DECISION

The Napoleon Hill Foundation v. Local Services ICN

Claim Number:  FA0403000245920

PARTIES

Complainant is The Napoleon Hill Foundation (“Complainant”), represented by Sana Hakim, of Bell, Boyd & Lloyd LLC, 70 West Madison, Suite 3300, Chicago, IL 60602.  Respondent is Local Services ICN (“Respondent”), P.O. Box 33180, Sheung Wan, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <napoleonhill.com>, registered with Fabulous.com.

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.

Honorable Paul A. Dorf (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 12, 2004; the Forum received a hard copy of the Complaint on March 15, 2004.

On March 16, 2004, Fabulous.com confirmed by e-mail to the Forum that the domain name <napoleonhill.com> is registered with Fabulous.com and that Respondent is the current registrant of the name.  Fabulous.com has verified that Respondent is bound by the Fabulous.com 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 March 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 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@napoleonhill.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <napoleonhill.com> domain name is identical to Complainant’s NAPOLEON HILL mark.

2. Respondent does not have any rights or legitimate interests in the <napoleonhill.com> domain name.

3. Respondent registered and used the <napoleonhill.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a foundation promoting personal success, based on a theory started by its namesake.  Complainant has used the NAPOLEON HILL mark for more than 50 years.  It registered various NAPOLEON HILL marks with the U.S. Patent and Trademark Office (“USPTO”) (Reg. Nos. 1,573,906, 1,576,096, 1,828,250, 1,838,188, 1,849,279, 1,831,175, 1,961,678, and 2,201,769, registered on December 26, 1989, January 9, 1990, March 29, 1994, May 31, 1994, August 9, 1994, April 19, 1994, March 12, 1996, and November 3, 1998, respectively).

Respondent registered the <napoleonhill.com> domain name on August 9, 2000.  The domain name referrs Internet users to an online retail directory, with advertisement links to different websites.

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has rights in the NAPOLEON HILL mark as determined by its registration with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. 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 <napoleonhill.com> domain name is identical to Complainant’s NAPOLEON HILL mark.  The only difference is the omission of the space between words and the inclusion of the “.com” generic top-level domain (“gTLD”), which does not significantly distinguish the domain name from the 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel may construe Respondent’s lack of a Response as an admission of all reasonable facts and assertions in the Complaint.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l., D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the disputed domain name to offer directory services.  Using someone else’s trademark to offer directory services is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

The record is absent evidence, including Respondent’s WHOIS information, which indicates that Respondent is commonly known by the <napoleonhill.com> domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel infers that Respondent receives remuneration for Internet referrals from its directory site because the directory serves as an advertising portal site.  Respondent is wholly appropriating Complainant’s mark for commercial gain.  Creating a likelihood of confusion to intentionally attempt to attract Internet users for commercial gain is evidence of bad faith registration and use, pursuant to Policy ¶ 4(b)(iv).  See D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Because Respondent registered a domain name identical to Complainant’s mark, and offered a service that has nothing to do with Complainant, the Panel also infers that Respondent had notice of Complainant’s rights in its mark.  This is bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner. . .  Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer, that the domain name was selected at random since it entirely incorporated Complainant’s name)

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <napoleonhill.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 27, 2004

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