WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jerry and Esther Hicks d/b/a Abraham-Hicks Publications v. Cindy Wilson
Case No. D2011-0922
1. The Parties
Complainants are Jerry and Esther Hicks d/b/a Abraham-Hicks Publications of San Antonio, Texas, United States of America, represented by The Adams Law Firm LLC, United States of America.
Respondent is Cindy Wilson of Fort Collins, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vortexofcreation.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 27, 2011, the Center transmitted by email to GoDaddy.com, Inc (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Response was filed with the Center on June 21, 2011.
The Center appointed Mark Partridge as the sole panelist in this matter on July 19, 2011. 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.
On August 10, 2011, the Panel issued Procedural Order No. 1, requesting that Respondent submit documentation or other competent evidence relating to Respondent’s alleged plan to make use of the disputed domain name for legitimate purposes. Both parties made submissions in response to that order.
4. Factual Background
Complainants are inspirational speakers who deliver seminars, publish books, CDs, DVDs, and other materials. They have been in the business of inspirational speaking for over 25 years and have about a dozen Federal trademark registrations for goods and services all in the field of inspiration and self-esteem building.
In August 2008, Complainants began using the phrase “vortex of creation” in inspirational seminars. On June 15, 2010, Complainants registered the word mark VORTEX OF CREATION with the United States Patent and Trademark Office for inspirational and self-esteem seminars, books, prerecorded cassettes, and CDs.
The disputed domain name <vortexofcreation.com> was created April 15, 2009. The website currently consists of a parking page with links provided by the Registrar and a link to contact Respondent with inquires about the domain name.
Complainants contacted Respondent via telephone on June 27, 2009 requesting that Respondent transfer the disputed domain name. A few days later, on July 31, 2009, Respondent informed Complainants via email that she was not interested in selling the domain name. That same day, Complainants responded asserting rights in the domain name and again requesting that Respondent transfer the domain name.
On August 11, 2009, Complainants sent Respondent a cease-and-desist letter.
On March 15, 2011, Complainants sent Respondent a second cease-and-desist letter. In the second cease-and-desist letter, Complainants notified Respondent that it had obtained federal registration of the mark VORTEX OF CREATION and requested that Respondent enter a domain name assignment agreement by which Complainants would pay Respondent USD 1,000 to cover the cost of obtaining and registering the website. Respondent replied on March 21, 2011, offering to sell the domain name for USD 25,000.
5. Parties’ Contentions
Generally, Complainants contend that:
1. The disputed domain name is identical or confusingly similar to Complainants’ trademark VORTEX OF CREATION;
2. Respondent has no rights or legitimate interests in the disputed domain name; and
3. The disputed domain name was registered and is being used in bad faith.
The first time Complainants contacted Respondent was by telephone on July 27, 2009. Complainants contend that in this conversation Respondent admitted that she had heard the phrase “vortex of creation” on one of Complainants’ audio recordings at an informal study group about Complainants’ teachings. Complainants allege that Respondent asked if the Complainants wanted to “buy [the domain name] off her.” Complainants also allege that in this first conversation, Respondent expressed a desire to create a social networking website with Complainants that would center on their work. Complainants claim that by the end of the conversation Respondent agreed to transfer the domain name.
Respondent contends that:
1. There is no likelihood of confusion between the disputed domain name and Complainants’ word mark. Respondent argues that Complainants is not the exclusive user of the phrase “vortex of creation.” Respondent claims that the phrase has been used and published prior to Complainants’ use of the term. Respondent also argues that Complainants’ trademark is different than the disputed domain name, which contains no spaces between letters and that Complainants have not submitted any evidence of usage of the phrase prior to Respondent’s registration of the domain name.
2. Respondent has a legitimate interest in the disputed domain name. She claims she used the phrase “vortex of creation” daily as part of her spiritual practice since 1979. Respondent intended to use the domain name to post spiritual content from various religions. According to Respondent, she was working with several New Thought/New Age spiritual leaders, a pastor, and a life coach to obtain rights to re-publish content, book excerpts, conference and workshop materials, and original work to be posted on the “www.vortexofcreation.com” website. Further, Respondent claims she was working with two web programmers. Respondent claims that she intended to “build out the website” with this content which is “unrelated to Complainants.” Respondent claims based on advice from her attorney she delayed building the website after Complainants threatened to take legal action.
3. The disputed domain name was not registered in bad faith and is not being used in bad faith because Respondent was not aware of Complainants’ use of the phrase. Respondent never offered the domain name for sale to the Complainants (or anyone else) until March 21, 2011, after Complainants’ attorney offered Respondent USD 1,000 for transfer of the domain name, and after Respondent became discouraged about building the website.
6. Discussion and Findings
Under the Policy, Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical in material part to a trademark owned and used by Complainants. The mere addition of the gTLD “.com” is not a distinguishing feature and is insufficient to dispute identity or confusing similarity. L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437. Moreover, the deletion of the spaces between the words does not distinguish the domain name from Complainants’ trademark. See La Quinta Worldwide, L.L.C. v. LCH - CBA / Niphuad Molend, WIPO Case No. DTV2009-0007 (finding the domain name <laquinta.tv> to be identical in material part to the trademark LA QUINTA).
While Complainants did register the word mark VORTEX OF CREATION after Respondent registered the disputed domain name, Complainants have used the phrase “vortex of creation” since August 2008, as is evidenced by Complainants’ seminar transcripts (Annex 1 – 3 of the Complaint). Thus, Complainants’ use occurred over a year before Respondent registered the disputed domain name.
B. Rights or Legitimate Interests
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a disputed domain name including: (1) use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the disputed domain name; or (3) making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainants’ trademark.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interest in a disputed domain name, after which the burden of production passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Complainants argue that Respondent does not have right or legitimate interests in the disputed domain name because Respondent was aware of Complainants’ use of the phrase before she registered the disputed domain name. Further, Complainants allege that Respondent is only using the domain name to blackmail Complainants into entering into a business relationship or for profit.
Respondent denies that she heard the phrase “vortex of creation” on or in connection with one of Complainants’ audio-recordings; rather, she claims she heard the word “vortex.” Respondent also claims she has legitimate rights because she planned to use the domain name to post spiritual content from various religions. Respondent alleges that she engaged in preparations to carry out this plan before objection by the Complainants.
Unlike other cases finding a sufficient demonstrable plan before objection by the Complainants, Respondent has presented no evidence. Compare Compagnie Gervais Danone v. Daniel Wang, WIPO Case No. D2009-1361 (concerning the domain name <proactivia.com> ). Here, the Panel, through Panel Order No.1, invited Respondent to submit documentation or other competent evidence to show a demonstrable plan to make bona fide use of the disputed domain name prior to Complainants’ objection. Although Respondent filed a delayed submission by email, she failed to provide any documentation or competent evidence to show a demonstrable plan or to corroborate her allegations.
Accordingly, the Panel finds that Respondent lacks any right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present by the Panel, are deemed to provide evidence of bad faith in registering and using the domain name:
"(i) circumstances indicating that [Respondent] . . . registered or [Respondent] . . . acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who is the owner of the trade mark or service mark, or to a competitor of the Complainants, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent] . . . registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] . . . engaged in a pattern of such conduct; or
(iii) [Respondent] . . . registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent] . . . intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or [Respondent’s] location."
Bad Faith Registration
Complainants contend that Respondent registered the disputed domain name in bad faith because she was aware of that the phrase “vortex of creation” was coined and used by the Hicks. In other words, Complainants argue that Respondent had knowledge that trademark rights would arise through use or registration of a mark by the Complainants.
In this regard, Complainants argue the instant case is analogous to Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320. In Kangwon, the respondent registered the disputed domain name which consisted of the complainant’s business name just three months after complainant established its business. The panel concluded that the respondent registered the domain name fully conscious of what "business" he could make out of mistakenly being affiliated with the complainant. The panel explained that as a Korean national allegedly in the online casino business, the respondent must have known of the complainant's reputation as a state-run casino.
Here, like the respondent in Kangwon, it is likely that Respondent was influenced by Complainants when choosing the disputed domain name. Respondent was familiar with Complainants’ work to the extent that she attended group meetings to study their teachings and admits that prior to registration she was aware of Complainants’ use of the word “vortex.” However, unlike the respondent in Kangwon, it is not clear that Respondent had knowledge that trademark rights would soon arise. Respondent insists that she has never believed that Complainants had rights to the phrase because it was a phrase that had previously been used by others. This is plausible as Respondent has presented evidence that the phrase “vortex of creation” was used by others prior to Complainants’ use. Further, unlike Kangwon, the disputed domain name was not the actual name of the Complainants’ business.
Alternatively, there are facts that support an inference that Respondent had knowledge that trademark rights would arise in the phrase “vortex of creation.” The fact that Respondent expressed a desire to create a social networking website with Complainants that would center on their work demonstrates Respondent’s belief that the phrase was associated with Complainants’ products and services.
Given Respondent’s failure to submit evidence to support her allegations, the Panel finds it more likely than not that Respondent registered the disputed domain name in bad faith with knowledge of Complainants’ use in the hope that the domain name could be sold for profit.
Bad Faith Use
As stated above, Respondent has not presented any evidence to corroborate her alleged intent to create a website using the disputed domain name. The record merely shows use of a parking page with an offer to sell the domain name. When contacted about the disputed domain name, Respondent sought USD 25,000, far in excess of the USD 750 she claims she has incurred in costs. Based on the record presented, it appears more likely than not that Respondent used the domain name in bad faith to seek substantial profit based on the similarity to Complainants’ use of the VORTEX OF CREATION trademark.
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 <vortexofcreation.com> be transferred to Complainants.
Dated: September 13, 2011