WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unarius Educational Foundation d/b/a Unarius Academy of Science v. Perfect Privacy, LLC / Unarius Understood, Unarius Understood
Case No. D2018-0112
1. The Parties
Complainant is Unarius Educational Foundation d/b/a Unarius Academy of Science of El Cajon, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Unarius Understood, Unarius Understood of Fountain Valley, California, United States, represented by Dawes Patent Law Group, United States.
2. The Domain Names and Registrar
The disputed domain names <unarius.com> and <unarius.net> (the “Domain Names”) are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 22, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On January 23, 2018, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on January 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 25, 2018.
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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. On February 17, 2018, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to February 23, 2018. The Response was filed with the Center on February 23, 2018. Respondent filed a Supplemental Filing on February 27, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 28, 2018. 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.
Complainant sent an e-mail to the Center on February 28, 2018, objecting to Respondent’s Supplemental Filing. On March 1, 2018, the Panel issued Procedural Order No. 1, ordering Complainant to submit a response to Respondent’s Supplemental Filing on or before March 9, 2018. Complainant submitted a response pursuant to Procedural Order No. 1, on March 3, 2018.
In its discretion, the Panel has considered all materials submitted.
4. Factual Background
Complainant is a nonprofit educational foundation, founded in 1954 by “cosmic visionaries” Ernest L. and Ruth E. Norman. According to Complainant, it is a “spiritual school” offering “a comprehensive curriculum of self-mastery, based on the interdimensional understanding of energy, that is, the joining of science and spirit.” The term “Unarius,” according to Complainant, is an acronym for “Universal Articulate Interdimensional Understanding of Science.”
Complainant holds the trademark UNARIUS, registered with the United States Patent and Trademark Office (“USPTO”) on February 22, 2005, with a first use in commerce in 1964. The mark is registered in connection with, among other things, “educational services, namely conducting workshops and classes in the field of spiritual development and distribution of educational course materials.”
Complainant operates a website at “www.unarius.org”, which domain name Complainant registered on February 20, 1996. At this website, Complainant offers “detailed information about its founders, the Normans,” and offers publications and online classes.
Respondent offered into the record a declaration of an individual (“KV”) identifying himself as “the trustee of the Allan McGowan Trust, dba UNARIUS UNDERSTOOD.” KV’s declaration states that it is submitted “under penalty of perjury,” but it is not notarized. According to KV, Allan McGowan (“McGowan”) was “a follower of UNARIUS as promoted by the Normans.” McGowan died in 2015. According to KV, Ernest Norman “consistently referred to UNARIUS not as a brand, but as the generic label for a belief system and/or organization or movement advocating that belief system.”
KV asserts that, upon the death of Ernest L. Norman, his widow, Ruth E. Norman established a center in El Cajon, California, which became Complainant. KV states that in 1992 Ruth Norman “orally licensed, authorized and requested Allan McGowan to promote and publicize the teaching of UNARIUS consistent with the direction of Dr. [Ernest] Norman to make the teachings available to ‘untold millions.’”
The Domain Names were registered on November 7, 2000. According to Complainant, Respondent’s website “appears to be a website for Complainant itself.” The website to which the Domain Names resolve makes numerous references to UNARIUS, contains information about the Normans, and offers information about the purported teachings of the Normans. Complainant alleges that Respondent’s website permits users to download certain works created by the Normans to which Complainant holds the copyright.
According to Complainant, Respondent’s website does not disclose anywhere that the site is unaffiliated with Complainant, and does not disclose that McGowan has “disagreed with some of Complainant’s teachings and was involved in multiple disputes with Complainant from the mid-1990s until his death several years ago.”
Respondent’s website features passages evidently penned by the late Al McGowan but retained to this day, including the assertion that the Internet is replete with misinformation about Unarius, and that the “object of this site is to explain the real meaning of Unarius.” McGowan goes on to state:
“Reading the [Ernest L. Norman] books is the ONLY way to understand Unarius. I repeat; Reading the books is the ONLY way to understand Unarius. This site contains only direct quotations and chapters from the books dictated by Ernest L. Norman (the Unarius Channel) and nothing else. (…) One of the main purposes of this site is to introduce souls to the “Real Unarius”, and to hopefully, give an opportunity for the ready ones to receive a glimpse of the teachings, and to influence them to purchase some of the books.”
Respondent’s site includes a hyperlink at “Unarius Books.” The link resolves to a page listing a number of titles, and refers the reader to Complainant’s site for the purchase of such books. The page also states that the books are available at libraries and at websites including Amazon and eBay.
On March 3, 2016, Complainant’s counsel sent a cease-and-desist letter to an individual believed to represent Respondent. Complainant’s letter, which addressed both Respondent’s alleged trademark infringement but also the alleged infringement of Complainant’s copyrighted materials, demanded the transfer of the Domain Name <unarius.com> and proposed a licensing agreement to Respondent. Respondent’s counsel responded by letter dated March 14, 2016, asking for further details regarding a possible licensing agreement. On June 9, 2016, Complainant’s counsel sent Respondent’s counsel a detailed proposal for a licensing agreement. Respondent did not reply to this proposal.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under the Policy for a transfer of each of the Domain Names.
Respondent disputes Complainant’s request for a transfer of the Domain Names, raising a variety of arguments, including Respondent’s legitimate interest in the Domain Names, the generic nature of the UNARIUS term, Complainant’s acquiescence in Respondent’s ownership and use of the Domain Names, and principles of laches.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark UNARIUS through registration and use. The Panel rejects, for purposes of this proceeding, Respondent’s argument that the UNARIUS mark is generic and hence unprotected. The USPTO registration remains valid. In a recent decision regarding Complainant’s UNARIUS mark, the panel held that the mark was valid for purposes of a proceeding under the Policy. See Unarius Educational Foundation v. Brydson, WIPO Case No. D2017-1868 (involving <unariusunited.com>).
Moreover, the record indicates that Complainant continues to use the mark UNARIUS to identify and distinguish its services of disseminating publications and hosting online classes.
The Panel finds that the Domain Names are identical to the UNARIUS mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you [Respondent] have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes on this record that Respondent lacks rights or legitimate interests in respect of the Domain Names.
At the outset, the Panel finds that Respondent’s credibility is somewhat impaired by its insistence that UNARIUS is not a trademark, and that the term “Unarius” is purely a generic term. This position is at odds with Respondent’s claim that Ruth Norman “licensed” Al McGowan to spread the teachings of Unarius. One need not have a “license” to use a generic term.
Most fundamentally, the Panel’s conclusion is based on the finding that Respondent is attempting to pass itself off as Complainant, or at least as the definitive authority on all things related to the teachings of the Normans. There is no doubt that Respondent (directly and through its purported predecessor Al McGowan) has long been aware Complainant and Complainant’s origins with the Normans.
Complainant is the holder and user of the longstanding mark UNARIUS. The Panel finds that Respondent was aware of Complainant’s distribution of publications and offering of classes under that mark at the time it registered the Domain Names and began to use them. The content of Respondent’s site, including its implicit claim that it is the one true site concerning UNARIUS and the lack of any disclaimer of affiliation with Complainant, has the likely effect of confusing Internet users who are searching for Complainant and its offerings.
The fact that Respondent chose Domain Names comprised solely of the mark UNARIUS, without any qualifying or distinguishing terms, underscores the confusion likely to be engendered by the Domain Names and Respondent’s website. Respondent claims to be “doing business as” (the “dba” noted in KV’s declaration) “Unarius Understood,” but the Domain Names do not include the term “understood.” (The Panel is not declaring whether a domain name such as <unariusunderstood.com> would have changed the outcome here, but such a domain name might have made for a closer call.)
A similar case under the Policy between Complainant and another purported adherent to the teachings of Unarius was recently decided in Unarius Educational Foundation v. Brydson, supra. In that case, the panel held that the respondent lacked rights or legitimate interests in the domain name <unariusunited.com>. While acknowledging the respondent’s free speech rights to discuss this belief system, the panel concluded that it was illegitimate to do so via a domain name and website that gave the impression that the respondent was the complainant or was affiliated with the complainant. As the panel put it, free speech “is not a defense in a situation where, as here, a disputed domain name is used to falsely suggest an affiliation with a trademark owner.”
The analysis in Unarius Educational Foundation v. Brydson, supra, is sound, and the facts of that case are close enough to those in this case to call for a similar analysis. Indeed, it bears noting that respondent in Unarius Educational Foundation v. Brydson, supra, apparently had some type of minimal disclaimer of affiliation with complainant on the website. Here, there is no disclaimer at all. The Panel concludes that Respondent’s “fair use” argument fails in these circumstances.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel incorporates here its discussion above in the context of “legitimate interests,” with an emphasis on the fact that Respondent is found to have tried to pass itself off as Complainant or someone affiliated with or endorsed by Complainant.
In addition, the prior panel’s analysis in Unarius Educational Foundation v. Brydson, supra, with respect to bad faith registration and use is well suited to the instant case. In Unarius Educational Foundation v. Brydson, supra, the panel wrote:
“[W]hile Respondent may have wanted to create a website to promote Respondent’s own views on the teachings of Ernest L. Norman, Respondent registered and used the disputed domain name to redirect Internet users, and in particular consumers interested in Complainant or ‘Unarian’ beliefs, to a website that appeared to be related to or authorized by Complainant from which Respondent promoted his own version of the ‘Unarian’ teachings of Ernest L. Norman and to distribute educational materials. Respondent could have chosen many other domain names to promote Respondent’s views, but instead chose a domain name that Respondent likely knew would be seen as connected to Complainant. Such actions make it more likely than not that Respondent registered and used the disputed domain name, which is based on Complainant’s UNARIUS mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own benefit.”
The Panel finds the foregoing analysis to apply with equal vigor in this case.
The Panel also rejects Respondent’s defenses of acquiescence and laches, neither of which was raised in the March 14, 2016, letter from Respondent’s counsel. Regarding acquiescence, Respondent has provided no evidence that Complainant had acquiesced in Respondent’s ownership and use of the Domain Names.
With respect to laches, the Panel does not decide here whether laches could be a viable defense in a proceeding under the Policy.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <unarius.com> and <unarius.net> be transferred to Complainant.
Robert A. Badgley
Date: March 12, 2018