national arbitration forum

 

DECISION

 

The Napoleon Hill Foundation v. Leah Bugayong

Claim Number:  FA0507000520085

 

PARTIES

Complainant is The Napoleon Hill Foundation (“Complainant”), represented by Sana Hakim, of Bell Boyd & Lloyd LLC, 70 West Madison, Suite 3100, Chicago, IL 60602.  Respondent is Leah Bugayong (“Respondent”), 39 Shaftesbury Avenue, Harrow, Middlesex HA20PL, UK.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <think-and-grow-rich.net>, registered with In2Net Network, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2005.

 

On July 25, 2005, In2Net Network, Inc. confirmed by e-mail to the National Arbitration Forum that the <think-and-grow-rich.net> domain name is registered with In2Net Network, Inc. and that Respondent is the current registrant of the name.  In2Net Network, Inc. has verified that Respondent is bound by the In2Net Network, 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 August 1, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 2005 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@think-and-grow-rich.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 30, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <think-and-grow-rich.net> domain name is confusingly similar to Complainant’s THINK AND GROW RICH mark.

 

2.      Respondent does not have any rights or legitimate interests in the <think-and-grow-rich.net> domain name.

 

3.      Respondent registered and used the <think-and-grow-rich.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, the Napoleon Hill Foundation, is a South Carolina not-for-profit corporation that was established to foster, perpetuate and disseminate the lifetime research, writing and teachings of Dr. Napoleon Hill.  Complainant, through a network of worldwide licensees, offers seminars and various products related to personal achievement, including programs, books, audio and video cassettes, calendars, diaries, memorandum books, newsletters, study guides and computer software.

 

Complainant has used the THINK AND GROW RICH mark in connection with its various products and services since as early as 1946.  Complainant owns five registrations for its THINK AND GROW RICH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,092,144 issued August 26, 1997; 1,938,630 issued November 28, 1995; 1,973,581 issued May 14, 1996; 1,534,048 issued April 11, 1989 and 1,533,049 issued April 4, 1989).

 

Respondent registered the <think-and-grow-rich.net> domain name on April 29, 2004.  Respondent’s domain name resolves to a website that purports to sell Complainant’s products without authorization and features several unrelated commercial links. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the THINK AND GROW RICH mark through registration of the mark with the USPTO.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

Respondent’s <think-and-grow-rich.net> domain name incorporates Complainant’s mark in its entirety and merely replaces the spaces between the terms of Complainant’s mark with hyphens.  Additionally, Respondent’s domain name adds the generic top-level domain “.net.”  The Panel finds that such minor changes are not sufficient to avoid a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also 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).          

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent has no rights or legitimate interests in the <think-and-grow-rich.net> domain name and Respondent, in not submitting a response, has failed to rebut Complainant’s assertion.  Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  The Panel will analyze whether Respondent could meet its burden of establishing rights or legitimate interests for the purposes of Policy ¶ 4(a)(ii). 

 

Nothing in the record indicates that Respondent is commonly known by the <think-and-grow-rich.net> domain name.  In fact, the WHOIS information for the disputed domain name lists Respondent as “Leah Bugayong.”  Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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.”); see also Tercent Inc. v. Lee 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).

 

Furthermore, Respondent is using the confusingly similar domain name to operate a website that sells Complainant’s products without Complainant’s authorization.  Additionally, Respondent’s website features links to unrelated commercial entities, through which Respondent presumably receives click-through fees.  The Panel finds that such uses are not in connection with bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i), nor are they legitimate noncommercial or fair uses pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent, an unauthorized reseller of the complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the complainant’s mark); see also 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).  

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the confusingly similar domain name to sell Complainant’s products without authorization.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that, despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).

 

Respondent is using the <think-and-grow-rich.net> domain name, which is confusingly similar to Complainant’s THINK AND GROW RICH mark, to divert Internet users to its website that offers Complainant’s products and features various commercial links.  The Panel finds that Respondent is capitalizing on Internet user confusion and that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Furthermore, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the THINK AND GROW RICH mark due to Complainant’s registration of the mark with the USPTO.  Moreover, the Panel infers that Respondent had actual knowledge of Complainant’s mark, as Respondent is using the disputed domain name to sell Complainant’s products.  Thus, the Panel finds that Respondent’s registration of a domain name that is confusingly similar to Complainant’s mark, despite actual or constructive knowledge, is tantamount to bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <think-and-grow-rich.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

John J. Upchurch, Panelist

Dated:  September 13, 2005