Best Practice Institute, Inc. v. Tim Yandell
Claim Number: FA1303001490837
Complainant is Best Practice Institute, Inc. (“Complainant”), represented by Louis L. Carter, Florida, USA. Respondent is Tim Yandell (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestpracticeinstitute.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2013; the National Arbitration Forum received payment on March 22, 2013.
On March 21, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestpracticeinstitute.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2013 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@bestpracticeinstitute.com. Also on March 27, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns and operates the <bestpracticeinstitute.org> domain name.
2. Respondent registered the <bestpracticeinstitute.com> domain name on June 23, 2008.
3. Complainant has registered the BEST PRACTICE INSTITUTE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,018,575 filed December 2, 2010, registered August 30, 2011).
4. Complainant has been in business since 2001, operating a service related to “a community of leaders dedicated to transforming themselves and their organizations.” Complainant’s subscriber base includes over 42,500 members.
5. Complainant’s faculty includes over 200 experts and world-renown thought leaders
6. Respondent uses the <bestpracticeinstitute.com> domain name to offer a number of services, none of which is related to Complainant or its business.
7. Respondent’s site features the subtitle “Parallel Entrepreneur,” and goes on to explain what a parallel entrepreneur is.
8. The services offered on Respondent’s website include real estate services, mentoring, website services, and “a flip book of pictures to seeking private lenders,” as well as courses on topics such as ‘Breeding mosquitoes for fun and profit’ and ‘How to locate the spare tire in any car.’
9. Respondent is not commonly known by the <bestpracticeinstitute.com> domain name. In fact, Respondent is more commonly known for his other ventures: inetUSA, Financial Freedom Network, i-TravelAgent, and Legacy for Life.
10. Respondent misleadingly diverts customers and clients from Complainant’s site to Respondent’s site with the express intent of commercial gain. This damages Complainant’s reputation and client volume, as Complainant’s current and prospective clients mistakenly visit Respondent’s site when they had in fact intended to visit Complainant’s site.
11. Respondent has intentionally attracted Complainant’s clients to its site by creating confusion in order to promote Respondent’s many other ventures, for which Respondent hopes to procure sales.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BEST PRACTICE INSTITUTE mark. Respondent’s domain name is confusingly similar to Complainant’s BEST PRACTICE INSTITUTE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bestpracticeinstitute.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
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.”).
Complainant provides evidence of its registration of the BEST PRACTICE INSTITUTE mark with the USPTO (Reg. No. 4,018,575 filed December 2, 2010, registered August 30, 2011). This registration confer rights in the mark to Complainant under 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.)
Complainant also asserts common law rights in the BEST PRACTICE INSTITUTE mark dating back to the founding of Complainant’s business sometime in 2001. Complainant asserts that it uses the BEST PRACTICE INSTITUTE mark in connection with the operation of a service related to “a community of leaders dedicated to transforming themselves and their organizations.” Complainant claims that its business has attracted over 200 faculty members and more than 42,500 subscribers. Complainant also claims to own and operate the <bestpracticeinstitute.org> domain name. Complainant has provided minimally sufficient evidence to demonstrate that its use of the BEST PRACTICE INSTITUTE mark has achieved secondary meaning associating the mark with Complainant; thus; Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alludes to the similarity between its claimed BEST PRACTICE INSTITUTE mark and Respondent’s <bestpracticeinstitute.com> domain name. The disputed domain name wholly includes the mark, only deleting the spaces between words and attaching the generic top-level domain (“gTLD”) “.com.” Given the relative insignificance of these changes, the Panel finds that the <bestpracticeinstitute.com> domain name is confusingly similar to Complainant’s BEST PRACTICE INSTITUTE mark for the purposes of Policy ¶ 4(a)(i).
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <bestpracticeinstitute.com> domain name. Complainant claims that Respondent is commonly known for his other ventures: inetUSA, Financial Freedom Network, i-TravelAgent, and Legacy for Life. The WHOIS information on file identifies Respondent as “Tim Yandell,” which the Panel finds to be dissimilar to the <bestpracticeinstitute.com> domain name. In consideration of the evidence present in the record, the Panel determines that Respondent is not commonly known by the <bestpracticeinstitute.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent uses the <bestpracticeinstitute.com> domain name to offer a number of services, none of which are related to Complainant or its business. Specifically, Complainant asserts that Respondent’s site features the subtitle “Parallel Entrepreneur” and goes on to explain what a parallel entrepreneur is, while also providing a variety of services, including real estate services, mentoring, website services, and “a flip book of pictures to seeking private lenders,” as well as courses on topics such as “Breeding mosquitoes for fun and profit” and “How to locate the spare tire in any car.’” Complainant asserts that none of this has anything to do with Complainant or its business. Complainant urges that Respondent misleadingly diverts customers and clients from Complainant’s site to Respondent’s site with the express intent of commercial gain, which damages Complainant’s reputation and client volume, as Complainant’s current and prospective clients mistakenly visit Respondent’s site when they had in fact intended to visit Complainant’s site. The Panel finds that Respondent’s use of the <bestpracticeinstitute.com> domain name does 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). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has intentionally attracted Complainant’s clients to its site by creating confusion in order to promote Respondent’s many other ventures, for which Respondent hopes to procure sales. The Panel agrees that Respondent’s choice of domain name was motivated by an attempt to create confusion with Complainant, and that Respondent hoped to use this confusion to drive Internet traffic to its site in order to generate a commercial gain. As a result, the Panel finds that Respondent has registered and used the <bestpracticeinstitute.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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 Complainant has satisfied 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 <bestpracticeinstitute.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 6, 2013
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