DECISION

The Napoleon Hill Foundation v. Rod Beckwith d/b/a Anywidget

Claim Number: FA0305000156455

PARTIES

Complainant is The Napoleon Hill Foundation, Wise, VA (“Complainant”) represented by Sana Hakim of Bell, Boyd & Lloyd LLC. Respondent is Rod Beckwith d/b/a Anywidget, Mt. View, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <howtothinkandgrowrich.com> registered with Tucows, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2003; the Forum received a hard copy of the Complaint on May 5, 2003.

On May 2, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <howtothinkandgrowrich.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 27, 2003 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@howtothinkandgrowrich.com by e-mail.

A timely Response was received and determined to be complete on May 27, 2003.

A complete and timely Additional Submission was received from Complainant on June 2, 2003.

On June 5, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns five (5) United States Trademark Registrations for the mark “THINK AND GROW RICH.”  These registrations apply to International Class 9, 16, 41, 21, 36, for a variety of goods and services related to personal achievement, including programs, books, audio and video cassettes, calendars, diaries, memorandum books, newsletters, study guides, and CD-Rom programs and computer software.  Complainant alleges that Respondent’s registration of the domain name <howtothinkandgrowrich.com>, was confusingly similar to Complainant’s registered trademarks; that Respondent has no rights or legitimate interest in this mark, and that Respondent registered this domain name in bad faith.

B. Respondent

Respondent contends that the book, “Think and Grow Rich” by the late Napoleon Hill is in the public domain.  Respondent contends that the title of a book cannot be registered as a trademark because it is merely descriptive of the contents of the book itself.  Furthermore, Respondent contends that there is no actual showing of public confusion.  Respondent has inserted disclaimers, consequent to Complainant’s letters, denying affiliation with the Napoleon Hill Foundation, thereby eliminating the possibility of confusion.

C. Additional Submissions

In its Additional Submission, Complainant contends that Respondent has confused copyright and trademark law, noting that Respondent’s sale of an e-book entitled “Think and Grow Rich” in the public domain is unrelated to whether Respondent is permitted to use Complainant’s registered trademark in its domain name.  Complainant contends that the harm of initial interest confusion is such that the disclaimer is ineffective in avoiding the inference of a likelihood of confusion.

FINDINGS

1.   Complainant has multiple registered trademarks in the name “Think and Grow Rich” for various goods and services independent of the public domain book authored by Napoleon Hill (deceased). 

2.   The domain name at issue <howtothinkandgrowrich.com> incorporates the totality of Complainant’s registered trademarks within it, and the addition of the words “how to” and “.com” are insignificant. 

3.   The registration of the domain name and the registration of the trademarks are undisputed by the Parties.

4.   It is undisputed that the book by Napoleon Hill is within the public domain at this time.

5.   It is undisputed that the trademark registrations are identical to the title of Napoleon Hill’s book.

6.   It is undisputed that Complainant’s trademark registrations offer a variety of goods and services, distinguishable, although related to the originating book by Napoleon Hill.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Identical and/or Confusingly Similar

Complainant provides evidence of five trademark registrations with the United States Patent and Trademark Office (USPTO) for the “THINK AND GROW RICH” mark, including Reg. No. 1,533,049 (registered on April 4, 1989). Complainant’s federally registered marks relate to newsletters, study guides, prerecorded audio and video cassette tapes, programs, seminars, calendars, diaries, memorandum books and computer software. The Panel finds that Complainant’s evidence establishes its rights in the mark through registration with the USPTO and continuous use in commerce. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The Panel finds that Respondent’s <howtothinkandgrowrich.com> domain name is confusingly similar to Complainant’s “THINK AND GROW RICH” mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the generic terms “how” and “to” to the beginning of the mark. The addition of the two terms does not sufficiently differentiate the domain name from the mark with regard to Policy ¶ 4(a)(i) because the mark remains the dominant element of the domain name. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Rights or Legitimate Interests

The Respondent’s website offers goods that directly compete with the goods offered by Complainant. Specifically, the website presents the “Think and Grow Rich Power Pack,” which includes the book Think and Grow Rich and the “How to Get Rich Newsletter.” Complainant correctly maintains that regardless of whether Respondent’s e-book is in the public domain, Complainant continues to have exclusive rights to use the “THINK AND GROW RICH” mark for the range of goods and services listed in the registrations with the USPTO. The Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark, offering goods in competition with Complainant’s is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

Moreover, the Panel finds that Respondent registered the <howtothinkandgrowrich.com> domain name with the intent to divert Internet users searching for Complainant’s goods by using Complainant’s mark, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

 Respondent itself is not and has never been commonly known by “HOW TO THINK AND GROW RICH” or <howtothinkandgrowrich.com>. Therefore, the Panel concludes that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Registration and Use in Bad Faith

Complainant maintains that Respondent had constructive knowledge of Complainant’s rights in the “THINK AND GROW RICH” mark when it registered the <howtothinkandgrowrich.com> domain name. The Panel concludes that Respondent’s registration and use of the disputed domain name despite knowledge of Complainant’s rights evidence registration and use in bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”).

Furthermore, Complainant correctly argues that Respondent’s registration and use of the disputed domain name to compete directly with Complainant proves Respondent’s bad faith registration and use. Complainant contends that the disclaimer on Respondent’s website is insufficient to dispel the inference of bad faith raised by Respondent’s use of Complainant’s mark to sell competing goods. The Panel holds that Respondent registered the <howtothinkandgrowrich.com> domain name primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use with regard to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

DECISION

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

Accordingly, it is Ordered that the <howtothinkandgrowrich.com> domain name be TRANSFERRED from Respondent to Complainant.

 

___________________________________________________

Estella S. Gold, Panelist
Dated: June 10, 2003

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