The Napoleon Hill Foundation v. Steve Paris
Claim Number: FA1011001360937
Complainant is The Napoleon Hill Foundation (“Complainant”), represented by Sana Hakim of K&L Gates LLP, Illinois, USA. Respondent is Steve Paris (“Respondent”), represented by Cynthia Johnson Walden of Fish & Richardson P.C., Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on November 30, 2010.
On December 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@lawsofsuccesstv.com, postmaster@1925lawofsuccess.com, postmaster@thelawsofsuccesstv.com, postmaster@lawofsuccesstv.com, postmaster@thelawofsuccess.com, postmaster@thelawofsuccesstv.com, postmaster@lawofsuccessaudio.com, postmaster@lawofsuccess1925.com, postmaster@originallawofsuccess.com, and postmaster@lawofsuccessin15lessons.com. Also on December 3, 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 on December 27, 2010.
On December 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names are identical to Complainant’s LAW OF SUCCESS mark.
2. Respondent does not have any rights or legitimate interests in the <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names.
3. Respondent registered and is using the <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names in bad faith.
B. Respondent
1. Respondent’s registered domain names <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> are not confusingly similar to Complainant’s trademark.
2. Respondent possesses rights and legitimate interests in the <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names.
3. Respondent’s registration of the domain names <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> were not registered and are not being used in bad faith.
Complainant is a non-profit corporation established to foster, perpetuate and disseminate the lifetime research, writing and teachings of Dr. Napoleon Hill by publication and instruction. Complainant, through licenses, offers seminars and various products related to personal achievement, self-improvement and self development. Complainant provides these goods and services throughout the world under various trademarks, including several LAW OF SUCCESS marks as early as 1998. It registered three LAW OF SUCCESS marks with the U.S. Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,178,727 for pre-recorded audio and video cassettes relating to personal achievement registered August 4, 1998; 2,251,565 for newsletters and printed teaching activity guides relating to personal achievement, calendars, diaries, memorandum books registered June 8, 1999; and 2,270,893 for education and entertainment services; namely, providing workshops and seminars relating to personal achievement and presenting awards relating to personal achievement registered August 17, 1999). These registrations are all incontestable under U.S. Trademark law.
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:
(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.
Complainant has rights in the NAPOLEON HILL mark as determined by its registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds the disputed domain names are confusingly similar to Complainant’s LAW OF SUCCESS mark. Each of the disputed domain names includes Complainant’s mark with one or more of the following modifications: the addition of the letter “s”; the addition of a generic or descriptive term, phrase, or date; and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding the letter “s” to Complainant’s mark nevertheless renders the disputed domain names confusingly similar to Complainant’s mark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that the presence of a generic or descriptive term, phrase, or date does not alter the fact that the disputed domain names are confusingly similar to Complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also H-D Michigan, Inc. v. Fishkind, FA 139691 (Nat. Arb. Forum Feb. 13, 2003) (holding the <harleydavidson1903-2003.com> domain name to be confusingly similar to the HARLEY DAVIDSON mark despite the addition of the dates “1903” and “2003”). Finally, the Panel concludes that an appended gTLD is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s LAW OF SUCCESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The record is absent evidence, including Respondent’s WHOIS information, which indicates that Respondent is commonly known by the disputed domain names, all containing the phrase “LAW OF SUCCESS,” which is also Complainant’s registered trademark. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
The evidence presented indicates Respondent’s <lawsofsuccesstv.com> domain name resolves to a website that promotes personal achievement and self-improvement and offers a print copy of Napoleon Hill’s Law of Success book, which competes with the goods and services provided by Complainant under its LAW OF SUCCESS mark. The Panel finds that using the disputed domain name in connection with a commercial website competitive with Complainant does not comport with the bona fide offering of goods or services or legitimate noncommercial or fair use requirements of Policy ¶¶ 4(c)(i) and 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)).
Also, the evidence presented indicates that Respondent’s <1925lawofsuccess.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com> and <lawofsuccessin15lessons.com> domain names all resolve to portal pages displaying pay-per-click links. The Panel finds that using the disputed domain names to host pay-per-click links to third-party websites does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Further, the evidence presented shows that Respondent’s <thelawofsuccess.com> domain name resolves to what seems to be a page used to test the operation of Respondent’s web server. It appears that the website does not offer or purport to offer anything having to do with the “Law of Success.” Complainant also argues that the <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, and <thelawofsuccesstv.com> domain names are inactive, resolving to web pages with no active content. The Panel finds that Respondent’s failure to actively use these disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The evidence presented indicates the <lawsofsuccesstv.com> domain name resolves to a website offering goods and services competitive with the goods and services provided by Complainant under its LAW OF SUCCESS mark. The offering of these competing goods at a domain name which appropriates Complainant’s mark disrupts Complainant’s business. The Panel finds that Respondent has shown bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The evidence presented indicates Respondent’s <lawofsuccesstv.com> domain name resolves to a commercial website, selling Napoleon Hill’s Law of Success. Respondent appears to be attempting to use Complainant’s LAW OF SUCCESS mark in the disputed domain name to attract consumers, create confusion about Respondent’s affiliation with Complainant, and profit from the commercial sale of the book. The Panel finds this indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The evidence presented indicates the <1925lawofsuccess.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com> and <lawofsuccessin15lessons.com> domain names resolve to pay-per-click hosting sites. It appears the disputed domain names intend to attract Complainant’s intending consumers, confuse them as to any affiliation between Respondent and Complainant, and profit from them in the form of pay-per-click fees when they click on any of the links. The Panel finds that these activities demonstrate Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The evidence presented indicates the <thelawofsuccess.com> domain name resolves to an inactive website with no content other than a description of how the webpage is used to test the operation of Respondent’s web services. The domain names <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, and <thelawofsuccesstv.com> domain names resolve to inactive websites with no displayed content. The Panel finds that failure to actively use these disputed domain names reveals bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lawsofsuccesstv.com>, <1925lawofsuccess.com>, <thelawsofsuccesstv.com>, <lawofsuccesstv.com>, <thelawofsuccess.com>, <thelawofsuccesstv.com>, <lawofsuccessaudio.com>, <lawofsuccess1925.com>, <originallawofsuccess.com>, and <lawofsuccessin15lessons.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 10, 2011
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