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The Heimlich Institute Foundation, Inc. v. Holly Martins [2005] GENDND 1756 (28 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Heimlich Institute Foundation, Inc. v. Holly Martins

Case No. D2005-0049

1. The Parties

Complainant is The Heimlich Institute Foundation, Inc., Cincinnati, Ohio, United States of America, represented by Frost Brown Todd LLC, Cincinnati, Ohio, United States of America.

Respondent is Holly Martins, New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <heimlichinstitute.com> is registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2005. On January 17, 2005, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 20, 2005, AAAQ.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. At the Center’s discretion, an extension of time to file a Response was granted until March 13, 2005. Respondent did not submit a formal response. Accordingly, the Center notified Respondent’s default on March 15, 2005.

The Center appointed Nels T. Lippert, Mark Partridge and Debra J. Stanek as panelists in this matter on April 4, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On July 12, 2005, the Panel issued a Procedural Order requesting further statements from the parties. A copy of the Order was also served on one Mr. Heimlich, who had filed submissions addressing procedural issues in this proceeding, inviting him to file a response on the merits of the claim. The date set for filing responses with the Center was July 18, 2005. A response was timely received from Complainant. A timely e-mail response was also received from Mr. Heimlich.

A further e-mail response was submitted by Mr. Heimlich on July 19, 2005. On July 22, 2005, Complainant submitted a request that the second Heimlich communication be stricken as untimely or alternatively that Complainant’s further response be considered.

In the interests of ensuring that the parties have had a fair opportunity to be heard and have been treated with equality, the Panel has admitted and considered all communications received by the Center.

4. Factual Background

Since 1982, Complainant has conducted its activities under and continuously used the name The Heimlich Institute to identify itself.

Complainant has also used the name The Heimlich Institute in connection with providing education and instruction concerning the use of the Heimlich maneuver; publishing and distributing educational materials; sponsoring educational speeches and appearances across the United States by Dr. Henry Heimlich; and maintaining a website through which visitors can access informational materials and order educational posters and videos.

In 1997, Complainant registered the domain name <heimlichinstitute.org> and since then such domain name has resolved to Complainant’s website.

The disputed domain name <heimlichinstitute.com> was registered by Respondent on February 10, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends that, as a result of its long and continuous use of the trade name or service mark THE HEIMLICH INSTITUTE, it has United States common law rights in the designation and, thus, it is a protectable mark. Complainant further contends that the disputed domain name is identical to or confusingly similar to its common law mark, differing only by the deletion of the generic word “the” and the addition of the top level domain.

Complainant also contends that Respondent has no rights or legitimate interests in respect of the domain name because it is not authorized by Complainant to use or register Complainant’s trade name or service mark, is not commonly known by the name “Heimlich Institute” and does not provide any products or services or engage in any activities under the name “Heimlich Institute”. Furthermore, because the disputed domain name does not include some indication sufficient to notify Internet users that the website found at the domain name address is not Complainant’s website, it cannot be said to be a fair use.

Complainant further contends that the disputed domain name was registered and is being used in bad faith because Respondent has no legitimate interest in the domain name; Respondent was clearly aware of Complainant at the time Respondent registered the disputed domain name and by using the disputed domain name Respondent is attempting to attract Internet users to its website who are looking for Complainant’s website. Thus, according to Complainant, Respondent’s intent is to misdirect and divert Internet users from the website of Complainant to the website of Respondent.

In addition, Respondent’s bad faith is demonstrated, according to Complainant, by the fact that false information was given to register the disputed domain name. The registrant of record for the disputed domain name, Holly Martins, purportedly having an address in New York, is fictitious as is the telephone number provided on the registration information.

B. Respondent

No formal response was received by the Center from the named Respondent. However, various e-mails were received under the name Holly Martins and Mr. Heimlich. In these communications, it was contended that the proceeding was filed against the wrong entity because Mr. Heimlich had acquired the disputed domain name some time in 2004 from Holly Martins.

It was also contended that the Complaint is defective because Complainant is identified as “The Heimlich Institute Foundation, Inc.” which, according to Mr. Heimlich, ceased to exist in February 1997.

6. Discussion and Findings

Dealing first with the procedural issues, the Panel finds that the parties are properly identified. At the time of filing of the Complaint, the registered owner of the disputed domain name, as set forth in the relevant WhoIs information, was and is the named Respondent. The Rules clearly define Respondent as the holder of the domain name registration against which the Complaint is initiated. In this case, the record holder is the named Respondent. The Panel notes that Mr. Heimlich was invited to be named as a Respondent in these proceedings, but he specifically declined that invitation. Moreover, the Panel notes that Mr. Heimlich’s conduct in this proceeding has been less than forthright. Throughout his initial communications with the Center, Mr. Heimlich asserted that the named Respondent was a separate entity unrelated to himself. However, in response to the Procedural Order, Mr. Heimlich admitted, either expressly or implicitly, that Holly Martins (the Respondent named in the Complaint) is merely a pseudonym that he has used. Therefore, irrespective of the name employed, the Panel concludes that the Complaint has been brought against the proper Respondent. Hereinafter “Respondent” denotes both the named Respondent and Mr. Heimlich.

Similarly, the contention that the Complaint is defective because the named Complainant no longer exists is not compelling. The Panel finds that although there apparently was a name change, the materials submitted do not show a cessation of existence of the named Complainant. Accordingly, the Panel concludes that the Administrative Proceeding has been brought by the proper party in interest.

Dealing now with the merits of the claim, paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii).

A. Identical or Confusingly Similar

The Panel finds that Complainant has demonstrated rights in the mark THE HEIMLICH INSTITUTE based on use. Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218 (June 14, 2000) (recognizing common law rights as a basis for a UDRP complaint). With regard to the disputed domain name, it is well established that the addition (or deletion) of a generic term such as “the” or the addition of a generic top-level domain such as “.com” is not relevant when determining whether a disputed domain name is confusingly similar to a mark. As such, the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights, a fact that has not been disputed by Respondent. Accordingly, the Panel finds that Complainant has established the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that Respondent has no rights or legitimate interests in the disputed domain name. For purposes of paragraph 4(a)(i) of the Policy, Complainant has made a prima facie showing, which Respondent has not refuted, that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use “Heimlich Institute” in a domain name or in any other manner. Complainant also asserts, and Respondent also has not refuted, that Respondent is not commonly known by or has acquired rights in the disputed domain name.

Similarly, the use to which the disputed domain name has been put does not evidence a legitimate interest. The Panel notes that Respondent has not offered any evidence of non-commercial or fair use of the disputed domain name to refute Complainant’s allegations. Because Respondent has not refuted Complainant’s prima facie showing, the Panel would be justified to find for Complainant on this issue without further comment. However this may be, the Panel notes that the website to which the disputed domain name resolves fails, in the Panel’s view, to qualify as a fair use in the context of this domain name. That is, the Panel finds that Respondent’s website does not provide criticism or commentary on The Heimlich Institute. Rather, the disputed domain name resolves to a site that provides criticism about the alleged use of the Heimlich maneuver such as on drowning victims. As Mr. Heimlich characterized it, the site “…serves as a sort of clearinghouse for recently published articles and information about my father, Dr. Henry J. Heimlich (known for the “Heimlich maneuver”) and related information about medical fraud.” Because the disputed domain name is used to misdirect Internet users to a site that is not providing criticism of the Institute per se, but criticism about the use of the Heimlich maneuver on drowning victims and medical fraud, the Panel believes the rationale expressed in Gardere Wynne Sewell LLP v. DefaultData.com, WIPO Case No. D2001-1093 (November 16, 2001) is compelling. In Gardere Wynne Sewell, the respondent registered domain names that corresponded to the names of a law firm for a website used to criticize the legal profession as a whole.

Accordingly, the Panel finds that Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent does not dispute that it had actual notice of Complainant’s prior registered domain name incorporating Complainant’s mark as well as Complainant’s use of “The Heimlich Institute” name under which it operates its business. Despite the Panel Order and thus a specific invitation to do so, Respondent has offered no justification for registering the confusingly similar or identical disputed domain name with knowledge of Complainant’s business and domain name.

As noted above, the disputed domain name does not, in the Panel’s opinion, resolve to a legitimate commentary site about Complainant. Rather, considering Respondent’s inclusion of the specific name of the institute, the Panel finds that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. Moreover, the Panel notes that Respondent has submitted evasive responses in this case rather than responding on the merits and provided false information to register the disputed domain name. All of these facts lead the Panel to conclude that Complainant has established the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <heimlichinstitute.com>, be transferred to Complainant.

Nels T. Lippert Presiding Panelist
Mark Partridge Panelist	Debra J. Stanek Panelist

Dated: October 28, 2005