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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Napoleon Hill Foundation v. Thinkandgrowrich.com
Case No. D2002-0228
1. The Parties
The Complainant is The Napoleon Hill Foundation, a South Carolina non-profit corporation having its principal place of business at P.O. Box 1277, Wise, Virginia, 24293, United States of America (hereinafter "the Complainant").
The Respondent is Thinkandgrowrich.com, the address of which is 3 Gwizdak Court, Freehold, New Jersey, 07728, United States of America (hereinafter "the Respondent"). The administrative and billing contact for the Respondent is Mr. Jeff Estep, whose address is the same as that of Thinkandgrowrich.com.
2. The Domain Name and Registrar
The domain name at issue in this proceeding is <thinkandgrowrich.com>.
The Registrar is Tucows, Inc.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "ICANN Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.
The Complainant submitted its Complaint in this proceeding, dated March 8, 2002, to the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy. The Complaint was received by e-mail on the same date and in hard copy on March 12, 2002. On March 15, 2002, the Center acknowledged receipt of the Complaint.
On March 19, 2002, the Center requested verification of registration from Tucows, Inc. Verification was duly received on the same date.
On March 20, 2002, by way of Complaint Deficiency Notification, the Center notified the Complainant that its Complaint did not comply with the following requirements of the ICANN Rules: (1) the correct Registrar, Tucows, Inc., was not identified in the Complaint; (2) Tucows, Inc. did not receive a copy of the Complaint; and (3) the Mutual Jurisdiction, stated in the Complaint as being "the principal office of the concerned registrar," was incorrect as the correct Registrar had not been identified.
The Complainant complied with the Complaint Deficiency Notification and submitted its Amended Complaint, dated March 20, 2002, to the Center by e-mail and in hard copy. The Amended Complaint was received by e-mail on the same date and in hard copy on March 25, 2002.
On March 26, 2002, the Center notified the Respondent of the Amended Complaint, informing it, inter alia, that the deadline for submitting a Response was April 15, 2002. The Respondent did not file a Response by that date, and on April 18, 2002, the Center issued a Notification of Respondent Default.
The Amended Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the ICANN Rules. Furthermore, the Registrar has confirmed that <thinkandgrowrich.com> was registered through Tucows, Inc. and that the current registrant of the domain name is Thinkandgrowrich.com.
The Center appointed D. Brian King as Sole Panelist by Notification of April 30, 2002, and the undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received after the appointment of the Sole Panelist.
4. Factual Background
The facts relevant to the current matter are set out in the Amended Complaint. Considering the evidence attached thereto and the fact that the Respondent has not filed a Response contesting the Complainant’s contentions, the Panel finds the following facts to have been established.
The Complainant is a non-profit corporation established to foster and disseminate the writings and teachings of Dr. Napoleon Hill. The Complainant, through licensees, offers seminars and various products related to personal achievement, including programs, books, audio and video cassettes, calendars, diaries, memorandum books, newsletters, study guides, CD-ROM programs and computer software. The Complainant has used the mark "Think And Grow Rich" for many years and holds five trademark registrations for it in the United States (see Complainant’s exhibit 4). The Complainant has held trademark registrations for this mark in the United States since 1989 (see id.).
The contested domain name, <thinkandgrowrich.com>, was registered on December 23, 1997, by the Respondent (see Complainant’s exhibit 1). It resolves to an active website being used for the purpose of offering books for sale, including the book "Think And Grow Rich" authored by Dr. Napoleon Hill. The Respondent’s website also has links to other sites offering goods and services (see Complainant’s exhibit 5). At the bottom of the third of three pages of the website is a disclaimer that reads as follows: "This site is not associated with the Napoleon Hill Foundation."
The Complainant’s trademark, which is incorporated in whole by the disputed domain name except for the addition of the generic suffix ".com", was registered by the Complainant well prior to the Respondent’s registration of the domain name. After learning of the Respondent’s registration, the Complainant sent three letters to the Respondent in which, the Amended Complaint alleges, it demanded that the Respondent cease and desist from infringing upon the Complainant’s rights in the mark "Think And Grow Rich". These letters have not been submitted into evidence, although photocopies of the envelopes have been provided. These indicate that the first letter was sent sometime in 1998 but was misaddressed by the Complainant (the wrong city being identified) and was therefore returned by the postal service. The latter two letters, mailed in March 2001, were sent to the correct address of the Respondent and Mr. Estep, as listed in the Registrar’s database. However, these were also returned by the postal service, bearing a stamp stating "no such street" (see Complainant’s exhibit 6).
After being served with the Amended Complaint and the Notification of Respondent Default, the Respondent’s administrative contact, Mr. Estep, sent an email to the Center on April 18, 2002. In that email, he wrote as follows: "I have a response and will be sending it today." However, no response was subsequently received by the Center.
5. Parties’ Contentions
The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.
The Complainant states that the contested domain name is identical or confusingly similar to the Complainant’s "Think And Grow Rich" mark, in which the Respondent has no prior rights. The contested domain name fully incorporates the Complainant’s registered trademark.
The Complainant further argues that the Respondent has no legitimate interest with respect to the contested domain name, since the domain name was registered well after the Complainant had established rights in the "Think And Grow Rich" mark through trademark registration and extensive use. In addition, the Complainant states that the domain name "has no relevance" to the Respondent and that the Respondent was not commonly known as Think and Grow Rich prior to registering the domain name in December 1997. The Complainant further contends that the Respondent, apart from the domain name registration, is not currently known as Think and Grow Rich and has not acquired any trade or service mark rights in the domain name. The Complainant states that it has not given the Respondent a license or other authorization to use the Complainant’s mark. On these grounds, the Complainant contends that the Respondent can have no legitimate business purpose with respect to the use of the domain name.
Finally, the Complainant submits that the Respondent has registered and is using the domain name in bad faith. The Complainant argues that this is evident from the fact that the Respondent has registered a domain name identical or confusingly similar to the Complainant’s trademark. The Complainant alleges that the Respondent’s intention is to divert Internet traffic to its own website for commercial gain, as users will believe that the site is sponsored by, affiliated with or endorsed by the Complainant. The disclaimer appearing at the bottom of the website is dismissed by the Complainant as being ineffective to avoid the likelihood of confusion. As further evidence of the Respondent’s alleged bad faith, the Complainant notes that the Respondent’s website contains links to websites promoting the goods and services of others who are unconnected with the Complainant and submits that the likelihood of confusion is reinforced by the Respondent’s use of the term "I" in describing itself in the website’s text, with no other identifying information.
The Respondent, as earlier noted, has not submitted a Response to the Complainant’s Amended Complaint, despite having been properly notified of it.
6. Discussion and Findings
Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Notwithstanding the Respondent’s default, the Complainant retains the ultimate burden of proof on each of these elements. They will be examined in turn below.
a. Identical or confusingly similar
The domain name at issue wholly incorporates the Complainant’s registered trademark "Think And Grow Rich". The likelihood of confusion is enhanced by the fact that the book "Think And Grow Rich" by Dr. Napoleon Hill is prominently featured on the website. Previous Panels have held that where a domain name substantially incorporates the Complainant’s mark, that is sufficient to make the domain name "confusingly similar". See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000). In the present case, the domain name fully incorporates the Complainant’s mark, and therefore the Panel has no difficulty in concluding that the Complainant has met the first element under Paragraph 4(a).
b. Rights or legitimate interests of the Respondent
The Panel is further satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in respect of the domain name. In particular, the Panel finds that none of the three circumstances, identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests, is present here.
First, the Panel considers that the Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Complainant’s trademark and its rights and interests in the name "Think And Grow Rich" were known to the Respondent at the time of registering the domain name, as demonstrated by the Respondent’s use of a disclaimer at the bottom of the website referring specifically to the Complainant. The Panel finds that the existence of the disclaimer is not sufficient in the circumstances here to avoid consumer confusion or establish bona fide use of the mark. The disclaimer is located at the very end of the website’s text and thus is not immediately visible to the web user visiting the site. As a result, it is possible to enter the Respondent’s website, purchase goods and go to other commercial websites via links without seeing the disclaimer or otherwise being made aware of the non-affiliation of the Respondent with the Complainant. Accordingly, on the facts here, the Panel does not view the disclaimer as an effective defense with respect to any of the issues at stake in this proceeding. See ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070 (March 23, 2001) (noting on similar facts that "[i]t is only by unauthorized use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place," and holding the disclaimer to be ineffective).
Second, there is no evidence to suggest that the Respondent has "been commonly known" by the name at issue. The mere fact that the Respondent has called itself "Thinkandgrowrich.com" cannot be construed as creating rights or legitimate interests in the domain name, given that the Complainant’s use of an identical mark long pre-dates the registration of the contested domain name by the Respondent.
Third, the <thinkandgrowrich.com> site is clearly being used for commercial purposes and hence does not meet the "non-commercial or fair use" criterion.
For the foregoing reasons, the Panel concludes that the second element under Paragraph 4(a) has been established in the present case.
c. Bad faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(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 who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of 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 its website 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 website or location, or of a product or service on the website or location.
Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith." This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.
For purposes of the Policy, a finding of any one of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.
The Panel is persuaded on the facts here that bad faith registration and use have been established. Bad faith registration is evidenced by the fact that the domain name is identical to the Complainant’s trademark, albeit with the addition of the generic suffix ".com". The Respondent was aware of the Complainant’s rights and interests in the mark at the time of registration, as is evident from its use of a disclaimer. For the reasons already identified above, the disclaimer is not effective to forestall a finding of bad faith registration (or use) in the circumstances here.
Concerning the question of bad faith use, the Panel is satisfied that the circumstance identified in Paragraph 4(b)(iv) of the Policy has been demonstrated. It has already been found above that the Respondent has no rights or legitimate interests in respect of the domain name. Furthermore, the site is being used for commercial purposes. The Respondent’s intent, a showing of which is required under Paragraph 4(b)(iv), is evidenced by the fact that it chose a domain name identical to the Complainant’s trademark, of which it must have been aware at the time of registration. This fact must be considered in conjunction with the display of the book "Think And Grow Rich", which is closely associated with the Complainant, at the top of the first page of the Respondent’s website. Taken together, these circumstances sufficiently establish that the Respondent is using the domain name in order to achieve commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement of its website.
In this case, as no doubt in many others, there could conceivably be circumstances that might justify the Respondent’s registration and use of the contested domain name. However, despite being properly notified of the Amended Complaint, the Respondent has failed to raise any such circumstances, or indeed to make any response at all to the Complainant’s allegations. The Panel accordingly infers that the Respondent does not have good grounds in this case for contesting those allegations, including with respect to the bad faith issue. See Welch Foods Inc. v. USCYB, WIPO Case No. D2001-1072 (November 8, 2001), at p. 6.
For the foregoing reasons, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the domain name <thinkandgrowrich.com>.
For the foregoing reasons, the Panel determines that the domain name in dispute is identical to the mark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that it has been registered and is being used in bad faith. Accordingly, the Amended Complaint succeeds and the Panel directs that the domain name <thinkandgrowrich.com> be transferred to the Complainant.
D. Brian King
Dated: May 14, 2002