WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sylvia Browne Corporation v. Younghee Kim / SYLVIABROWNE HYPNOSIS
Case No. D2007-1715
1. The Parties
The Complainant is Sylvia Browne Corporation, of Campbell, California, United States of America, represented by Hodgson Law Group, United States of America.
The Respondents are Younghee Kim, of New York, New York, United States of America; and SYLVIABROWNE HYPNOSIS, of Daegu, Republic of Korea (individually and collectively referred to hereinafter as “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <sylviabrownehypnosis.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2007. On November 23, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On November 26, 2007, Dotster, Inc. transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrar confirmed the language of the registration agreement as English. The Center sent the Complainant a notice of change in registrant information on December 2, 2007, providing the registrant and contact information and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2007. The Center verified that the Complaint together with the amendment to 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”).
An email stated to be from Younghee Kim was received by the Center on November 26, 2007 stating that “I am not “SYLVIABROWNEHYPNOSIS.COM owner.” Subsequent emails from different email address stated to be from “Sylviabrowne Hypnosis” were received by the Center on December 11, 2007 and December 20, 2007 requesting (in both English and Korean) that the proceedings should be in Korean.
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 December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 16, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant offers the services of a famous United States of America citizen, Sylvia Browne, who has written many well-known books, appeared on many American television programs and delved into areas of psychic speculation which include the use of hypnosis. The Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the trademark, SYLVIA BROWNE (Registration No. 3,229,721; April 17, 2007). The Complainant was also the owner of the disputed domain name up to its acquisition by the Respondent.
The disputed domain name was first registered on September 28, 2006 by the Complainant. The Respondent appears to have registered the disputed domain name on or about September 28, 2007. The Respondent currently uses the name to host a website that provides links to third party websites that offer services that compete directly with those offered by the Complainant.
5. Parties’ Contentions
- The Complainant’s president and principal asset, Sylvia Browne, is a best-selling author and world famous psychic, who appears regularly on television in the United States of America and has founded her own church in that country. In addition to engaging in those activities for at least twenty years, Browne has also been active in hypnosis training for nearly as long. She has also hosted an Internet radio program since 2005.
- The Complainant owns a registration with the USPTO for the trademark SYLVIA BROWNE.
- In addition to owning the domain name <sylvia.org>, the Complainant also owned the disputed domain name for one year, commencing September 28, 2006. The Complainant had constructed a link, under the word “hypnosis,” from the former to the latter name prior to the Respondent’s registration of the latter name.
- Sometime immediately before or after the date for renewal of the Complainant’s registration for the disputed domain name, the Respondent hijacked that name.
- The disputed domain name is confusingly similar to the Complainant’s mark because the whole of the mark is included in the name, together with the simple generic word “hypnosis.”
- The Respondent has no rights or legitimate interests in the disputed domain name. The name is now used by the Respondent to link to third party websites that market services directly to websites competitive with those offered by the Complainant, a use from which the Respondent derives financial benefit. There is no evidence that the Respondent could be known by a name corresponding to the disputed domain name. The Respondent’s use of the disputed domain name diverts potential customers from the Complainant’s services and likely tarnishes the Complainant’s mark as well.
- The disputed domain name was registered and is being used in bad faith. The Respondent had constructive notice of the Complainant’s mark and is using the name to unfairly attract Internet users to competing services. Furthermore, the disputed domain name, hijacked by the Respondent, was employed in active use, not held passively, by the Complainant.
- The Complainant’s principal is a celebrity, and the Respondent has attempted to benefit through confusion by use of her name in the disputed domain name, evidence of bad faith.
- The Respondent has provided false contact information to the Registrar, further evidence of bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with the requirements of paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may be awarded a transfer of the disputed domain name <sylviabrownehypnosis.com> by demonstrating the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
Because the Respondent filed no substantive response to the Complainant’s contentions, the Panel will proceed as though the Complainant’s contentions are true, unless contrary to the evidence presented or facts known by the Panel within the scope of its own experience. See Garage Records, Inc. v. Garage Records, NAF Case No. FA95071; and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Noting the language of the registration agreement has been confirmed by the Registrar as English, the Panel finds English to be the appropriate language of proceedings.
A. Identical or Confusingly Similar
The Complainant has furnished the Panel with evidence that the Complainant owns a valid USPTO registration of the trademark, SYLVIA BROWNE (see Annex 8, Complaint). In line with countless prior UDRP panels, the Panel finds such evidence sufficient to establish the Complainant’s rights in its mark for the purposes of paragraph 4(a)(i) of the Policy. See The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714; and United States Office of Personnel Management v. MS Technology Inc. a/k/a Mahendra Lamba, NAF Case No. FA198898 (“…once the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
The disputed domain differs from the Complainant’s mark only in that it adds the dictionary term “hypnosis” and the gTLD “.com”. The overwhelming consensus reached in previous Policy decisions is that additions of a dictionary term and a gTLD to a valid trademark do not reduce materially the confusing similarity between a disputed domain name and that trademark. This is particularly true if, as in this case, the dictionary term relates directly to the services offered by the complainant involved. As a result, the Panel determines that the disputed domain name <sylviabrownehypnosis.com> is confusingly similar to the Complainant’s mark, SYLVIA BROWNE. See The Proctor & Gamble Company v. Fast Track Corporation, NAF Case No. FA289085 (“A domain name that incorporates a well-known mark, in combination with a generic or descriptive term that relates to the goods or services offered by the owner of the mark, has been consistently found to be confusingly similar to the mark under Policy [paragraph] 4(a)(i).”); and Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 (where the panel found the disputed domain name <pivotalsoftware.com> to be confusingly similar to the trademark PIVOTAL).
Therefore, the Panel rules that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) places the burden upon the Complainant to establish that the Respondent possesses no rights or legitimate interests in the disputed domain name. However, because this requires proof of a negative proposition where knowledge of the facts resides almost exclusively with the Respondent, most prior UDRP panels have agreed that the Complainant need only provide a prima facie case on its behalf, shifting the burden to the Respondent to go forward with compelling contrary evidence. See Telex Communications, Inc. v. Jinzheng Net, NAF Case No. FA833071; AOL LLC v. Jordan Gerberg, NAF Case No. FA780200; and Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub-paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.”).
In this case, the Complainant has shown that it has rights in a mark nearly identical to the disputed domain name. Moreover, the Complainant implies convincingly that it did not authorize the Respondent to use that mark in any manner whatsoever. Thus, the Complainant has established a prima facie case on this issue.
In examining the record, the Panel can detect no evidence that would rebut the Complainant’s prima facie case. The Respondent has not submitted evidence, and there is a lack of other evidence, to meet the criteria cited in paragraph 4(c) of the Policy that might support the Respondent’s claim to rights or legitimate interests in the disputed domain name. Specifically, as the Complainant asserts, there is no basis for finding that the Respondent, or a company owned by the Respondent, is commonly known by any name corresponding to the disputed domain name. As a result, the criterion listed in paragraph 4(c)(ii) is unmet. Moreover, the Panel accepts the Complainant’s contention that the Respondent is employing the disputed domain name for profit in hosting a website that serves solely as a link to third party websites that offer services that compete directly with those offered by the Complainant. This means that the Respondent is using the name neither “in connection with a bona fide offering of goods or services” nor “a legitimate noncommercial or fair use of the domain name,” so paragraphs 4(c)(i) and (iii) do not apply. See Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; and Securities Investor Protection Corporation v. Kevin Daste, NAF Case No. FA1065829 (“…Respondent’s website located at the disputed domain name displays several hyperlinks to third-party websites which presumably generate click-through revenue for Respondent. This activity leads the Panel to conclude that Respondent has failed to establish rights or legitimate interests under Policy [paragraph] 4(c)(i)’s bona fide offering of goods or services requirement and Policy [paragraph] 4(c)(iii)’s requirement of legitimate noncommercial or fair use.”)
Following the reasoning above, the Panel concludes that the Complainant has successfully demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In this case, the Panel accepts the Complaint’s contention that the disputed domain name was previously owned and used by the Complainant immediately prior to being registered by the Respondent. This suggests to the Panel that the Respondent’s registration was an opportunistic action resulting from an inadvertent lapse on the part of the Complainant, a circumstance that in and of itself smacks of bad faith. See, for example, Sol Moscot, Inc. v. Web Master, WIPO Case No. D2007-0036; ProQuest Information and Learning Company v. Domain Administrator, NAF Case No. FA784206; and Seth Aurbach v. Kevin Saronski, NAF Case No. FA155133 (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”). Moreover, the disputed domain name itself, composed primarily of a famous person’s name, would have caused an honest person or business entity to seriously contemplate the impossibility of acquiring and/or using that domain name in good faith. See Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874. Finally, the Respondent has apparently taken steps, such as presenting a false telephone number with its registration of the disputed domain name, to deceive others as to its true identity. With all of these circumstances taken into account, the Panel deems it quite unnecessary to consult the finer points of paragraph 4(b) of the Policy in determining that the Respondent’s conduct constitutes an example of egregious bad faith registration and use of a domain name.
Accordingly, the Panel decides that the disputed domain name was registered and is being used by the Respondent in bad faith.
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 <sylviabrownehypnosis.com> be transferred to the Complainant.
Dennis A. Foster
Dated: January 29, 2008