The Rolf Institute of Structural Integration v. DOMAIN PRIVACY SERVICE FBO REGISTRANT
Claim Number: FA1711001758579
Complainant is The Rolf Institute of Structural Integration ("Complainant"), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is DOMAIN PRIVACY SERVICE FBO REGISTRANT ("Respondent"), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <briansternrolfing.com>, registered with FastDomain 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On November 15, 2017, FastDomain Inc. confirmed by email to the Forum that the <briansternrolfing.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 November 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@briansternrolfing.com. Also on November 15, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 cancelled.
A. Complainant
Complainant has used the ROLFING trademark since 1971 in connection with various goods and services relating to "manipulating the deep connective tissue of the body to achieve structural alignment." The mark is registered in the United States and other jurisdictions throughout the world.
The disputed domain name <briansternrolfing.com> was registered in July 2011. The registration is in the name of Respondent, presumably for the benefit of Brian Stern, an individual whose "structural integration services" are advertised on the website to which the disputed domain name redirects. Complainant states that Brian Stern has not been licensed to use its ROLFING mark; that it has corresponded with Stern regarding such use; and that although Stern did not respond to Complainant's correspondence, he did subsequently remove most references to the mark from his website.
Complainant contends, on the above grounds, that the disputed domain name <briansternrolfing.com> is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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(f), 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 (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.").
The disputed domain name <briansternrolfing.com> combines Complainant's registered ROLFING mark with the personal name Brian Stern (omitting spaces) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., The Rolf Institute of Structural Integration v. Ida Homan, FA 1742724 (Forum Aug. 25, 2017) (finding <adamsrolfingnyc.com> confusingly similar to ROLFING). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote services that compete directly with those offered by Complainant and its licensees. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., The Rolf Institute of Structural Integration v. Swig Miller, FA 1650808 (Forum Dec. 31, 2015) (finding lack of rights or legitimate interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant’s registered mark, and is using the domain name to redirect traffic to a website that promotes competing services. The Panel considers Respondent’s actions to be indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., The Rolf Institute of Structural Integration v. Swig Miller, supra (finding bad faith registration and use under similar circumstances. The use of a privacy registration service lends further support to the inference of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <briansternrolfing.com> domain name be CANCELLED.
David E. Sorkin, Panelist
Dated: December 8, 2017
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