The Napoleon Hill Foundation v. VivaCorp SA
Claim Number: FA0604000672115
Complainant is The Napoleon Hill Foundation (“Complainant”), represented by Sana Hakim, of Bell Boyd & Lloyd LLC, 70 West Madison Suite 3100, Chicago, IL 60602, USA. Respondent is VivaCorp SA (“Respondent”), represented by D. Robert Silber, of Law Offices of D. Robert Silber, P.A., 6278 N. Federal Hwy., Suite 253, Ft. Lauderdale, FL 33308.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <newthinkandgrowrich.com>, <thenewthinkandgrowrich.com> and <thinkandgrowrichinstitute.com>, registered with Wild West Domains, Inc.
The undersigned certify that they have acted independently and impartially, to the best of their knowledge and have no known conflict in serving as Panelists in this proceeding.
Hugues G. Richard as Presiding Panelist
Honorable Louis E. Condon as Panelist
Honorable Charles K. McCotter as Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 7, 2006.
On April 6, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <newthinkandgrowrich.com>, <thenewthinkandgrowrich.com> and <thinkandgrowrichinstitute.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. 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 April 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 1, 2006 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@newthinkandgrowrich.com, postmaster@thenewthinkandgrowrich.com and postmaster@thinkandgrowrichinstitute.com by e-mail.
A timely Response was received and determined to be complete on April 28, 2006, to which Complainant timely replied by producing Additional Submissions on May 3, 2006. A timely Additional Submission was produced by Respondent on May 8, 2006.
On May 5, 2006, pursuant
to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed
Hugues G. Richard, Louis E. Condon and Charles K. McCotter as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
FACTUAL BACKGROUND
Complainant has used the THINK AND GROW RICH mark since at least as early as 1946 and owns five U.S. registrations for the mark for a variety of goods and services: (1) U.S. Reg. No. 1,973,581 for programs and seminars relating to personal achievement; (2) U.S. Reg. No. 1,938,630 for calendars, diaries and memorandum books; (3) U.S. Reg. No. 2,092,144 for computer software for educational use, including CD-ROMs, in the fields of self-development, and personal achievement; (4) U.S. Reg. No. 1,534,048 for prerecorded audio and video cassette tapes; and (5) U.S. Reg. No. 1,533,049 for newsletters and study guides relating to personal achievement. Said U.S. trademarks were respectively registered on May 14, 1996, November 28, 1995, August 26, 1997 and April 11, 1989. On September 22, 2004, Respondent registered two of the domain names at issue, i.e. <newthinkandgrowrich.com> and <thenewthinkandgrowrich.com>, and further registered the <thinkandgrowrichinstitute.com> domain name on December 9, 2004.
On April 16, 2006, Ted Ciuba, president of Respondent, wrote to Complainant asserting that it would, following a cease and desist letter from Complainant, cease using the THINK AND GROW RICH mark in Respondent’s normal course of trade.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has used the THINK AND GROW RICH mark since at least as early as 1946 and owns five U.S. registrations for said mark for various services or wares, namely programs and seminars relating to personal achievement, computer software for educational use, including CD-ROMs in the field of self-development, self-improvement and personal achievement as well as study guides relating to personal achievement.
It further contends that the disputed domain names all include literally its trademark except for the additions of the generic elements “.com”, “the”, “new” and/or “institute”, automatically generating confusion among consumers with the THINK AND GET RICH mark.
It contends that Respondent has no legitimate rights in the domain names as they are totally inactive to this date and do not relate to any wares that avail to Respondent. It further contends that Respondent is not known by, and has not been known by New Think and Grow Rich, The New Think And Grow Rich or Think and Grow Rich Institute names nor has it been licensed or otherwise authorized by Complainant to use the THINK AND GROW RICH mark.
It asserts that Respondent registered the disputed domain names in bad faith as Respondent should have known about the registered trademarks of Complainant, as they were registered five years prior to the domain name registration by Respondent. It also contends that the nonuse of the domain names by Respondent for any legitimate business purpose further indicates bad faith registration.
B. Respondent
Respondent starts by consenting to transfer the disputed <thinkandgrowrichinstitute.com> domain name to Complainant as it has no interest in its use.
Afterwards, Respondent contends that trademark registration does not, in itself, prohibit the use by another person of the trademark in a domain name, but only prohibits use of signs where such use creates a likelihood of confusion. It further contends that confusion must be assessed as a factual question, and points out that Complainant has not showed any fact of confusing similarity between its trademark and the disputed domain names.
It further contends that as it already uses a disclaimer on another undisputed domain name, i.e. <thinkandgrowrich.com>, to eliminate any likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement, and intends to use same disclaimer on the disputed domain names sites once it begins using them to promote its book The New Think and Grow Rich, said domain names cannot be considered as confusingly similar to Complainant’s trademarks.
Respondent contends that it has legitimate interests in the disputed domain names as it intends to use them for promotion of its upcoming book, and perfunctory preparations are sufficient to constitute legitimate interest in a domain name. It further contends that the original book written by Napoleon Hill in 1937, Think and Grow Rich, is now in the public domain and as such can support its contentions of legitimate interest in the title of the work.
It contends that Complainant has to prove both bad faith registration and bad faith use in order to satisfy ICANN Policy section 4(a)(iii) and further contends that as U.S. case law supports, the use of a public work title does not violate the Lanham Act unless it is not relevant to the underlying work. As the Think and Grow Rich is a public work, Respondent contends that it could reserve the domain name for further appropriate use.
Subsidiarily, Respondent asserts that Complainant’s trademarks are weak, as they are constituted of dictionary terms, and web search engine queries demonstrate widespread use of the marks.
C. Additional Submissions
In its Additional Submissions, Complainant contends that Respondent confuses trademark and copyright laws, notwithstanding the fact that both must be assessed separately, especially in a UDRP case, wherein the sole evaluation is the use of a mark in a domain name. To this effect, it contends that despite Think and Grow Rich being part of the public domain, the registered trademarks are still active and prohibit the use of their equivalent in the normal course of trade.
It contends that the disclaimer used by Respondent on its other website confirms that it knew about Complainant’s trademarks and further proves Respondent’s bad faith in its registration. It further contends that the distinctiveness of the registered trademarks are proven by their registration, as no indistinctive trademark can be registered on the Register.
In its Additional Submissions, Respondent contends that United States case law supports its assertion that a registered trademark cannot prohibit its use when said use solely describes the wares and services of the domain name. Concerning the strength of Complainant’s trademarks, it further contends that a mark which describes a product does not identify a particular source and hence cannot be protected unless it has acquired distinctiveness through secondary meaning.
FINDINGS
As Respondent has consented to it, the Panel finds that the <thinkandgrowrichinstitute.com> domain name should accordingly be transferred to Complainant.
The Panel further finds that Complainant has met its burden of proof to satisfy the elements required in section 4(a) of the ICANN Policy, for the reasons set out hereinafter.
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.
Before assessing the confusing character of the disputed domain names,
the Panel must first evaluate whether Complainant has established rights in the
THINK AND GROW RICH mark prior to the domain name registration by
Respondent. Respondent argues that the
terms of Complainant’s mark are of common use and that Complainant cannot have
exclusive rights to these terms.
Complainant alleges
that it has established rights in the THINK AND GROW RICH mark through
registration of five marks with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,973,581 issued May 14, 1996; Reg. No. 1,938,630 issued
November 28, 1995; Reg. No. 2,092,144 issued August 26, 1997; Reg. No.
1,534,048 issued April 11, 1989; Reg. No. 1,533,049 issued April 4, 1989) in
connection with seminars and products advocating personal achievement,
including books, audio and video, calendars and computer software. The Panel finds
that Complainant’s trademark registrations are sufficient to establish rights
in the THINK AND GROW RICH mark under Policy ¶ 4(a)(i). To this effect, the
panel in Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) found that registration of a mark with the USPTO establishes
Complainant's rights in the mark.
In response to the generic nature
of Complainant’s mark, as a
trademark that has been registered on the Principal Register of the USPTO for
more than five years is considered inconstestible under U.S. trademark law, the Panel finds that deferring to the USPTO’s determination on issuing a valid trademark
registration to Complainant is the right way to assert its validity and
distinctive character. On this point
the Panel refers to U.S. Office of Pers.
Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003), where it was decided that once the USPTO has made a
determination that a mark can be registered, an ICANN panel is not empowered to
nor should it disturb that determination.
As the Panel found that Complainant had rights in the THINK AND GROW RICH mark, it must now establish if such rights existed prior to the registration of the disputed domain names by Respondent. As evidenced by Complainant, the registration of the various U.S. trademarks date from as early as 1989 and no later as 1996. As for Respondent’s <newthinkandgrowrich.com> and <thenewthinkandgrowrich.com> domain names, the evidence produced shows that they were both registered in 2004. Hence, the Panel finds that Complainant had prior rights in the THINK AND GROW RICH mark.
As for possible confusion between the mark and the disputed
domain names, the Panel finds that the mere addition of generic terms to
Complainant’s THINK AND GROW RICH mark does not differentiate the domain names
from the mark pursuant to Policy ¶ 4(a)(i).
In Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb.
Forum May 28, 2002), the Panel found that the addition of the word ‘the’ to the
beginning of the domain names failed to make them separate and distinct, as
distinguishable from Complainant’s marks.
A fortiori, in Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000), the panel established that neither the addition of an
ordinary descriptive word nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the domain name as similar to the trademark
and thus Policy section 4(a)(i) is satisfied.
In regards to this criterion, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden then shifts to Respondent to show it does have rights or legitimate interests. For example, the panel in G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) decided that because Complainant’s submission constituted a prima facie case under the Policy, the burden effectively shifted to Respondent to prove it had legitimate interest in the domain name.
Complainant alleges that there is no
evidence in the record suggesting that Respondent is commonly known by the
disputed domain names, including the WHOIS information, which lists
“VivaCorp SA” as the registrant of the disputed domain names. Complainant also asserts that it has not
authorized or licensed Respondent to register or use domain names incorporating
Complainant’s THINK AND GROW RICH mark.
The Panel finds that Respondent is not commonly known by the disputed
domain names and further finds that Complainant has shown a prima facie case of illegitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). To support its
finding, the Panel refers to Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001), where
the panel decided that the respondent had no rights or legitimate interests
because it was not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use. The burden of proof hence resides on the
shoulders of Respondent to show a legitimate interest in the disputed domain
names. Id.
Respondent contends that it has abandoned plans for use of the <thinkandgrowrichinstitute.com> domain name, but that it has plans to use the <newthinkandgrowrich.com> and <thenewthinkandgrowrich.com> domain names to promote its new book: The New Think and Grow Rich. Respondent further contends that all references to the THINK AND GROW RICH mark refer to the 1937 book of the same name, which is now in the public domain and as such should not prevent it from using the title in a domain name for further promotion of a book with a similar title. Respondent also argues that it plans on putting up a disclaimer on its website at the remaining two disputed domain names which will state that the use of the THINK AND GROW RICH mark is for illustrative purposes only, that Respondent is not affiliated with Complainant in any way, and that any reference to the THINK AND GROW RICH mark is by necessity in referring to the book title by the same name.
The Panel might have found that
Respondent has made demonstrable preparations to use the disputed domain name
in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i), as Respondent plans
on operating a website promoting his own book and will put a disclaimer on the
website letting Internet users know it is not affiliated with Complainant. The panel’s rationale in SFX Entm’t, Inc.
v. Cushway, D2000-0356 (WIPO July 10, 2000) supports Respondent’s
contentions, as it was found that the respondent had rights and legitimate
interests in the domain name where he began demonstrable preparations to use
the domain name in connection with a bona fide offering of goods or
services. However, Policy ¶ 4(c)(i) specifies that the demonstrable
preparations must be assessed before any notice of the dispute is given. In the
present case, Respondent showed intention to start publishing its new book by
filing as evidence the copyright submission to the United States Copyright
Office dated April 28, 2006, but the notice for arbitration was given to
Respondent on April 10, 2006. Hence,
Respondent’s proof lacks evidence of prior demonstrable preparation, and the
Panel finds that Respondent did not have a legitimate interest or rights in the
disputed domain names.
On this third and final criterion, Complainant claims that
Respondent has not used the disputed domain names for any purpose since
registering them in late 2004, because they have never resolved to any
content. On the other hand, Respondent
alleges that it has not offered to sell the domain names, prevented Complainant
from reflecting its mark in the domain names, disrupted Complainant’s business
or attempted to attract Internet users seeking Complainant’s products and
services for its own commercial gain.
Hence, the Panel may have found that Respondent’s nonuse of the disputed
domain names does not constitute bad faith registration and use, because it has
not violated any of the factors listed in Policy ¶ 4(b). In accordance with what is set out
hereinabove, the panel in Societe des Produits Nestle S.A. v. Pro Fiducia
Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) found that where the
respondent has not attempted to sell the domain name for profit, has not
engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor of the
complainant seeking to disrupt the complainant's business, and is not using the
domain name to divert Internet users for commercial gain, lack of bona fide
use on its own is insufficient to establish bad faith.
However, even if Respondent has not violated any of the factors listed in Policy sub-section 4(b), the Panel may still find that, based on the totality of the circumstances, that is, the Panel’s interpretation of the facts, Respondent’s registration and use of the disputed domain names is indicative of bad faith under Policy sub-section 4(a)(iii). As decided in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
Respondent obviously knew of Complainant’s mark, as it puts a disclaimer to this effect on another website, as well as the implicit acknowledgment of Complainant’s mark by Ted Ciuba in his letter given on April 16, 2001 to Complainant. Nevertheless, Respondent contends that it registered the disputed domain names to host websites for his upcoming new book, The New Think and Grow Rich, a derivative work based on the 1937 book by Napoleon Hill, Think and Grow Rich. Respondent claims it did a copyright search for the book and discovered it is now in the public domain. However, the ICANN UDRP Policy does not contemplate copyrights in domain names. For the reasons herein, the Panel finds that Respondent’s nonuse of the disputed domain names for over eighteen months while knowing that Complainant possessed valid trademarks in THINK AND GROW RICH constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). To this effect, the Panel refers to the decision in Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), which established that merely holding an infringing domain name without active use can constitute use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newthinkandgrowrich.com>, <thenewthinkandgrowrich.com> and <thinkandgrowrichinstitute.com> domain names be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Presiding Panelist
Judge Louis Condon, Panelist
Judge Charles K McCotter
Dated: May 18, 2006
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