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Generic Top Level Domain Name (gTLD) Decisions |
The Prem Rawat Foundation v. Jeff Leason
Claim Number: FA0401000231883
PARTIES
Complainant
is The Prem Rawat Foundation (“Complainant”),
represented by Helene Godin, of Wolff & Godin, 118
West 79th Street 1B, New York, NY 10024.
Respondent is Jeff Leason (“Respondent”),
5663 Balboa Ave. #327, San Diego, CA 92111.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <tprf.biz>,
registered with Wild West Domains, Inc.
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.
Paul
M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on January 28, 2004; the Forum received
a hard copy of the Complaint on January
28, 2004.
On
January 28, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that
the domain name <tprf.biz> is
registered with Wild West Domains, Inc. and that the Respondent is the current
registrant of the name. 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
February 4, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 24, 2004 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@tprf.biz by e-mail.
Respondent failed to submit its Response by the deadline
February 24, 2004 set forth in accordance with ICANN Rule 5(a) and filed
its
Response on February 26, 2004. Nevertheless, the Panel elects to accept
Respondent’s submissions. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002) (“Ruling a Response inadmissible because of formal deficiencies would be
an extreme remedy
not consistent with the basic principles of due
process.").
On March 11, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Paul M. DeCicco
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The Prem Rawat Foundation (“TPRF”), is a
duly authorized charitable non-profit organization registered with the Internal Revenue Service as a 501(c) 3 tax-exempt entity. The purpose of TPRF is to disseminate a
message of peace through the understanding of the teachings of Prem Rawat, a
world-acknowledged
teacher and public speaker on the subject of inner peace.
The TPRF mark is valid and
subsisting on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) as Reg. No. 2,779,125
for classes 45, 9, 16, and 41.
Complainant is the owner of the following domain names:
<tprf.org>; <tprf.net>;
<tprf.info>.
Complainant is the owner and bona
fide senior user of the TPRF trade name, has been using the TPRF mark in interstate and international commerce and
communications and has developed considerable goodwill since first use in 2002.
Complainant’s substantial
advertising and promotion of the TPRF mark and domain names has created
significant goodwill and widespread
public recognition. The genuine TPRF website is the primary
source of information and material about this message, receiving thousands of
unique page
visits each month.
Respondent registered <tprf.biz> on or about May 5,
2003. The domain name registered by Respondent, <tprf.biz>, is
confusingly identical to Complainant’s registered TPRF mark. The counterfeit domain name intentionally
incorporates the TPRF mark in a thinly veiled attempt to re-direct Internet
traffic and
to dilute the goodwill rightfully belonging to Complainant. The
only difference between the TPRF mark and <tprf.biz>
is the addition of the generic top-level domain (gTLD) “biz.”
Respondent has no rights or
legitimate interests in the <tprf.biz>
domain name. Complainant has
not licensed or otherwise permitted Respondent to use the TPRF mark. To
Complainant’s knowledge, Respondent has
never been commonly known by TPRF and
has never acquired trademark or service mark interests in such name. Given Complainant’s established use of the
TPRF mark, it is unlikely that Respondent is commonly known by the TPRF name.
Respondent has no protectible fair
use interests in the misuse of the TPRF mark, because the counterfeit domain
name does not point
to a page about TPRF.
When readers looking for TPRF type in <tprf.biz>, they are forcibly re-directed (thorough unseen
computer scripts) to a website called “Roger’s House Of Maharaji Drek” (“The
Drek
Page”) (<oz.net/~drek>).
This website is a neurotic hodge-podge of incoherent ramblings and
obscene and offensive images, but does not on its face present
social
commentary about TPRF.
The Drek Page contains links to other websites, including hate speech
websites, the creators of which have recently been enjoined from illegally
distributing stolen computer
data and files of a proprietary and private
nature. Because Respondent does not use <tprf.biz>
to comment upon TPRF, and uses it as a means to divert traffic to other
pages, many of an unlawful nature, it is clear Respondent
has no legitimate
interest in using TPRF in its domain name.
The Drek Page was created as early
as 1999, which long precedes the incorporation of TPRF in 2002. It is impossible to argue that Respondent
must have the <tprf.biz> domain
in order to have its page accessed:
Respondent was apparently able to promote its “thoughts” to a worldwide
audience prior to the existence of the TPRF.
Transferring the domain name to Complainant cannot deprive Respondent of
any platform from which to distribute its “message.”
Respondent’s intention of driving
Internet traffic away from Complainant through the use of an identical domain
name is prima facie evidence of bad
faith.
B. Respondent
Respondent’s domain name <tprf.biz> is not confusingly
similar to a trademark or service mark in which Complainant has rights.
Complainant has a registered trademark
(Reg. No. 2,779,125) filed with the
USPTO in May, 2002, solely in the word mark and design “Prem Rawat” and not to “TPRF” as
Complainant suggests.
In addition to failing to establish
that Complainant has a registered trademark in “TPRF,” Complainant has also
failed to establish
that Complainant has exclusive common law rights to the
mark “TPRF.” An Internet search conducted on <google.com> elicited
the
fact that TPRF is an acronym for many other things besides The Prem Rawat
Foundation, e.g., Texas Photo Record File (<texasbirds.org/tbrc/ar2000>),
Torpedo Run Facility
(<efdpac.navfac.navy.mil/divisions/environmental/pmrfff1>), Tobacco
Policy Rating Form (<tc.bmjjournals.com/cgi/content/abstract/5/4/286>),
Thymic Plasma Recirculating Factor
(<jimmunol.org/cgi/content/abstract/122/2/414>), among others.
Respondent does not dispute that
Complainant is the owner and bona fide senior user of the mark “Prem Rawat.” However Complainant is not
the owner and bona fide senior user in the mark “TPRF.” Complainant has
presented no evidence that
it has used “TPRF” in interstate and international
commerce, nor any evidence demonstrating that it has developed any goodwill,
let
alone considerable goodwill in “TPRF.” Nor can it, since “TPRF” is, as demonstrated above, an acronym for
many things besides Complainant.
On
Complainant’s own website, located at the <tprf.org> domain name, there
are approximately 15 pages
of content and only once is “TPRF” ever used as an identifying acronym. Of course, “tprf” is used in URLs.
The
<tprf.com> domain name was registered by a Panama corporation with
contacts in Riga, Lativa. The
<tprf.com> domain name was registered on
December 15, 1999. Unless the
Complainant is also doing business as Sentra Holdings Ltd., Complainant is
already in the position of not having exclusive
use for all possible “TPRF”
gTLDs. Clearly, if Complainant had a
real concern about trademark encroachment they would have selected a different
acronym and domain name
since <tprf.com> was already registered.
Complainant has
neither a registered trademark nor exclusive common law rights to the mark
“TRPF.”
The
use of a particular
domain name will not cause a likelihood of confusion among consumers with respect
to the trademark holder's use of the trademark
in connection with its business,
where the trademark holder does not have exclusive claim to its trademark, the
website's content
is extraordinarily different from the trademark holder's
products, and the website has little to do with commerce. Based on these
factors, Respondent’s site does not cause a likelihood of confusion with
Complainant’s use of the TPRF mark.
Complainant does not have exclusive claim to the TPRF mark. Further, Respondent’s website does not
purport to “offer information in the field for philosophy via the Internet” (as
specified in
Complainant’s Prem Rawat trademark registration for the
identification of goods and services - see Exhibit A). Instead, Respondent’s website is a social
commentary, remarking on an organization with which Respondent’s beliefs
differ.
Finally,
Respondent neither engages in commerce on its site, nor does Respondent link to
any sites that engage in commerce.
FINDINGS
Complainant does not have registered
trademark rights in “TRPF” but rather has colorable common law rights in that
mark.
Respondent has never been known as TRPF
and has no claim of rights or interest in the mark TRPF.
Respondent knew of Complainant’s use of
TRPF in domain names prior to Respondent’s registering the at-issue domain
name.
Respondent registered the at-issue domain
name because of the name’s reference to Complainant’s enterprise and domain
names.
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.
Complainant
references its registered mark in “The Prem Rawat Foundation” by the
abbreviation “TPRF.” It then goes on to
state that it has a registered trademark in “TPRF.” If we substitute “The Prem
Rawat Foundation” for “TPRF” the
Complainant’s statement is correct. But if we read the plain language,
Complainant represents it has a discrete registered trademark in the initials
TPRF, when it does
not.
Complainant
misleadingly states that Complainant’s registered mark is “identical” to the
at-issue domain name, when it clearly is
not identical. (“The Counterfeit
Domain Name registered by the Respondent <TPRF.BIZ> is confusingly
identical to Complainant’s registered TPRF Mark”). Complainant’s
registration is for “The Prem Rawat
Foundation” not for “TPRF.” This
kind of verbal horseplay by Complainant’s counsel in drafting the operative
Complaint is reprehensible and technically voids
Complainant’s certification
that the Complaint is “complete and accurate.”
Unfortunately, there is no mechanism available under the UDRP to
sanction such conduct by counsel, except perhaps by the draconian
measure of
summarily denying Complainant’s request. In deference to Complainant who may
have only been peripherally involved in drafting
the Complaint, the Panel
chooses to decide this case on the merits.
Notwithstanding that Complainant does not have a
registered trademark in TPRF, registration is not necessary to succeed in a
UDRP
proceeding. Common law trademark rights are sufficient. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2
(4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that
“the reference to a trademark or service
mark ‘in which the complainant has
rights’ means that ownership of a registered mark is not required–unregistered
or common law trademark
or service mark rights will suffice” to support a
domain name Complaint under the Policy); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and
service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service
marks”).
The use of the second-level domain names and accompanying website in
commerce give Complainant colorable common law rights in the
“TPRF” mark.
Importantly,
Respondent is estopped from denying that Complainant has established common law
rights in the TPRF mark. Respondent devotes
considerable amount of discussion
of collateral matters in its Response concerning the activities of Complainant.
Complainant registered
three domain names using “TPRF,” as the second-level
name. Respondent was well aware of Complainant’s domain names and apparently
selected <tprf.biz>, as opposed to some other name or letter group, to
mimic Complainant’s prior domain registrations. Thus the registration of the domain name indicates that in
Respondent’s mind the mark “TPRF” had become a source identifier for the
activities
of Complainant. Therefore, Respondent is estopped, for the purposes of this
proceeding, from claiming that Complainant
has no common law trademark rights
in TPRF.
The at-issue domain name is confusingly
similar to the TPRF mark because the domain name fully incorporates
Complainant’s mark and
merely adds the generic top-level domain “.biz.” The addition of the generic top-level domain
“.biz” is irrelevant in determining whether the domain name is confusingly
similar to
Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since
use of a gTLD is required of domain name registrants").
Complainant has neither licensed nor otherwise permitted
Respondent to use the TPRF mark. Respondent has never been commonly known by
TPRF and has never acquired
trademark or service mark interests in such name.
Respondent pursues two alternative lines of reasoning to persuade the Panel
that
it nevertheless has rights or interests in the <tprf.biz> domain
name.
First, Respondent argues that the
initials “TPRF” are used by other entities
such as: Texas Photo Record File,
Torpedo Run Facility, Tobacco Policy Rating Form and Thymic Plasma Recirculating Factor. Respondent further asserts that the fact
that <tprf.com> is registered by a Panama corporation is evidence that
Complainant
does not have exclusive rights to marks or URLs that contain the
acronym TPRF. However, the lack of
exclusive rights by Complainant, does not show Respondent has rights or
legitimate interests in the domain name.
Unlike Respondent’s example domain
name registrations, Respondent registered <tprf.biz> domain name
because it was identical to the Complainant’s currently registered second level
domain names which were the initials for
Complainant’s registered trademark,
rather than to convey the initials of some bona fide activity or enterprise
related to Respondent.
Respondent’s second
line of reasoning suggests that it is using the domain name for a legitimate
fair use pursuant to Policy ¶ 4(c)(iii).
This fair use defense starts from the
premise that even though Complainant may have rights in the mark, Respond may
use that mark
under particular circumstances for criticism and commentary. In
particular, Respondent claims to use the at-issue domain name to
voice its
dissatisfaction with Complainant’s enterprise.
Respondent goes on
to assert the First Amendment of the Constitution as a defense. See Bridgestone Firestone,
Inc. v. Myers,
D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights
and legitimate First Amendment interests in the domain
name
<bridgestone-firestone.net> where Respondent linked the domain name to a
“complaint” website about Complainant’s products);
see also Britannia
Bldg. Soc'y v.
Britannia Fruad Prevention, D2001-0505 (WIPO July 6, 2001) (finding
legitimate interests in Respondent's favor because "the goals of the
Policy are limited
and do not extend to insulating trademark holders from
contrary and critical views when such views are legitimately expressed without
an intention for commercial gain").
However, while the content of
Respondent’s website may enjoy First Amendment protection, such protection does
not spawn rights or
legitimate interests with respect to a domain name which is
confusingly similar to another’s trademark. Respondent cannot claim rights
or
legitimate interests in the domain name based on a parody (fair use) or some
other First Amendment based theory by pointing to
the content of a website
referenced by a domain name which is identical to Complainant’s mark. See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24,
2000); see also Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002); see also People for the Ethical Treatment of Animals
v. Doughney, [2001] USCA4 201; 263 F.3d 359 (4th Cir. 2001). Therefore, Respondent has failed to
demonstrate that it has any legitimate rights or interests in the at-issue
domain name.
If Complainant had a registered trademark
in “TPRF,” Respondent might have had constructive knowledge of Complainant’s
mark via the
mark’s registration with the USPTO, as Complainant claims. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).
But as discussed above, Complainant’s registration does not magically extend to
include
the initials of its registered trademark.
On the other hand, Respondent had actual
knowledge that Complainant was using “TPRF” in domain names when it registered <tprf.biz>. Indeed, Respondent appears to have
registered <tprf.biz> only
because it mimicked the domain names registered by Complainant. Panels have
found that that merely having actual knowledge of
the trademark rights of
Complainant demonstrates bad faith registration. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD., FA
92054 (Nat. Arb. Forum Feb. 29, 2000); see also
Moana Pacific Fisheries Ltd. v. Turner New Zealand, D2000-0139 (WIPO Apr. 26,
2000).
Respondent explains that it registered
the domain name to voice dissatisfaction with Complainant and that such use
might also be considered
a parody pursuant to Policy ¶ 4(c)(iii). But
Respondent’s objective might have been accomplished without using a domain name
identical
to Complainant’s domain names and common law mark. See generally,
People for the Ethical Treatment of
Animals v. Doughney, at 366-367.
Moreover,
Respondent does not offer
any reason why it was appropriate or necessary to register and use a domain
name identical to a second level
domain name already being used by Complainant.
Wouldn’t another domain name, which did not tread on Complainant’s mark, serve
equally
well as a reference to Respondent’s material? The lack of a good faith
explanation by Respondent raises an inference that Respondent
was acting in bad
faith in registering and using the at-issue domain name. See Bloomberg L.P. v. Scharf, FA 96264 (Nat. Arb. Forum Jan. 13, 2001).
While the free competition in ideas on
the Internet should be unfettered, such competition should not be unfair. Here,
Respondent
registered and used the same second level domain name as
Complainant’s trademark and domain names. Respondent’s apparent motivation
was
either to confuse Internet users viewing and interacting with material and
links that Respondent controlled into believing the
material and links were
sponsored by Complainant, and/or to divert traffic away from Complainant’s
website. Registration and use of a
domain name under such circumstances constitutes bad faith. Moreover, the use
of a domain name in this manner
is likely to tarnish Complainant’s mark and is
implicitly proscribed by Policy ¶ 4(c)(iii).
Therefore, the domain name <tprf.biz> was registered and is
being used in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tprf.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 27, 2004
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