Diamond Heart and Training Institute, Inc. v. Malcolm McAuliffe
Claim Number: FA1104001385352
Complainant is Diamond Heart and Training Institute, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Malcolm McAuliffe (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diamondheartawareness.com>, registered with EVERYONES INTERNET, LTD. d/b/a RESELLONE.NET.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2011; the National Arbitration Forum received payment on April 22, 2011.
On April 25, 2011, EVERYONES INTERNET, LTD. d/b/a RESELLONE.NET confirmed by e-mail to the National Arbitration Forum that the <diamondheartawareness.com> domain name is registered with EVERYONES INTERNET, LTD. d/b/a RESELLONE.NET and that Respondent is the current registrant of the name. EVERYONES INTERNET, LTD. d/b/a RESELLONE.NET has verified that Respondent is bound by the EVERYONES INTERNET, LTD. d/b/a RESELLONE.NET 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2011 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@diamondheartawareness.com. Also on April 26, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <diamondheartawareness.com> domain name is confusingly similar to Complainant’s DIAMOND HEART mark.
2. Respondent does not have any rights or legitimate interests in the <diamondheartawareness.com> domain name.
3. Respondent registered and used the <diamondheartawareness.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diamond Heart and Training Institute, Inc., is an educational branch of The Ridhwan Foundation, an organization devoted to personal spiritual development and the actualization of individual human potential. Complainant produces and distributes teaching and training materials and designs and hosts seminars and workshops. Complainant owns a trademark registration for the DIAMOND HEART mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,893,497 issued October 12, 2004). Complainant also owns a trademark registration with the Irish Patents Office (“IPO”) for the ALMAAS DIAMOND HEART RETREATS AND WORKSHOPS mark (Reg. No. 224409 issued May 14, 2002).
Respondent, Malcolm McAuliffe, registered the disputed domain name on January 21, 2010. The disputed domain name resolves to a website that offers educational and spiritual services in competition with Complainant.
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.
Complainant asserts rights in its DIAMOND HEART mark based on its registration of the mark with the USPTO (Reg. No. 2,893,497 issued October 12, 2004). Complainant also asserts rights in the ALMAAS DIAMOND HEART RETREATS AND WORKSHOPS mark, registered with the IPO (Reg. No. 224409 issued May 14, 2002). The Panel finds that Complainant’s trademark registrations are sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See 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 Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <diamondheartawareness.com> domain name is confusingly similar to Complainant’s DIAMOND HEART mark. The disputed domain name incorporates Complainant’s entire mark, absent the space between the terms, and adds the descriptive term “awareness” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive term does not distinguish a domain name from a mark. See Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”). The Panel also finds that the removal of a space and addition of a gTLD do not distinguish a disputed domain name from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Therefore, according to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <diamondheartawareness.com> domain name is confusingly similar to Complainant’s DIAMOND HEART mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that, based on the arguments in the Complaint, Complainant has established a prima facie case in support of its contentions. Respondent has failed to submit a Response to these proceedings. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not affiliated with, nor has it been licensed or authorized by, Complainant to use the DIAMOND HEART mark. The WHOIS information indicates that the registrant of the disputed domain name is “Malcolm McAuliffe.” The Panel can find nothing in the WHOIS information, or the record as a whole, that would indicate that Respondent is commonly known by the <diamondheartawareness.com> domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant asserts that Respondent is using the confusingly similar disputed domain name to offer educational and spiritual services similar to those offered by Complainant under its DIAMOND HEART mark. The Panel finds that Respondent’s use of the <diamondheartawareness.com> domain name to offer services that directly compete with Complainant is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that Respondent’s registration and use of the disputed domain name to offer services that directly compete with Complainant constitutes a disruption of Complainant’s mark and is evidence of bad faith under Policy ¶ 4(b)(iii). See 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).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Presumably, Respondent profits in some way from its promotion and marketing of its own educational and spiritual services on the website resolving from the <diamondheartawareness.com> domain name. Respondent likely registered and is using the confusingly similar disputed domain name in an attempt to profit from the confusion created among Internet users as to Complainant’s affiliation or endorsement of the disputed domain name and its resolving website. The Panel finds this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <diamondheartawareness.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 27, 2011
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