DECISION

 

Robbins Research International, Inc. v. [unknown holder]

Claim Number: FA2312002075882

 

PARTIES

Complainant is Robbins Research International, Inc. ("Complainant"), represented by Evan N. Spiegel of Lavely & Singer Professional Corporation, California, USA. Respondent is [unknown holder] ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tonyrobbinspodcast.com>, registered with HOSTINGER operations, UAB.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 19, 2023; Forum received payment on December 19, 2023.

 

On December 20, 2023, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <tonyrobbinspodcast.com> domain name (the Domain Name) is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 December 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 16, 2024 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@tonyrobbinspodcast.com. Also on December 26, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant or its affiliated subsidiary is the firm that holds the trademark rights to the TONY ROBBINS mark, which is the name of a celebrity author and motivational speaker. It has rights in the TONY ROBBINS mark through its registration of that mark with the USPTO. Respondent's Domain Name is identical or confusingly similar to Complainant's mark because it fully incorporates the mark, merely adding the term "podcast" and the ".com" generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the Domain Name. It has no relationship with Complainant and Complainant has not authorized it to use its mark, it is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses the Domain Name to pass off as Complainant in fraudulent emails which attempt to invite unsuspecting individuals to participate in Tony Robbins podcasts, and it has not been commonly known as the Domain Name.

 

Respondent registered and uses the Domain Name in bad faith. It uses the Domain Name to pass off as Complainant, to divert potential customers and misappropriate sales of Complainant's goods and services, and to defraud third persons into providing personal and banking information. Respondent provided false registration information to the registrar when it registered the Domain Name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(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; and

(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.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The TONY ROBBINS mark was registered to Complainant with the USPTO (Reg. No. 4,154,395) on June 5, 2012 and was subsequently assigned to TR LEGACY LLC, an affiliated subsidiary of Complainant (TESS printout submitted as Complaint Exhibit A and Declaration of Bruce Levine, associate general counsel for Complainant). Given the close association between Complainant and TR LEGACY LLC and the statements of Mr. Levine, the Panel finds that Complainant has sufficient interest in the USPTO registration of the mark to qualify as rights in that mark for the purposes of Policy ¶ 4(a)(i).  Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <tonyrobbinspodcast.com> Domain Name is identical or confusingly similar to Complainant's mark. It fully incorporates the mark, merely adding the term "podcast" and the ".com" gTLD. These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the Domain Name and the Domain Name is likely to cause confusion.

 

For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the TONY ROBBINS mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it has no relationship with Complainant and Complainant has not authorized it to use its mark, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses the Domain Name to pass off as Complainant in fraudulent emails which attempt to invite unsuspecting individuals to participate in Tony Robbins podcasts, and (iii) it has not been commonly known as the Domain Name. These allegations are addressed as follows:

 

Complainant states that Respondent has no relationship with Complainant and that Complainant has not authorized Respondent to use the TONY ROBBINS mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The WHOIS information furnished to Forum by the registrar lists "Tony Robbins" as the registrant of the Domain Name. This name is identical to the Domain Name except for the added term "podcast" and this might suggest that Respondent has been commonly known by that name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant's mark, and there is no evidence before the Panel indicating that Respondent used this name for any purpose other than to register the Domain Name and use it for emails. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent "has been commonly known by" it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration and use of the Domain Name, that the respondent used the name in a business or some other legitimate undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) by the simple expedient of registering it in the name of an entity whose name is similar or identical to the domain name at issue, Policy ¶ 4(c)(iii) would be completely nullified. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) ("If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant's mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated."), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Further, it is evident that Respondent provided false information about itself, including its name, when it registered the Domain Name. This is discussed in greater detail in the bad faith analysis below, but as set out more fully below the name of the person who registered the Domain Name is not "Tony Robbins."  The Panel is satisfied that the Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).

 

Complaint Exhibits O, P and Q are copies of emails directed to various persons from "Tony Robbins Management Team" using the email address [various]@tonyrobbinspodcast.com, ostensibly on behalf of Complainant, inviting them to participate in a Tony Robbins podcast. This demonstrates that Respondent is impersonating Complainant, engaging with the addressee for a discussion about possible participation in a podcast.  Using a confusingly similar domain name to impersonate a complainant and send fraudulent emails is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iv)"), Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent's use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product or service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use. Respondent registered and is using the Domain Name for an email account which it uses to impersonate Complainant and likely phish for sensitive personal information from unsuspecting persons who are led to believe that they are under consideration for participation in a Tony Robbins podcast. There is no direct evidence of phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication, but it is difficult to imagine any other motive for Respondent to go to the trouble of registering a domain name, setting up an email account and sending impersonating emails. The emails all offer the addressees a fee of $2,000.00 for participating in a podcast and the next logical step would be to solicit banking information from the addressee. Respondent is engaging in a fraudulent phishing scheme and this qualifies as evidence of bad faith registration and use. It does not fit precisely within any of the circumstances listed in Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., No. D-2004-0955 (WIPO Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing oneself off as a complainant to phish for sensitive private information from others has often been held to evidence bad faith registration and use. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) ("Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii)."), McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA 1580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users' personal information including their driver's license number and name).

 

Even if Respondent is not engaged in phishing, it is still using the Domain Name to pass off as Complainant. Given the nonexclusive nature of Policy ¶ 4(b), passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Next, the person who registered the Domain Name gave false information about him- or herself to the registrar. Respondent originally registered the Domain Name with a privacy service (WHOIS printout submitted as Complaint Exhibit X). The information furnished to Forum by the registrar lists an address for Respondent that Complainant verified from the U.S. Postal Service does not exist (Complaint Exhibit Z and Z.2). The telephone number listed for Respondent with the registrar is located in Barstow, California and is associated with scam calls, according to the Feed Foundation website printout submitted as Complaint Exhibit Z.3. The email address listed for Respondent is <hassaanabid563@gmail.com>, which suggests that Hasaan Abid may be the actual name of the Respondent. Giving false information to a registrar when registering a domain name is further evidence of bad faith. CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1614972 (Forum May 29, 2015) ("As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent's registration of the disputed domain name per Policy ¶ 4(a)(iii).").¹

 

Finally, although not argued by Complainant. it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in October 2023 (WHOIS printout included in Complaint Exhibit X shows registration date). Tony Robbins had been well-known throughout the world as a motivational speaker for many years by then (information about Tony Robbins from pages of Complainant's website and the Internet Movie Database profile on Tony Robbins submitted as Complaint Exhibits F, G and H). More importantly, Respondent was sufficiently aware of Complainant and its mark to impersonate it in the fraudulent emails it sent. There is no question that it had actual knowledge of Complainant and its rights in the TONY ROBBINS mark when it registered the Domain Name. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tonyrobbinspodcast.com> Domain Name be TRANSFERRED TO COMPLAINANT.

 

 

 

Charles A. Kuechenmeister, Panelist

January 18, 2024