WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FPS Training Corporation v. Domain Administration Limited
Case No. D2007-1860
1. The Parties
The Complainant is FPS Training Corporation of Overland Park, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.
The Respondent is Domain Administration Limited, of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007. On December 17, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 24, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
On January 29, 2008, the Panel issued Procedural Order No. 1 seeking further particulars from the Complainant to be filed no later than February 4, 2008, consisting of evidence of the Complainant’s ownership in U.S. registration No. 1,740,293 FRED PRYOR quoted in and annexed to the Complaint. In response to Procedural Order No. 1, the Complainant filed a further submission (including evidence) on January 31, 2008.
4. Factual Background
The Complainant is a company incorporated in the United States of America, having its principal place of business in Kansas City, Missouri, and offering seminars and related services in connection with the mark FRED PRYOR. An individual named Fred Pryor is a shareholder of the Complainant and well-known in the United States of America and many other countries worldwide in connection with business seminars. Through his company Fred Pryor Seminars and its successors in interest (amongst them the Complainant), Fred Pryor has been offering seminars since 1970. These seminars have been promoted worldwide through brochures and on the Internet under the name of FRED PRYOR.
The Complainant is the owner of the service mark FRED PRYOR in the United States of America (registration no. 1,740,293), registered on December 15, 1992 (the “FRED PRYOR Mark”).
The disputed domain name was first created on August 20, 2003.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(i) The domain name is identical to the name and trademark in which the Complainant enjoys exclusive rights as the domain name fully incorporates the Complainant’s FRED PRYOR Mark.
(ii) The Complainant further contends that it could not find any evidence that the Respondent has made any bona fide offerings of goods or services in connection with the domain name at issue. The Respondent is not commonly known by the domain name, nor is there evidence of a non-commercial or fair use of the domain name by the Respondent, as the disputed domain name is used to provide a website containing commercial links to websites of the Complainant’s competitors.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that it has operated its seminar business for approximately 30 years prior to the registration of the domain name by the Respondent, and that it owns a trademark registration which is deemed incontestable. With regard to bad faith use the Complainant contends that the Respondent intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of its website or the products or services identified therein. Mr. Fred Pryor did not authorize the Respondent to register the domain name. The Complainant finally contends that the domain name was registered in bad faith in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive and widely known FRED PRYOR Mark in which the Complainant has exclusive rights.
Furthermore, it is also well established that the specific top level domain is not an element of distinctiveness that is taken into consideration when evaluating the identity and similarity of a complainant’s trademark and a disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology,WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
Based on the evidence before the Panel, the Respondent is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(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
(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 its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, the Complainant has been running an established business for many years and has heavily marketed its services under the name and trademark FRED PRYOR worldwide. On the website at the disputed domain name the Respondent has been providing active links to the Complainant’s competitors as well as inactive links to original FRED PRYOR seminars. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, the Complainant provided evidence that the Respondent was involved in at least 28 proceedings under the Policy in the past, all resulting in the transfer of the respective domain name to the complainant concerned. The Panel is therefore convinced that the Respondent is acting in a pattern of preventing owners of trademarks from reflecting their marks in corresponding domain names and therefore in bad faith under paragraph 4(b)(ii) of the Policy.
Furthermore, by fully incorporating the FRED PRYOR mark into the domain name and by providing links to direct competitors of the Complainant at the website under the disputed domain name, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to his own for the purpose of earning revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references).
Therefore the Complainant has established that the Respondent registered and has been using the disputed domain name in bad faith and thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: February 12, 2008
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