Robbins Research
International, Inc. v. Netmarker Kft.
Claim Number: FA1005001326911
PARTIES
Complainant is Robbins Research International, Inc. (“Complainant”), represented by Evan
N. Spiegel of LAVELY & SINGER PROF. CORP.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anthony-robbins.org>, registered
with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically May 27, 2010.
On May 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <anthony-robbins.org> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of June 28,
2010, 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@anthony-robbins.org. Also on June 8, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete June 9, 2010.
On June 15, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary
Issue: Consent to Transfer
In the Response, Respondent stated its consent to transfer the <anthony-robbins.org> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
Although the Panel is permitted to forego the traditional UDRP analysis in such
circumstances and order an immediate transfer of the <anthony-robbins.org>
domain name, this Panel does not choose to do so because Complainant has
not implicitly consented in its Complaint
to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer”
approach is but one way for cybersquatters to avoid adverse findings against
them. In Graebel
Van Lines, Inc. v.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant made the following allegations in
its Complaint:
1. Respondent filed a domain name that is identical
to Complainant’s protected mark.
2. Respondent has no rights to or legitimate
interests in the domain name containing in its entirety Complainant’s protected
mark.
3. Respondent acted in bad faith in registering
and using a domain name containing Complainant’s protected mark.
4. Heretofore,
Respondent has refused to transfer the name to Complainant.
B. Respondent made the following points in its
Response:
1. Respondent urges that it registered the name
for and with permission of one Oren Greenberg d/b/a MarketingFrame Ltd. and
Growth Foundation.
2. Respondent states that he agrees to a finding
by the Arbitrator in favor of Complainant.
3. Respondent states that he agrees to stipulate
to an order granting and directing the transfer of the Domain Name to
Complainant.
4. Respondent also stated he agrees to stipulate
to the factual basis of the Complaint.
5. Respondent did not otherwise address the
required three-pronged showing.
C. The Arbitrator received no Additional
Submissions.
FINDINGS
Complainant has legal rights to the mark contained within the disputed
domain name that Respondent registered, which the Arbitrator finds is identical
to Complainant’s protected mark.
Respondent failed to show rights to use Complainant’s protected mark in
a domain name.
Respondent admits the factual basis of Complainant’s allegations, which
show bad faith registration and use.
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 Complainant to 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) 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.
Complainant established rights in the ANTHONY ROBBINS mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 2,305,962 issued Dec. 18, 2007). The Panel finds that Complainant established rights under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO for its ANTHONY ROBBINS mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant urges that the disputed domain name is identical to its
ANTHONY ROBBINS mark. Placing a hyphen
in the space between the terms of Complainant’s mark and adding the generic
top-level domain (“gTLD”) “.org” does not distinguish the disputed domain name from
Complainant’s mark. The Panel finds that
Respondent’s <anthony-robbins.org> domain name is identical to Complainant’s
ANTHONY ROBBINS mark under Policy ¶ 4(a)(i). See Am.
Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb.
Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic
top-level domain, such as ‘.com,’ ‘.net,’
‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed
domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(holding “that the use or absence of punctuation marks, such as hyphens, does
not alter the fact that a name is identical to a mark"); see also Sea World, Inc. v. JMXTRADE.com, FA
872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely
a functional element required of every domain name, the <shamu.org>
domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The
Panel finds that the disputed domain name is identical to Complainant’s
protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden of proof shifts to Respondent to show that it does have such rights
or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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
interests in the subject domain names.”).
Complainant urges that it never authorized Respondent to use the ANTHONY ROBBINS mark in any way, and that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information for the disputed <anthony-robbins.org> domain name identifies “Netmarker Kft.” as the registrant of the domain name. The Panel finds 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 was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends
as well that Respondent has been using the disputed domain name to market,
advertise, and display third-party links to various websites and businesses,
some of which are in competition with Complainant. Further, Complainant argues that Respondent
attempts to appear as though it is Complainant or that it is sponsored by or
affiliated with Complainant through Respondent’s use of Complainant’s mark and
pictures of Complainant on Respondent’s website. Complainant also submits evidence to show
that Respondent attempts to register Internet users for events that are
purported to be administered by Complainant.
Complainant contends that Respondent’s
use of the disputed domain name is not in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Respondent’s use of the
disputed domain name to both pass itself off as Complainant and to sell
competing products or to advertise third-party companies that are competitors
of Complainant is not a use in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid,
D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the
disputed domain name to generate revenue via advertisement and affiliate fees
is not a bona fide offering of good or services); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb.
Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s
LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website
for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see
also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May
30, 2003) (finding that the respondent attempts to pass itself off as the
complainant online, which is blatant unauthorized use of the complainant’s mark
and is evidence that the respondent has no rights or legitimate interests in
the disputed domain name).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The
Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that
Respondent’s use of the disputed domain name to divert Internet users to the
competitors of Complainant and Respondent’s use of the disputed domain name to
sell products that compete with those Complainant offers both have been found by
previous panels to be conduct that supports findings of bad faith registration
and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
Complainant urges that Respondent is using the <anthony-robbins.org> domain name to intentionally attract Internet users to its website where Respondent receives financial benefit from the sale and advertisement of Complainant’s goods. Complainant asserts that Respondent is creating a likelihood of confusion for Internet users as to the owner and sponsor of the website that resolves from the disputed domain name by using Complainants pictures and slogans as well as Complainant’s entire mark on Respondent’s website. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to advertise and sell Complainant’s products without authorization and such use is likely to cause Internet users to be confused as to the sponsorship or affiliation of the website. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The
Panel finds that Respondent registered and used the disputed domain name in bad
faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anthony-robbins.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 29, 2010
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