WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa

Case No. D2003-0248

 

1. The Parties

The Complainant is Chinmoy Kumar Ghose, also known as Sri Chinmoy, c/o an address in Philadelphia, United States of America. He is represented by the Law Offices of Timothy C. Williams of United States of America.

The Respondents are ICDSoft.com of Sofia, Bulgaria, and Maria Sliwa of Garfield, New Jersey, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <aboutsrichinmoy.com> and <gurusrichinmoy.com> are registered with Network Solutions, Inc. and eNom, respectively.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2003 (by email), and on April 7, 2003 (hard copy). On April 2, 2003, the Center transmitted by email to Network Solutions, Inc. and eNom, a request for registrar verification in connection with the domain names at issue. On April 3 and April 4, 2003, respectively, eNom and Network Solutions, Inc. transmitted by email to the Center their verification responses, confirming that the Respondents are listed as the registrants of the domain names as stated in section 2 of this Decision. The Registrars also provided the contact details for the administrative, billing, and technical contacts for each of the domain names in issue.

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 the Respondents of the Complaint, and the proceedings commenced on April 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondentsí default on May 1, 2003.

The Complainant having requested a three-member Panel, the Center on May 7, 2003, appointed the Honorable Charles K. McCotter, Jr. and Kristiina Harenko as panelists in this proceeding, and on May 9, 2003, appointed Warwick Smith as Presiding Panelist. 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.

The language of the proceeding is English, being the language of the respective Network Solutions Inc. and eNom registration agreements.

 

4. Factual Background

The following facts are taken from the Complaint. In the absence of any Response from the Respondents, the matters set out in this section of our decision are to be taken as sufficiently proved (paragraph 5(e) of the Rules).

The Complainant

The Complainant is Chinmoy Kumar Ghose, also (and perhaps more commonly) known as Sri Chinmoy. The expression "Sri" is a title of respect in the Hindi language.

Sri Chinmoy is a celibate Yogi who, for the last 30 years, has led twice-weekly peace meditation at the United Nations Headquarters in New York City. These meditation meetings are held for delegates and staff at the United Nations. He came to the United States in 1963, and slowly gathered a group of followers, or students. A "People Daily" article produced by the Complainant refers to a total of 700 individuals worldwide having dedicated their lives to the Complainantís spiritual path. His main meditation center appears to be in Queens, New York City, and it appears (from footnote 8 to the Complaint) that that Center is known as the "Sri Chinmoy Center."

Another extract from "People Daily" (produced at Annex 5 to the Complaint) states that Sri Chinmoyís writings have been published in several languages. He is described in that article as a "painter, poet, songwriter and playwright," both in Bengali and English.

Sri Chinmoy has received numerous awards in a number of countries, generally acknowledging his contribution to the search for world peace. It is evident from the Complaint that he is a world figure in this area. A number of prominent religious and political leaders have praised the Complainant, including Pope John Paul II, Mother Theresa, Nelson Mandela, and Mikhail Gorbachev.

The Complainantís Marks

The Complainant asserts that he is the owner of two common law marks, namely SRI CHINMOY and GURU SRI CHINMOY. He says that those marks are used in connection with a number of categories of goods and services. These include:

(i) Publication of books and educational services, namely, conducting courses of instruction in the fields of religion, self improvement, meditation and yoga;

(ii) Evangelistic and ministerial services; namely, providing temples and ashram centers for meditation and prayer, conducting prayer, devotional readings and inspirational services and disseminating the teachings of yoga;

(iii) Books, magazines, calendars, postcards, booklets, brochures, and pamphlets on the subject of religion and spirituality.

Ö

(vii) Charitable services, namely promotion of world peace and a healthy lifestyle through international running events.

The word "Guru" is an Indian word. Websterís revised unabridged dictionary defines "Guru" as "a spiritual teacher, guide or confessor among the Hindus." The word is the most common term of respect and reverence for a Hindu-style spiritual teacher.

At Annex 3 to the Complaint, the Complainant has produced a printout from the Amazon.com website, on which a number of books published by Sri Chinmoy are offered for sale. The Amazon.com website extract states the name of the publication (e.g. "Meditation: Man Perfection in God Satisfaction"), typically followed by the words "by Sri Chinmoy." In some instances the date of publication is also included with the Amazon.com listing, and it is apparent that some of the titles go back to the 1980s. In some instances the words "Sri Chinmoy" are repeated after the words "by Sri Chinmoy" Ė however it is not clear from the extracts produced by the Complainant what that repetition of "Sri Chinmoy" signifies.

It appears from documents produced at Annex 5 to the Complaint, that there is also a radio service known as "Radio Sri Chinmoy."

The Respondents

The Registrant of the domain name <gurusrichinmoy.com>, is the Respondent ICDSoft.com of Sofia, Bulgaria. The Registrant of <aboutsrichinmoy.com>, is the Respondent Maria Sliwa of Garfield, New Jersey, United States of America. The Complainant says that, although there are different nominal registrants, the two domain names are in fact owned or controlled by one and the same person, namely the Respondent Maria Sliwa.

ICDSoft.com is an Internet service provider and host for third-party websites. The Complainant says that, if ICDSoft.com had any active involvement in the registration or use of the <gurusrichinmoy.com> domain name, it was in the sole capacity as a passive agent for Maria Sliwa.

A message posted by Maria Sliwa on a Yahoo! Group Bulletin Board shows that Ms. Sliwa has been a practicing Evangelical Christian since 1991. (The Complainant says that she was expelled from the Complainantís Meditation Center in 1984.)

She is now involved in producing Christian radio, and she also writes articles which appear on many Christian websites. As recently as January 2003, she has posted messages on a Yahoo! Group Bulletin Board which have been critical of the Complainant.

This administrative proceeding has been notified to both ICDSoft.com and Maria Sliwa. Neither has made any response.

Registration of the <aboutsrichinmoy.com> Domain Name

This domain name appears to have first been registered on October 21, 2001.

The Complainant has produced a schedule setting out particulars of a number of changes in the registration details of this domain name. That schedule shows that in January 2002, the domain name was registered to "Steve Stevens," with the (seemingly improbable) address of:

"1xxx
NY, NY 11432
US"

The schedule shows that on July 29, 2002, Mr. Stevens, although remaining as registrant of the <aboutsrichinmoy.com> domain name, relinquished the role of administrative contact to "Nader, Ralph n," with an email address nobody@nobody.com. Later, in 2002, the administrative contact for the domain name was changed to "Peter, John," with an address in the Eastern Cape area of South Africa, and the email address "anonymousaccount@webmail.co.za."

Maria Sliwa first became registrant of the <aboutsrichinmoy.com> domain on September 16, 2002, providing as her address a Post Office Box at Garfield, New Jersey. The schedule produced by the Complainant shows that immediately prior to Ms. Sliwa becoming registrant of the domain name, the registered address for the then-registrant "Steve Stevens," was that same Garfield, New Jersey Post Office Box.

The copy of the Complaint in this proceeding which the Center sent by registered post to the Garfield, New Jersey address provided in the Whois database for the Respondent Maria Sliwa, was returned marked "not deliverable as addressed Ė unable to forward." Copies of the Complaint sent to "postmaster@aboutsrichinmoy.com," and to the email address provided for the technical contact for that domain name, were returned noted "permanent fatal errors."

The Website to which the Domain Names Resolve

The domain name <aboutsrichinmoy.com> resolves to a page within the <gurusrichinmoy.com> website (which is hereafter referred to for convenience as "the Respondentsí website").

The Complainant says that the main thrust of the Respondentsí website is to promote false and defamatory statements about the Complainant, including serious allegations of sexual misconduct. At least as recently as April 2002, the home page of the Respondentsí website was entitled "Sri Chinmoy Center Help & Information." This "Help & Information" page advised the website visitor that the site had been set up to help those who had left the Sri Chinmoy group, to communicate with others. It was also intended to provide encouragement and support to such people, and to give information to those within the group who sought additional information. This web page went on to advise that the home page had not been set up to try to cause harm to Sri Chinmoy, his name, or his meditation group. It observed "many who are in the group continue to support Sri Chinmoy and we also respect this." However, some of the text on this page appeared to question the Complainantís claims of celibacy, and suggested that there were many "cultish" aspects to the group, and difficulties faced by those who had been expelled from the group. "Students" were exhorted to publicize any unethical behaviour on the part of teachers at the meditation center.

Overall, the extracts from the Respondentsí website which were produced by the Complainant appear to support his description of the Respondentsí website material as being of an anti-cult nature, which infers that people who follow a Guru may be victims of mind control and may need to be "rescued."

The Respondentsí website links with other Christian websites, and to the sites of "anti-Hindu" "deprogrammers," who offer their services, for profit, to "deprogram" students of eastern spiritual studies.

Complainantís Request for Transfer of the <aboutsrichinmoy.com> Domain Name

The Complainant says (footnote 12 to the Complaint) that he has requested the Respondent to transfer the domain name <aboutsrichinmoy.com> to the Complainant, but the Respondent has refused to do so.

Alleged Unlawful Content on Respondentsí Website

The Complainant says that numerous Internet service providers have removed the Respondentsí website from the worldwide web, because of its allegedly unlawful content (alleged trademark violations, defamation, pornographic content, and "other problems").

 

5. Partiesí Contentions

A. The Complainant

1. The two domain names in issue in this proceeding are owned or controlled by the same person, namely Maria Sliwa.

2. The Complainant is the owner of the common law marks SRI CHINMOY and GURU SRI CHINMOY. Both marks are used in connection with a range of goods and services, including those already referred to.

3. There is an unambiguous secondary meaning in the mark SRI CHINMOY, and enormous goodwill associated with the name Sri Chinmoy.

4. The mark GURU SRI CHINMOY has been widely used in the worldwide media to connote the Complainantís goods and services.

5. The domain name <gurusrichinmoy.com> is identical to the Complainantís mark GURU SRI CHINMOY. Both that domain name and the domain name <aboutsrichinmoy.com> are confusingly similar to the Complainantís SRI CHINMOY mark.

6. Proof of intent to infringe and to trade on the mark-holderís goodwill, creates a presumption that the public is likely to be confused. In this case, the Respondents registered the domain names in order to confuse consumers.

7. The Complainant is not aware of any other strong mark for similar goods and services which is even remotely similar to the Complainantís marks. Because of their uniqueness and strength, the Complainantís marks "cast a long shadow" and are entitled to substantial protection.

8. The Respondents have no rights or legitimate interests in respect of the domain names for the following reasons:

(i) before notice to the Respondents of the present dispute, there is no evidence of the Respondents having used, or made demonstrable preparations to use, the domain names or any names corresponding to the domain names, in connection with a bona fide offering of goods or services. Although the Respondentsí website links to various sites selling anti-cult books, videos, and "counseling" services, those cannot be considered a bona fide offering, as (a) the goods and services are not those of the Respondents, and (b) some of the third parties have allegedly been prosecuted for criminal activities carried out in the course of their "deprogramming" activities;

(ii) the Respondents have never been commonly known by the domain names, and have acquired no trademark or service marks rights in them;

(iii) the Respondents are not making a legitimate non-commercial or fair use of the domain names, but intend for commercial gain (and misleadingly) to divert consumers and to tarnish the marks at issue;

(iv) while the Respondents have the First Amendment right to criticize Sri Chinmoy under the Constitution of the United States of America, they do not have the right to adopt an identical or confusingly similar domain name. Citing Annette Antoun d/b/a The Paxton Herald v. Stephen Millard, FA 02027000114770 (Nat. Arb. Forum, August 21, 2002), a domain name associated with a criticism-centered website violates the Policy unless the domain name itself reveals the critical nature of the Respondentís website. (Again citing The Paxton Herald case), a domain name connected with a criticism website creates initial interest confusion unless it conveys the critical nature of the website;

(v) there is no "non-commercial" fair use defence in this case. Where there are links to commercial sites selling anti-cult books, videos and "counseling" services, the "non-commercial" sites can be regarded as mere conduit sites (i.e. part of the overall commercial enterprise); and

(vi) the content of the Respondentsí website, including as it does defamatory and scurrilous material, disqualifies the Respondents from any fair use defence.

9. The domain names were registered and have been used in bad faith by the Respondents:

(i) The Complainantís marks are highly unusual, and the Respondentsí website focuses on criticizing the Complainant and tarnishing his marks. The Respondents knew of the Complainantís well-known marks at the time of registration of the domain names, and that is prima facie evidence of bad faith registration.

(ii) The tone and content of the Respondentsí website indicate an attempt to confuse consumers.

(iii) The domain names were registered primarily for the purpose of disrupting the business of a competitor (by defaming the Complainant, and attempting to tarnish his reputation, the Respondents are attempting to draw potential consumers of religion and spirituality away from the Complainant and Hinduism in general).

(iv) By using the domain names, the Respondents are intentionally attempting to attract, for commercial gain, internet users to the Respondentsí website, by creating a likelihood of confusion with the Complainant ís marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondentsí website and services accessible through that site.

(v) Even if the Respondents and the Complainant are not competitors, bad faith may be found on the facts involved in this case (by defaming the Complainant in a number of abusive and erratic ways e.g. posting messages on Yahoo! Group bulleting boards attempting to suggest that the Complainant is connected with military dictators in Burma, and encouraging others to post defamatory statements regarding the Complainant, on internet and in newspapers). Furthermore, numerous Internet service providers have removed the Respondentsí website because of its unlawful content (e.g. trademark violations, defamation, pornographic content, and "other problems").

(vi) The Respondent has attempted to avoid prosecution by shunting registration data for the domain names between various fictional names and addresses from month to month, only occasionally including the name of a real person.

B. Respondents

The Respondents did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Procedural Matters

Notification of Complaint to the Respondents

The Panel is satisfied that a hard copy of the Complaint was duly delivered to the Respondent ICDSoft.com at the Sofia, Bulgaria address provided in the Whois Database. The Panel is also satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules, to employ reasonably available means calculated to achieve actual notice to the Respondent Maria Sliwa.

Should Both Domain Names have been Included in One Complaint?

In the circumstances of this case, the Panel is satisfied that it was appropriate for the Complainant to put both domain names in issue in the one Complaint. The <aboutsrichinmoy.com> website resolves to a page within the <gurusrichinmoy.com> website, and that is enough to make it clear that the two domains are effectively owned or controlled by the same person. The Respondent ICDSoft.com is an Internet Service Provider and website-hosting company only, with no apparent interest in the content of the material posted at the <gurusrichinmoy.com> website. The Panel accepts the Complainantís (uncontested) assertion that ICDSoft.com is no more than an agent, or passive holder, of the <gurusrichinmoy.com> domain, for Maria Sliwa.

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondentís] documented out-of-pocket costs directly related to the domain name; or

(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

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the Respondentís] website or location or of a product or service on [the Respondentís] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the Respondent] of the dispute, 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) Where [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) Where [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the Panel to:

"Ö 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)(i) of the Policy Ė Domain Names Identical or Confusingly Similar to Trademark or Service Mark in which Complainant has Rights

The first question under paragraph 4(a)(i) of the Policy is whether the Complainant has the common law trademark rights which he claims. The Complainant is personally known by the name "Sri Chinmoy," and there is extensive evidence that he is well known and respected internationally in the fields of meditation, peace studies and the like. The issue is whether that personal reputation is sufficient to establish common law trademark rights in the Complainantís name or whether the Complainant must also show that his name has become known as a "label," or "origin-identifier," in respect of some particular goods or services. If the latter is the test, has the Complainant proved the existence of such a "secondary meaning?"

This case is in some respects similar to The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohen, Profile.net and God.Info, WIPO Case No. D2002-0184, where the well-known American minister of religion, Dr Jerry Falwell, sought the transfer of the domain names <jerryfalwell.com> and <jerryfallwell.com>. Dr. Falwell claimed common law trademark rights in his name, alleging that his name has appeared on the cover of a well-known weekly news magazine, and featured prominently in a poll of Americaís most admired men. The (three-member) Panel noted that:

"The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. Ö There are many well-known ministers, religious figures, and academics. Are their sermons or lectures to be considered commercial goods? Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the ĎSecond WIPO Reportí). In that Report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. ĎPersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to Society.í Second WIPO Report, paragraph 199."

The Jerry Falwell case is just one example of a number of decisions where WIPO Panels have considered the distinction between the mere protection of a personal name on the one hand, and the legitimate protection of a trademark or service mark from abusive domain name registration on the other. However, the case is useful in illustrating the distinction: as the Panel put it in Jerry Falwell, "Complainant is careful to avoid any suggestion that he has exploited his name for Ďmaterialisticí or Ďcommercialí purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion. That Complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policyí."

In the case with which we are concerned, much of the material produced by the Complainant goes no further than establishing that he is an eminent person known by the name Sri Chinmoy (and on occasion, Guru Sri Chinmoy).

Other WIPO decisions dealing with claims made by famous individuals to prevent their names being used as domain names by others, have produced more favourable results for the Complainants Ė see for example Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, where Panelists have held that it is sufficient that the Complainant should satisfy the Administrative Panel that he or she has sufficient rights to ground an action for passing off.

Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, was concerned with a Complaint by an author who is very well-known in the United Kingdom. The Respondent had registered the domain name <julianbarnes.com>, and the Complainant claimed common law trademark rights in his name. The Respondent argued that JULIAN BARNES was not a trademark or service mark, because it lacked the requisite level of distinctiveness. The learned Panelist held that the easiest way of defining a common law trademark, is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to a successful action in the tort of passing off. As the learned Panelist said in the Julian Barnes case:

"The clearest example of a common law trademark is a personís name, which as the Respondent has pointed out may sometimes be difficult to register as a trade mark. So, if the Panel writes a novel and falsely represents that the author is Julian Barnes, the Complainant would sue in passing off and would undoubtedly succeed. In that example "Julian Barnes" is the common law trademark."

The learned Panelist in Julian Barnes noted that some Panels have discussed the issue of secondary meaning in relation to celebritiesí names (noting the Bruce Springsteen case ĖBruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case D2000-1532). The Panelist in Julian Barnes went on to observe:

"Traditionally, in the context of passing off, one only needs to consider the question of secondary meaning where the primary meaning is descriptive and does not indicate the claimant. The claimant has to prove that the descriptive primary meaning has been displaced by a secondary meaning. Where celebrities are concerned the concept seems slightly out of place in that by definition celebrities have famous names, which serve to identify them to the world at large. Ö"

In summary, then, the learned Panelist in Julian Barnes took the view that all that is required for a famous or very well-known person to establish a common law trademark, is that the famous or very well-known person would succeed in an action for passing off in the event of some other trader using or imitating the name in trade, without authority.

R.E. ĎTedí Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case D2002-0251 Ė was a proceeding brought by the famous American businessman and philanthropist, Ted Turner, seeking a transfer of the domain name <tedturner.com>. After a lengthy discussion of the previous WIPO cases, the majority of the three-member Panel took the view that there was insufficient evidence that the Complainant had ever offered goods or services under the name "Ted Turner," or that that name had acquired any secondary meaning in relation to any goods or services. It was not regarded as sufficient that Mr. Turner is a famous figure, whose name has been cited in the media with great frequency. The majority of the Panel in the Ted Turner case said:

"The rationale in the majority of the UDRP cases in which panelists have found a Complainant to have trademark rights in a real or fictitious personal name has been, as pointed out in the Asper case [a reference to Israel Harold Asper v. Communication X Inc., WIPO Case D2001-0540] at paragraph 6.22:

ĎWhere the Complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone elseís goods or services, or for direct commercial purposes in marketing of his or her own goods and services.í"

In the end, the Panel in this case has not found it necessary to decide whether a famous (or well-known) Complainant seeking to establish common law trademark rights in his or her own name, must show that that name has acquired a secondary meaning associated with some specific goods or services. If proof of any such Ďsecondary meaningí is required, the Panel considers that the Complainant has produced sufficient evidence to succeed, at least in respect of the SRI CHINMOY mark.

If all that is required is that the Complainant would succeed if he were to bring an action for passing off against another trader using the mark SRI CHINMOY (the position taken by the learned Panelist in the Julian Barnes case), the position is more simple. The Panel would have no difficulty in concluding that such a passing off action would be likely to succeed. The Panel accepts as established the fame of the Complainant, and accepts his submissions relating to the distinctiveness of his name. Anyone using or imitating that name in trade without the Complainantís authority would prima facie be liable to the Complainant in passing off (at least if the use were in the same field of endeavour as that in which the Complainant has been using his name).

If there needs to be some evidence of the name "Sri Chinmoy" having acquired a secondary meaning in order for the name to qualify as a common law trademark, the issue is more difficult, but the Panel notes (to borrow from the words of the Panel in the Asper case, paragraph 6.22 and quoted by the majority of the Panel in the Ted Turner case), that the Complainant does appear to have used his personal name as a marketable commodity, for direct commercial purposes in marketing his own goods or services. There is evidence of published works being sold online at "www.amazon.com" under or by reference to the name "Sri Chinmoy," and some of those works appear to have been on the market since the 1980s. There is also some (more limited) evidence of the name "Sri Chinmoy" being used as an identifier of a broadcasting service (a radio station), and also to identify a meditation center run by the Complainant (although there is nothing to tell the Panel whether or not the meditation center is operated as a commercial enterprise). It is not strong evidence but on balance the Panel finds that there has been sufficient use of the SRI CHINMOY mark in association with goods or services of the Complainant, for him to have acquired common law rights in the mark.

The position with the alleged mark GURU SRI CHINMOY is not so clear. If evidence of "secondary meaning" (in the sense described above) is required, the Panel cannot find any in the Complaint. The expression "Guru Sri Chinmoy" appears to have been used only as a reference to the Complainant himself. However, in the view the Panel takes on the question of "confusing similarity" of the domain names with the SRI CHINMOY mark (to which we turn shortly) it is not necessary to make any finding on the Complainantís claim to common law ownership of a GURU SRI CHINMOY mark.

In the result on this part of the case, the Panel finds that the Complainant has a common law trademark right in SRI CHINMOY. It makes no finding on the claim to common law trademark or service mark rights in GURU SRI CHINMOY.

The Panel has little difficulty concluding that both domain names at issue in this case are confusingly similar to the Complainantís SRI CHINMOY mark. The Panel accepts the Complainantís submission that the mark SRI CHINMOY is extremely distinctive, both visually and aurally, especially for English speakers. "Sri Chinmoy" is clearly the dominant element of both domain names, and neither of the prefixes "about" and "Guru" is sufficiently distinctive to prevent consumer confusion arising from the strength of the "Sri Chinmoy" component of the domain names. The Panel also accepts the Complainantís submission that many consumers would simply ignore the prefix "about." As for the prefix "Guru," it only serves to increase the likelihood that consumers would wrongly associate the domain name with the Complainant and his common law mark.

The Complainant has made out his case under paragraph 4(a)(i) of the Policy.

Paragraph 4(a)(ii) of the Policy Ė Respondents Have No Rights or Legitimate Interests in Respect of The Domain Names

The Panel also finds this part of the Complaint proven.

First, the Complainant has not authorised the Respondents to use the domain names.

Secondly, neither Respondent has filed a Response claiming that she or it enjoys some right or has some legitimate interest in the domain names.

On the evidence produced by the Complainant, the Panel finds that the Respondent, Maria Sliwa, was well aware of the Complainant and his SRI CHINMOY mark when the domain names were registered. Ms. Sliwa also must have known that the domain names were confusingly similar to the Complainantís SRI CHINMOY mark, and that the likely result of that confusing similarity would be that some web browsers looking for websites associated with the Complainant would be drawn to the website at <gurusrichinmoy.com>. In those circumstances, the Panel considers that any offering of goods or services through the website at <gurusrichinmoy.com> could not be bona fide, and that there can therefore be no right or legitimate interest under paragraph 4(c)(i) of the Policy.

Neither Respondent has been commonly known by either of the domain names. Paragraph 4(c)(ii) of the Policy therefore does not apply.

Nor can it be said that the Respondents have been making a legitimate non-commercial or fair use of the domain names, within the meaning of paragraph 4(c)(iii) of the Policy. In the Panelís view, it could never be a legitimate or fair use to select a domain name which is confusingly similar to another personís trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.

For the foregoing reasons, the Panel finds that the Respondents do not have any rights or legitimate interests in respect of the domain names.

For the sake of completeness, the Panel notes that this finding does not in any way affect the Respondentsí rights of free speech, including the right to criticize the Complainant to the extent permissible under United States law. The Panel accepts the Complainantís submissions based on the Paxton Herald case (supra), that, while the content of the Respondentsí website may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to anotherís trademark.

The Respondents could have chosen any number of domain names to set up a website focusing on lawful criticism of the Complainant and his activities. What the Respondents are not permitted to do under the Policy, is to deliberately choose domain names which are confusingly similar to the Complainantís mark, with a view to attracting visitors to their website who assume the website must be connected with or related to the Complainant. Nor does the inclusion of a disclaimer on the website itself remedy the position: the Panel accepts the Complainantís submissions based on the Paxton Herald case that the mischief (described there as "initial interest confusion") has already occurred by the time the mistaken browser has arrived at the Respondentsí website.

Paragraph 4(a)(iii) of the Policy Ė Domain Names Have Been Registered and Are Being Used in Bad Faith

The Panel also finds this part of the Complaint has been proved.

In the Panelís view, the Respondents have deliberately and confusingly used the Complainantís mark as the dominant part of the domain names, with a view to attracting web browsers to the Respondentsí website and the criticism of the Complainantís activities which is published on it. That on its own is sufficient, in the Panelís view, to constitute bad faith registration and use (actual knowledge of a Complainantís mark at the time of registering a confusingly similar domain name has been held to be evidence of bad faith Ė see for example The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000Ė0038, and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137. In this case there was not merely knowledge of the Complainant and his mark, but use of the confusingly similar domain name for the purpose of misleadingly directing web traffic to the Respondentsí website).

It does not matter that the facts in this case may not fall within any of the circumstances described at paragraph 4(b) of the Policy. Those circumstances are no more than examples of bad faith registration and use, and do not in any way limit the ability of Panels to find that circumstances other than those described at paragraph 4(b) can amount to bad faith registration and use.

There are also other indicators of bad faith registration and use in this case, particularly in the history of the registration of the <aboutsrichinmoy.com> domain name. In the absence of any Response from the Respondents, the Panel accepts the Complainantís submission that at least some of the names or addresses provided to the relevant registrars have been fictitious (for example, the address initially provided for "Steve Stevens," and the "borrowing" of the name of the famous consumer advocate Ralph Nader (admittedly with an additional "n") as administrative contact for the domain name in July 2002).

The post office box in Garfield, New Jersey has also proved to be an inadequate address (the hard copy of the Complaint which the Center posted to that post office box was returned unclaimed) for <aboutsrichinmoy.com> and the "postmaster" and one other email address provided in the Whois database have proved to be ineffective.

The provision of fictitious information to a registrar has been held to be an indicator of bad faith registration and use in a number of WIPO Panel decisions decided under the Policy (see for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550).

That, taken in conjunction with the Panelís view that the Respondents have deliberately sought to attract visitors to the Respondentsí website by adopting domain names which are confusingly similar to the Complainantís mark, is sufficient to persuade the Panel that both domain names were registered and have been used in bad faith.

 

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 names, <aboutsrichinmoy.com> and <gurusrichinmoy.com> be transferred to the Complainant.

 


 

Warwick Smith
Presiding Panelist

Honorable Charles K. McCotter, Jr.
Panelist

Kristiina Harenko
Panelist

Dated: May 22, 2003