Napoleon Hill Foundation v.
pmweb
Claim Number: FA0907001275894
PARTIES
Complainant is Napoleon Hill Foundation (“Complainant”), represented by Sana
Hakim, of K&L Gates LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flipandgrowrich.com> and
<flipandgrowrich1.com>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 27, 2009; the
National Arbitration Forum received a hard copy of the Complaint on July 28, 2009.
The Complaint named pmweb (d/b/a Premier Mentoring, Inc.) as the
Respondent.
On July 28, 2009, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <flipandgrowrich.com> and
<flipandgrowrich1.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is
the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent
is bound by the GoDaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On July 29, 2009, the National Arbitration Forum informed Complainant
that the Complaint was deficient for incorrectly identifying the
Respondent. Complainant electronically
submitted an Amended Complaint to the National Arbitration Forum on July 29, 2009; the National Arbitration Forum
received a hard copy of the Amended Complaint on July 30, 2009. The Amended
Complaint named pmweb as the Respondent.
On July 30, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 19, 2009 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@flipandgrowrich.com and postmaster@flipandgrowrich1.com by e-mail.
Respondent requested and received a 20-day extension, setting a
deadline of September 8, 2009 by which Respondent could file a Response to the
Complaint. A timely Response was
received and determined to be complete on September
4, 2009.
On September 10, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the <flipandgrowrich.com> and <flipandgrowrich1.com> domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has used the trademark THINK AND GROW RICH since at least as early as 1948 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. Complainant also contends that it owns a Canadian trademark registration for THINK AND GROW RICH, namely, Reg. No. TMA 470,761, for prerecorded audio and video cassette tapes, newsletters and study guides relating to personal achievement, calendars, diaries and memorandum books.
Complainant states that the <flipandgrowrich.com> and <flipandgrowrich1.com> domain names are confusingly similar to Complainant’s THINK AND GROW RICH trademark and are clearly intended to trade off Complainant’s substantial goodwill in its registered trademark.
Complainant asserts that Respondent has no legitimate rights in the <flipandgrowrich.com> and <flipandgrowrich1.com> domain names because the domain names had and have no relevance to Respondent and because Respondent is not currently known as Flip and Grow Rich apart from the domain name registrations. Complainant further contends that it has not licensed or authorized Respondent to use its marks. Complainant further contends that Respondent’s website, which offers a print and video program related to financial self-improvement through real estate investments, competes with its own business, which is offering seminars and various products related to personal achievement, including programs, books, audio and video cassettes, calendars, diaries, memorandum books, newsletters, study guides, CD-ROM programs and computer software.
Complainant asserts that is marks
were registered for at least seven years before Respondent’s registration of the
<flipandgrowrich.com> and <flipandgrowrich1.com> domain
names and thus that Respondent had constructive knowledge of its marks. Complainant further asserts that Respondent
registered the domain names in bad faith by intending to attract, for financial
gain, Internet users to Respondent’s Web sites by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Web sites or of a product or service
promoted via those Web sites.
B. Respondent
Respondent contends that Complainant has failed to address the
difference between its marks and the disputed domain names, namely the
difference between the words “think” and “flip.” Respondent further contends that common sense
dictates that “think and grow rich” and “flip and grow rich” are not
confusingly similar, especially since Complainant does not have other
trademarks employing the phrase “and grow rich” and that each of the words
making up the phrase “think and grow rich” are common words found in a
dictionary. Respondent asserts that
other than the fact that “think” and “flip” are both verbs, there is nothing
even remotely identical or confusingly similar between them. Respondent states that they do not
look alike, they do not sound alike, they are not spelled alike, and they do
not have similar definitions.
Respondent further contends that its website relates exclusively to real estate investment strategies, which is different from the numerous classes for which Complainant’s marks are registered. Respondent further states that the word “flip” is a well-known term in the real estate industry used to describe the action of buying, improving, and then quickly selling real estate for a profit. The term “flip” thus has a specific meaning that is quite different from the meaning of the term “think.” Respondent also asserts that Complainant’s goods and services do not relate to flipping real estate, and thus it does not compete with Complainant.
Respondent also contends that the <flipandgrowrich.com> and <flipandgrowrich1.com> domain names are being used in connection with a bona fide and unique offering of goods and services relating to a real estate investment program involving finding, funding, fixing and flipping real estate properties (known in the industry simply as “flipping”) in order to make a profit. For example, Respondent sells a book with the title “Flip and Grow Rich: The Heart and Mind of Real Estate Investing” on its website.
Respondent contends that it did not have actual knowledge of
Complainant’s mark at the time it registered the <flipandgrowrich.com> and <flipandgrowrich1.com> domain
names, and thus that it did not register the domain names to attract
Internet users by creating a likelihood of confusion.
FINDINGS
The Panel finds that (1) the <flipandgrowrich.com> and <flipandgrowrich1.com> domain names are not confusingly
similar to Complainant’s THINK AND GROW RICH mark; (2) Respondent has rights or
legitimate interests in the disputed domain names; and (3) Respondent did not
register and is not using the domain names in bad faith.
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.
The <flipandgrowrich.com> and <flipandgrowrich1.com> domain names are not confusingly similar to Complainant’s mark THINK AND GROW RICH. The domain names start with the word “flip” while Complainant’s mark starts with the word “think.” The words “think” and “flip” have entirely different meanings, do not have similar sounds, and do not have similar spellings.
Although the disputed domain names and Complainant’s mark all contain the phrase “and grow rich,” the presence of common words is not sufficient for a finding of confusing similarity. See Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to the complainant’s CLUB 18-30 trademark); see also Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names, <tillpaydayloan.com>, <tillpaydayloans.com>, <untilpaydayloan.com>, and <untilpaydayloans.com> are not identical or confusingly similar to the complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY LOANS trademarks and service marks).
Here, the disputed domain names are not confusingly similar even though they all contain the phrase “and grow rich.” Having “flip” instead of “think” as the initial word changes the meaning of the phrase. The phrase “think and grow rich” is general and does not suggest real estate transactions, while the phrase “flip and get rich” suggests “flipping” real estate to get rich.
Complainant has not
shown that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶ 4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent contends that the <flipandgrowrich.com> and <flipandgrowrich1.com> domain names are being used in connection with a bona fide and unique offering of goods and services relating to a real estate investment program involving finding, funding, fixing, and flipping real estate properties (known in the industry simply as “flipping”) in order to make a profit. Respondent also asserts that it sells a book with the title “Flip and Grow Rich: The Heart and Mind of Real Estate Investing” on its website. Complainant has not made any attempt to show that Respondent’s use is not bona fide.
The Panel thus
finds that Respondent has rights or legitimate interests in the disputed domain
names.
See Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Nat. Arb. Forum
Jan. 18, 2007) (“Respondent makes a bona fide offering of goods and
services in providing investment products and services to people wishing to
consider investment in Complainant’s financial products and services.”); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the
respondent overcame the complainant’s burden by showing it was making a bona
fide offering of goods or services at the disputed domain name).
Complainant has not shown bad faith
registration and use under Policy ¶ 4(a)(iii).
See Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that the respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that general allegations of bad faith without supporting facts or
specific examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), the Panel
also finds that Respondent did not register or use the disputed domain names in
bad faith pursuant to Policy ¶ 4(a)(iii).
See Lockheed Martin Corp.
v. Skunkworx Custom Cycle,
D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith
registration and use was moot once the panel found the respondent had rights or
legitimate interests in the disputed domain name); see also Vanguard Group
Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18,
2007) (“Because Respondent has rights and legitimate interests in the disputed
domain name, his registration is not in bad faith.”).
DECISION
The Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: September 28, 2009
National
Arbitration Forum
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