxwell.com>
domain name contains Complainant’s JOHN C. MAXWELL mark in its entirety except
for the removal of the middle initial “c.”
This does not change the overall impression of Complainant’s mark, and
therefore renders the disputed domain name confusingly similar pursuant to
Policy ¶ 4(a)(i).
The addition of the generic top-level domain (“gTLD”) “.com” is
irrelevant under the Policy. See Compaq Info. Techs.
Group, L.P. v. Seocho, FA
103879 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <johnmaxwell.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 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, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Because Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <johnmaxwell.com> domain name. The WHOIS information identifies Respondent as “IQ Management Corporation,” and Complainant has alleged that Respondent is not licensed or authorized to use Complainant’s JOHN C. MAXWELL mark or any variation thereof. The Panel can find no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <johnmaxwell.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is using the <johnmaxwell.com> domain name to advertise for sale products featuring speeches by Mr. Maxwell as well as other motivational speakers without Complainant’s authorization. This competing use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nationall Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent has engaged in a bad
faith pattern of registering and using trademark-related domain names. Complainant cites several UDRP decisions in
which Respondent was found to have registered and used various
trademark-related domain names in bad faith.
E.g., Tommy
Bahama Group, Inc. v. IQ Mgmt. Corp., FA 601456 (Nat. Arb. Forum
Respondent’s use of the <johnmaxwell.com> domain name to offer Complainant’s products without authorization, as well as the products of Complainant’s competitors, is likely to disrupt Complainant’s business. The disputed domain name diverts potential customers to Respondent’s website for Respondent’s commercial gain, and therefore diverts potential revenue from Complainant to Respondent. Accordingly, the Panel finds that Respondent’s registration and use of the <johnmaxwell.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s use of the <johnmaxwell.com> domain name, which is confusingly similar to Complainant’s JOHN C. MAXWELL mark, also creates a likelihood of confusion among customers searching for Complainant’s products. Customers are likely to mistakenly believe that the products advertised on Respondent’s website that resolves from the disputed domain name are sponsored or endorsed by Complainant. Respondent likely generates revenue from this venture, and is therefore profiting from the goodwill associated with Complainant’s JOHN C. MAXWELL mark. The Panel therefore finds that Respondent registered and is using the <johnmaxwell.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johnmaxwell.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: October 2, 2007
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