WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tendzin Jigmey Drakpa, also known as His Holiness Phakchok Rinpoche v. Kim Joe

Case No. D2006-0328

 

1. The Parties

The Complainant is Tendzin Jigmey Drakpa, also known as His Holiness Phakchok Rinpoche, Atlanta, Georgia, United States of America, represented by John Edwards of Atlanta, Georgia, United States of America.

The Respondent is Kim Joe, Bayview, Colorado, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <phakchokrinpoche.com> (the “Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006. On March 17, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On March 21, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative 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 the Respondent of the Complaint, and the proceedings commenced on March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2006.

The Center appointed David H. Bernstein as the sole panelist in this matter on May 16, 2006. 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 the Rules, paragraph 7.

 

4. Factual Background

Because Respondent has failed to file a Response in this case, the Panel accepts all of Complainant’s statements of fact as true for the purposes of this proceeding. Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094 (December 16, 2005); Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 (January 7, 2003).

Complainant is Tendzin Jigmey Drakpa, commonly known as His Holiness Phakchok Rinpoche. Complainant is an ordained monk and the head of the Taklung Kagyu Lineage, a sub-school of one of the principal spiritual traditions of Tibetan Buddhism. Complainant has led meditation retreats for the past six years in Israel, Germany, Denmark, Malaysia, France, Nepal, India, and a number of locations in the United States. Complainant is the head and meditation master of the Riwoche Tibetan Buddhist Temple in Toronto, Canada and the chair of Rangjung Yeshe Shenpen, a non-profit organization that benefits underprivileged people in Nepal. The Rangjung Yeshe website lists Complainant as an author of Tibetan Buddhism.

Complainant had previously used the Domain Name <phakchokrinpoche.com>, but apparently failed to renew it at the time of its expiration. Since then, Complainant has used the domain names <phakchokrinpoche.org> and <phackchokrinpoche.net>.

Complainant claims a common law trademark in his name. Complainant alleges that his name is used in connection with goods and services including books, educational services, meditation courses, religious courses, ministerial services, calendars, magazines, booklets, pamphlets, historical preservation of sacred texts and monasteries, and charitable services.

The website to which the Domain Name resolves contains information about Complainant that appears to have been copied and pasted from another website connected with Complainant. In addition, Respondent has posted a large number of links to pornographic websites. Respondent has failed to respond to Complainant’s requests to take down the website or to transfer the Domain Name for a substantial sum of money.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name that is identical and confusingly similar to Complainant’s common law trademark.

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant alleges that Respondent has not acquired any rights to the Phakchok Rinpoche mark, and that Respondent registered the Domain Name without Complainant’s permission. Complainant further alleges that Respondent used the mark to divert followers of Phakchok Rinpoche to a website containing numerous links to pornographic websites under such names as “little boy fucking” and “13-year-old girl fucking.” Finally, Complainant asserts that Respondent’s use of the Domain Name creates a likelihood of confusion as to the source, affiliation, or endorsement of Respondent’s website, as followers and Internet users believe that <phakchockrinpoche.com> is associated with Phakchok Rinpoche himself.

Complainant contends that Respondent registered and is now using the Domain Name in bad faith. Complainant alleges that Respondent simply copied information about Complainant and his tribe from another website, “www.shedrub.com”, and added pornographic links to the website in order to generate a profit.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.1

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent 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.

A. Identical or Confusingly Similar

To demonstrate entitlement to relief, Complainant must establish, as an initial matter, that he has common law trademark rights in his name.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview,” available at http://www.wipo.int/amc/en/domains/search/overview/), the consensus view2 among WIPO Panelists is that personal names can be protected when they function as common law trademarks: “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.” The Overview cautions that “[t]he name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.” WIPO Decision Overview, § 1.6.

Complainant is a religious leader, but he does not claim trademark rights merely by virtue of his status as a religious leader. Rather, as in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248 (May 22, 2003), Complainant asserts that he offers goods and services under his name, with his name serving as a trademark and service mark designating the source of goods and services such as ministerial services, educational services, charitable solicitations, and publication of books, magazines, calendars, postcards, brochures and pamphlets. These factual allegations, which are unrebutted by virtue of Respondent’s default, are sufficient to establish common law trademark rights for purposes of this proceeding.

It is worth noting that the evidence submitted by Complainant thus stands in sharp contrast to the evidence submitted in Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Profile.net, and God.info, WIPO Case No. D2002-0184 (June 3, 2002). In that case, the panel noted that “Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic’ or ‘commercial’ purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion.” Complainant in this case similarly claims to be an educator and religious teacher, but he also claims to have used his name commercially for educational and charitable purposes, and those allegations are sufficient to establish common law trademark rights.

If there were any lingering doubt about whether Complainant’s name functions as a trademark, Respondent’s conduct has reinforced the Panel’s view that Complainant’s name is a valuable indicator of source. By registering the Domain Name and posting information about Complainant, Respondent has indicated that he is aware of Complainant and that the Domain Name necessarily refers to Complainant. By also posting commercial links on the website (which presumably generate click-through revenue for Respondent), Respondent has indicated that he believes Complainant’s name will attract potential commercial traffic to the website. These facts, coupled with the facts alleged in the Complaint, further support an inference that Complainant has developed sufficient secondary meaning in his name to give rise to common law trademark rights.

Having determined that Complainant owns common law trademark rights in his name, there is no question but that the Domain Name is identical to Complainant’s mark. But for the gTLD “.com”, which is commonly disregarded for purposes of this analysis, the Domain Name consists entirely of an exact reproduction of Complainant’s mark.

Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Based on the evidence submitted, Complainant has proven that Respondent has no rights or legitimate interests in the Domain Name.

Respondent’s use of the Domain Name is not a use in connection with a bona fide offering of goods or services because there is nothing “bona fide” about associating Complainant’s mark with links to pornographic websites. Nicole Kidman v. John Zuccarini d/b/a/ Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001). There is no evidence that Respondent has commonly been known by the Domain Name. And, Respondent’s use of the Domain Name to resolve to a website mixing information about Complainant with links to pornographic content (which presumably generates click-through revenue for Respondent) is not a fair use because Respondent appears to be using the Domain Name for commercial gain and in a manner likely to tarnish Complainant’s trademark. Id.; cf. Benjamin Ladner v. Ben Wetmore, NAF Case No. 305190 (October 13, 2004) (finding legitimate interest where domain name consisting of complainant’s name was used for non-commercial criticism site).

Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

Registration of a domain name to intentionally attract Internet users to the website, for commercial gain, based on a likelihood of confusion with complainant’s mark is a classic example of bad faith under paragraph 4(b)(iv) of the Policy. That is precisely what Respondent has done in this case.

Respondent lures Internet users to his website by using Complainant’s mark as the Domain Name. Once users are at the site, they are encouraged to stay and browse the website, which appears to contain information about Complainant, his teachings, and his services. Then, when the users are hooked into the site, Respondent offers numerous links to pornographic content. In the normal course, such conduct constitutes bad faith; in light of Complainant’s role as a religious leader, it is particularly heinous and reprehensible. See Patricia Ford and Online Creations Inc. v. Damir Kruzicevic, WIPO Case No. D2001-0059 (March 20., 2001); Club Méditerranée v. Beaufort Holding, Ltd., WIPO Case No. D2000-1564 (February 1, 2001); American Mensa, Ltd. v. Millennium Energy Niche Studies Associative, WIPO Case No. D2000-1030 (January26, 2001); Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581 (August 3, 2000); CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000).

The provision of false information, which has made it impossible for Complainant to contact Respondent, is further indicative of bad faith registration and use. See Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case. No. D2003-0248 (May 22, 2003); Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550 (January 16, 2001); Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (April 11, 2000); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

Accordingly, the Panel finds that the Domain Name was registered and is being 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 name <phakchokrinpoche.com> be transferred to the Complainant.


David H. Bernstein
Sole Panelist

Dated: June 7, 2006


1 Given the absence of a response, the Panel has carefully reviewed the record to ensure that the Center gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001). The Center mailed notification of the Complaint to Respondent by Federal Express to Respondent’s listed mailing address found on Respondent’s registration with Go Daddy. The notification sent to the contact address could not be delivered because the address in the registration was incorrect. The Center also sent the notification by e-mail to Respondent’s listed e-mail address, and to the postmaster@phakchokrinpoche.com address, but both emails bounced back. E-mails sent to Respondent’s listed e-mail address were returned with the error message that the account had been disabled or discontinued; e-mails sent to postmaster@phakchokrinpoche.com were returned with the error messages that the relaying was denied and the user was unknown. Notification was not sent by fax because Respondent did not provide a fax number and the only telephone number it provided was not in service. Although it thus appears that Respondent has not received actual notice of this proceeding, that is a function of Respondent’s failure to maintain accurate information in his registration and WHOIS data. Id. Accordingly, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules.

2 “Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. As this Panel previously explained in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004): ‘Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three-member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP. See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2002-0001 (June 14, 2002); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001), n.3. Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy paragraph 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result. Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005), at n.3.