DECISION

 

The Prem Rawat Foundation v. Jeff Leason

Claim Number: FA0401000231883

 

PARTIES

Complainant is The Prem Rawat Foundation (“Complainant”), represented by Helene Godin, of Wolff & Godin, 118 West 79th Street 1B, New York, NY 10024.  Respondent is Jeff Leason (“Respondent”), 5663 Balboa Ave. #327, San Diego, CA 92111.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tprf.biz>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 28, 2004; the Forum received a hard copy of the Complaint on January 28, 2004.

 

On January 28, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <tprf.biz> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 24, 2004 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@tprf.biz by e-mail.

 

Respondent failed to submit its Response by the deadline February 24, 2004 set forth in accordance with ICANN Rule 5(a) and filed its Response on February 26, 2004. Nevertheless, the Panel elects to accept Respondent’s submissions.  See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.").

 

On March 11, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

The Prem Rawat Foundation (“TPRF”), is a duly authorized charitable non-profit organization registered with the Internal Revenue Service as a 501(c) 3 tax-exempt entity.  The purpose of TPRF is to disseminate a message of peace through the understanding of the teachings of Prem Rawat, a world-acknowledged teacher and public speaker on the subject of inner peace.

 

            The TPRF mark is valid and subsisting on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) as Reg. No. 2,779,125 for classes 45, 9, 16, and 41.

 

            Complainant is the owner of the following domain names: <tprf.org>; <tprf.net>;  <tprf.info>.

 

            Complainant is the owner and bona fide senior user of the TPRF trade name, has been using the TPRF mark in interstate and international commerce and communications and has developed considerable goodwill since first use in 2002.

 

            Complainant’s substantial advertising and promotion of the TPRF mark and domain names has created significant goodwill and widespread public recognition.    The genuine TPRF website is the primary source of information and material about this message, receiving thousands of unique page visits each month.

 

            Respondent registered <tprf.biz> on or about May 5, 2003. The domain name registered by Respondent, <tprf.biz>, is confusingly identical to Complainant’s registered TPRF mark.  The counterfeit domain name intentionally incorporates the TPRF mark in a thinly veiled attempt to re-direct Internet traffic and to dilute the goodwill rightfully belonging to Complainant. The only difference between the TPRF mark and <tprf.biz> is the addition of the generic top-level domain (gTLD) “biz.” 

 

            Respondent has no rights or legitimate interests in the <tprf.biz> domain name. Complainant has not licensed or otherwise permitted Respondent to use the TPRF mark. To Complainant’s knowledge, Respondent has never been commonly known by TPRF and has never acquired trademark or service mark interests in such name.  Given Complainant’s established use of the TPRF mark, it is unlikely that Respondent is commonly known by the TPRF name.

 

            Respondent has no protectible fair use interests in the misuse of the TPRF mark, because the counterfeit domain name does not point to a page about TPRF.  When readers looking for TPRF type in <tprf.biz>, they are forcibly re-directed (thorough unseen computer scripts) to a website called “Roger’s House Of Maharaji Drek” (“The Drek Page”) (<oz.net/~drek>).  This website is a neurotic hodge-podge of incoherent ramblings and obscene and offensive images, but does not on its face present social commentary about TPRF.

 

            The Drek Page contains links to other websites, including hate speech websites, the creators of which have recently been enjoined from illegally distributing stolen computer data and files of a proprietary and private nature. Because Respondent does not use <tprf.biz> to comment upon TPRF, and uses it as a means to divert traffic to other pages, many of an unlawful nature, it is clear Respondent has no legitimate interest in using TPRF in its domain name.

 

            The Drek Page was created as early as 1999, which long precedes the incorporation of TPRF in 2002.  It is impossible to argue that Respondent must have the <tprf.biz> domain in order to have its page accessed:  Respondent was apparently able to promote its “thoughts” to a worldwide audience prior to the existence of the TPRF.  Transferring the domain name to Complainant cannot deprive Respondent of any platform from which to distribute its “message.”

 

            Respondent’s intention of driving Internet traffic away from Complainant through the use of an identical domain name is prima facie evidence of bad faith.

 

            B. Respondent

 

            Respondent’s domain name <tprf.biz> is not confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has a registered trademark (Reg. No. 2,779,125) filed with the USPTO in May, 2002, solely in the word mark and design  “Prem Rawat” and not to “TPRF” as Complainant suggests.

 

            In addition to failing to establish that Complainant has a registered trademark in “TPRF,” Complainant has also failed to establish that Complainant has exclusive common law rights to the mark “TPRF.” An Internet search conducted on <google.com> elicited the fact that TPRF is an acronym for many other things besides The Prem Rawat Foundation, e.g., Texas Photo Record File (<texasbirds.org/tbrc/ar2000>), Torpedo Run Facility (<efdpac.navfac.navy.mil/divisions/environmental/pmrfff1>), Tobacco Policy Rating Form (<tc.bmjjournals.com/cgi/content/abstract/5/4/286>), Thymic Plasma Recirculating Factor (<jimmunol.org/cgi/content/abstract/122/2/414>), among others.

 

            Respondent does not dispute that Complainant is the owner and bona fide senior user of the mark “Prem Rawat.” However Complainant is not the owner and bona fide senior user in the mark “TPRF.”  Complainant has presented no evidence that it has used “TPRF” in interstate and international commerce, nor any evidence demonstrating that it has developed any goodwill, let alone considerable goodwill in “TPRF.”  Nor can it, since “TPRF” is, as demonstrated above, an acronym for many things besides Complainant.

 

            On Complainant’s own website, located at the <tprf.org> domain name, there are approximately 15 pages of content and only once is “TPRF” ever used as an identifying acronym.  Of course, “tprf” is used in URLs.

 

            The <tprf.com> domain name was registered by a Panama corporation with contacts in Riga, Lativa.  The <tprf.com> domain name was registered on December 15, 1999.  Unless the Complainant is also doing business as Sentra Holdings Ltd., Complainant is already in the position of not having exclusive use for all possible “TPRF” gTLDs.  Clearly, if Complainant had a real concern about trademark encroachment they would have selected a different acronym and domain name since <tprf.com> was already registered.

 

            Complainant has neither a registered trademark nor exclusive common law rights to the mark “TRPF.”

 

            The use of a particular domain name will not cause a likelihood of confusion among consumers with respect to the trademark holder's use of the trademark in connection with its business, where the trademark holder does not have exclusive claim to its trademark, the website's content is extraordinarily different from the trademark holder's products, and the website has little to do with commerce.  Based on these factors, Respondent’s site does not cause a likelihood of confusion with Complainant’s use of the TPRF mark.  Complainant does not have exclusive claim to the TPRF mark.  Further, Respondent’s website does not purport to “offer information in the field for philosophy via the Internet” (as specified in Complainant’s Prem Rawat trademark registration for the identification of goods and services - see Exhibit A).  Instead, Respondent’s website is a social commentary, remarking on an organization with which Respondent’s beliefs differ. 

 

            Finally, Respondent neither engages in commerce on its site, nor does Respondent link to any sites that engage in commerce.

 

FINDINGS

Complainant does not have registered trademark rights in “TRPF” but rather has colorable common law rights in that mark.

 

Respondent has never been known as TRPF and has no claim of rights or interest in the mark TRPF.

 

Respondent knew of Complainant’s use of TRPF in domain names prior to Respondent’s registering the at-issue domain name.

 

Respondent registered the at-issue domain name because of the name’s reference to Complainant’s enterprise and domain names.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant references its registered mark in “The Prem Rawat Foundation” by the abbreviation “TPRF.”  It then goes on to state that it has a registered trademark in “TPRF.” If we substitute “The Prem Rawat Foundation” for “TPRF” the Complainant’s statement is correct.  But if we read the plain language, Complainant represents it has a discrete registered trademark in the initials TPRF, when it does not.

 

Complainant misleadingly states that Complainant’s registered mark is “identical” to the at-issue domain name, when it clearly is not identical. (“The Counterfeit Domain Name registered by the Respondent <TPRF.BIZ> is confusingly identical to Complainant’s registered TPRF Mark”). Complainant’s registration is for “The Prem Rawat Foundation” not for “TPRF.”  This kind of verbal horseplay by Complainant’s counsel in drafting the operative Complaint is reprehensible and technically voids Complainant’s certification that the Complaint is “complete and accurate.”  Unfortunately, there is no mechanism available under the UDRP to sanction such conduct by counsel, except perhaps by the draconian measure of summarily denying Complainant’s request. In deference to Complainant who may have only been peripherally involved in drafting the Complaint, the Panel chooses to decide this case on the merits. 

 

Notwithstanding that Complainant does not have a registered trademark in TPRF, registration is not necessary to succeed in a UDRP proceeding. Common law trademark rights are sufficient. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).  The use of the second-level domain names and accompanying website in commerce give Complainant colorable common law rights in the “TPRF” mark.

 

Importantly, Respondent is estopped from denying that Complainant has established common law rights in the TPRF mark. Respondent devotes considerable amount of discussion of collateral matters in its Response concerning the activities of Complainant. Complainant registered three domain names using “TPRF,” as the second-level name. Respondent was well aware of Complainant’s domain names and apparently selected  <tprf.biz>, as opposed to some other name or letter group, to mimic Complainant’s prior domain registrations.  Thus the registration of the domain name indicates that in Respondent’s mind the mark “TPRF” had become a source identifier for the activities of Complainant. Therefore, Respondent is estopped, for the purposes of this proceeding, from claiming that Complainant has no common law trademark rights in TPRF. 

 

The at-issue domain name is confusingly similar to the TPRF mark because the domain name fully incorporates Complainant’s mark and merely adds the generic top-level domain “.biz.”  The addition of the generic top-level domain “.biz” is irrelevant in determining whether the domain name is confusingly similar to Complainant’s mark.  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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

Rights or Legitimate Interests

 

Complainant has neither licensed nor otherwise permitted Respondent to use the TPRF mark. Respondent has never been commonly known by TPRF and has never acquired trademark or service mark interests in such name. Respondent pursues two alternative lines of reasoning to persuade the Panel that it nevertheless has rights or interests in the  <tprf.biz> domain name.

 

First, Respondent argues that the initials “TPRF” are used by other entities such as:  Texas Photo Record File, Torpedo Run Facility, Tobacco Policy Rating Form and Thymic Plasma Recirculating Factor. Respondent further asserts that the fact that <tprf.com> is registered by a Panama corporation is evidence that Complainant does not have exclusive rights to marks or URLs that contain the acronym TPRF.  However, the lack of exclusive rights by Complainant, does not show Respondent has rights or legitimate interests in the domain name. Unlike Respondent’s example domain name registrations, Respondent registered <tprf.biz> domain name because it was identical to the Complainant’s currently registered second level domain names which were the initials for Complainant’s registered trademark, rather than to convey the initials of some bona fide activity or enterprise related to Respondent.

 

Respondent’s second line of reasoning suggests that it is using the domain name for a legitimate fair use pursuant to Policy ¶ 4(c)(iii). This fair use defense starts from the premise that even though Complainant may have rights in the mark, Respond may use that mark under particular circumstances for criticism and commentary. In particular, Respondent claims to use the at-issue domain name to voice its dissatisfaction with Complainant’s enterprise. 

 

Respondent goes on to assert the First Amendment of the Constitution as a defense.  See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a “complaint” website about Complainant’s products); see also Britannia Bldg. Soc'y v. Britannia Fruad Prevention, D2001-0505 (WIPO July 6, 2001) (finding legitimate interests in Respondent's favor because "the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain").

 

However, while the content of Respondent’s website may enjoy First Amendment protection, such protection does not spawn rights or legitimate interests with respect to a domain name which is confusingly similar to another’s trademark. Respondent cannot claim rights or legitimate interests in the domain name based on a parody (fair use) or some other First Amendment based theory by pointing to the content of a website referenced by a domain name which is identical to Complainant’s mark.  See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002); see also People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001). Therefore, Respondent has failed to demonstrate that it has any legitimate rights or interests in the at-issue domain name.

 

Registration and Use in Bad Faith

 

If Complainant had a registered trademark in “TPRF,” Respondent might have had constructive knowledge of Complainant’s mark via the mark’s registration with the USPTO, as Complainant claims.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). But as discussed above, Complainant’s registration does not magically extend to include the initials of its registered trademark.

 

On the other hand, Respondent had actual knowledge that Complainant was using “TPRF” in domain names when it registered <tprf.biz>.  Indeed, Respondent appears to have registered <tprf.biz> only because it mimicked the domain names registered by Complainant. Panels have found that that merely having actual knowledge of the trademark rights of Complainant demonstrates bad faith registration.  See Fiber-Shield Industries, Inc. v. Fiber Shield LTD., FA 92054 (Nat. Arb. Forum Feb. 29, 2000); see also Moana Pacific Fisheries Ltd. v. Turner New Zealand, D2000-0139 (WIPO Apr. 26, 2000).

 

Respondent explains that it registered the domain name to voice dissatisfaction with Complainant and that such use might also be considered a parody pursuant to Policy ¶ 4(c)(iii). But Respondent’s objective might have been accomplished without using a domain name identical to Complainant’s domain names and common law mark. See generally, People for the Ethical Treatment of Animals v. Doughney, at 366-367.

 

Moreover, Respondent does not offer any reason why it was appropriate or necessary to register and use a domain name identical to a second level domain name already being used by Complainant. Wouldn’t another domain name, which did not tread on Complainant’s mark, serve equally well as a reference to Respondent’s material? The lack of a good faith explanation by Respondent raises an inference that Respondent was acting in bad faith in registering and using the at-issue domain name.  See Bloomberg L.P. v. Scharf, FA 96264 (Nat. Arb. Forum Jan. 13, 2001).

 

While the free competition in ideas on the Internet should be unfettered, such competition should not be unfair. Here, Respondent registered and used the same second level domain name as Complainant’s trademark and domain names. Respondent’s apparent motivation was either to confuse Internet users viewing and interacting with material and links that Respondent controlled into believing the material and links were sponsored by Complainant, and/or to divert traffic away from Complainant’s website.  Registration and use of a domain name under such circumstances constitutes bad faith. Moreover, the use of a domain name in this manner is likely to tarnish Complainant’s mark and is implicitly proscribed by Policy ¶ 4(c)(iii). 

 

Therefore, the domain name <tprf.biz> was registered and is being used in bad faith.

 

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 <tprf.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Paul M. DeCicco, Panelist
Dated: March 27, 2004

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page