WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Promise Enterprises, Inc. v. James O’Kelley/ Personal Development Coaching

Case No. D2006-0476

1. The Parties

The Complainant is Promise Enterprises, Inc., United States of America, represented by Chase Law Firm, United States of America.

The Respondent is James O’Kelley/ Personal Development Coaching, United States of America.

2. The Domain Names and Registrar

The disputed domain names <thethreestepplan.com> and <the3stepplan.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2006. On April 19 and 21, 2006, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name <personaldevelopmentcoaching.com> which domain name was in the original Complaint but was removed from Complainant when Complainant filed its Amended Complaint on April 29, 2006. On April 19, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names <thethreestepplan.com> and <the3stepplan.com> at issue. On April 19, 2006 Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center on April 25, 2006, that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 29, 2006. 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2006.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 7, 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

The brand name and service mark 3-STEP PLAN was created by Complainant for the purpose of educating, inspiring and motivating others to use a system and process related to the development of a home based business.

The service mark 3-STEP PLAN is registered with the Secretary of State of Missouri, United States of America as service mark registration No. S017142. The registration date is December 7, 2005, and the alleged date of first use in the registration is in 1995.

A federal application for the registration of the mark 3-STEP PLAN is pending in the United States Trademark Office.

Complainant registered its domain names <threestepplan.com> and <3stepplan.com> on April 27, 1999 and has maintained active websites at its domain addresses continuously since 1999.

Complainant has recorded audio recordings broadcast on the radio, over the internet and on telephone recordings.

Complainant has used the mark 3-STEP PLAN locally, nationally and internationally since 1995, including on the Internet since 1999.

Respondent registered <thethreestepplan.com> domain name on July 29, 2004 and <the3stepplan.com> domain name on August 20, 2004.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant contends that:

The disputed domain names are confusingly similar to Complainant’s service mark, namely, 3-STEP PLAN, which service mark Complainant has actively used since 1995.

The disputed domain names are phonetically identical and confusingly similar to the Complainant’s domain names <threestepplan.com> and <3stepplan.com>, the only difference being that Respondent has added a definite article “the” before the word three and the numeral “3”.

Respondent has misappropriated Complainant’s copyrighted material including speeches of Complainant, making the misappropriated material available on Respondent’s own websites, “www.thethreestepplan.com”, “www.the3stepplan.com” and “www.personaldevelopmentcoaching.com”.

On January 26, 2006, Complainant sent correspondence to Respondent regarding use of Complainant’s service mark and Respondent has refused to remove the offending content.

Complainant has marketed the 3-STEP PLAN mark nationally and internationally on the radio, over the internet and on the telephone, including within the ten (10) mile radius surrounding Respondent address.

Complainant has achieved notoriety in the home based business community and is situated less than ten (10) miles from Respondent.

With respect to paragraph 4(a)(ii) of the Policy Complainant contends that:

Respondent has not been authorized to use Complainant’s mark.

Respondent’s use of the domain names at issue is intended to misleadingly divert Complainant’s prospective consumers to Respondent’s sites, diluting Complainant’s legal rights in his copyright and his service mark.

Respondent has not been, and is not, known by the domain names <thethreestepplan.com> or <the3stepplan.com> either as an individual, a business, or in any other respect and has not acquired any trade marks or other rights to the name.

By registering the domain names at issue Respondent intended that Internet users, hoping to reach a website of Complainant or in some way associated with Complainant and the 3-STEP PLAN mark, should be misled and diverted to Respondent’s commercial websites. Respondent’s purpose in registering the domain names was to divert Complainant’s customers for Respondent’s own commercial gain.

With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:

Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or service.

Respondent’s bad faith is demonstrated by his certain knowledge of:

(i) the public profile of Complainant’s mark, in particular the words “3-Step Plan”;

(ii) Complainant’s rights and business reputation relating to its system and process for marketing and development of home based businesses which it has acquired since the abovementioned service mark has been in use, since prior to 1995 with respect to the 3-STEP PLAN;

(iii) Complainant’s role and prominence in developing home based businesses;

(iv) the content, including scripts, audio recordings and copyright content taken from Complainant’s website which has been published on Respondent’s own websites; and

(v) Complainant’s web address.

Respondent has registered and used the domain names in bad faith primarily for the purposes of disrupting Complainant’s business activities.

Respondent’s websites prominently exhibit the 3-STEP PLAN mark in graphics taken from Complainant’s website to promote Respondent’s services and products, the substance of which is the subject of Complainant’s registered service mark.

Knowledge of the disputed domain names would be likely to lead to confusion with Complainant’s mark as to the source, sponsorship, affiliation, endorsement of the websites conducted under the disputed domain names and of the services offered at those sites.

Respondent, knowing of Complainant’s mark must have anticipated and intended to benefit from the very confusion that was likely to arise. Intentional diversion of trade in such circumstances is evidence of both bad-faith registration and use.

Respondent has been informed of Complainant’s claim and has refused to acknowledge or remove the offending material.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain names at issue are confusingly similar to a trademark or service mark in which Complainant has rights.

The Panel finds that Complainant has trademark rights in the mark 3-STEP PLAN due to its State of Missouri service mark registration No. S017142. Additionally, Complainant has common law rights since 1995 in the United States of America in the mark 3-STEP PLAN based on use of the mark to promote the services “related to the development of a home based business” in advertising, on the internet (since 1999) and in the broadcast media.

The Panel also finds that the domain names <thethreestepplan.com> and <the3stepplan.com> are likely to be confused with Complainant’s 3-STEP PLAN service mark.

Neither the addition of the word “the” in the domain name <the3stepplan.com> nor the addition of the word “the” and the substitution of the word “three” for the Arabic number “3” in the domain name <thethreestepplan.com> eliminates the confusion. The mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name). See also, Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (addition of generic words “healthcare” to form <bayerhealthcare.com> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (finding domains such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to plaintiff’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).

Finally, gTLDs and ccTLDS shall be disregarded in the analysis as to whether a domain name and a trademark are identical or confusingly similar. Thus the “.com” in the domain names should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

B. Rights or Legitimate Interests

In order for Respondent to demonstrate rights or legitimate interests in the domain names, it must show

(i) before any notice to you[Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names 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 names, even if you have acquired no trademark or service mark rights; or

(iii) you[Respondent] are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to 4(c)(i) of the Policy, there is no evidence before the Panel that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.

With respect to 4(c)(ii) of the Policy, there is no evidence in the file that indicates that Respondent has ever been commonly known by the domain names.

With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain names and has not used the domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services.

Complainant is required to make out an initial prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain names. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No.D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel finds that Complainant has made out a prima facie case that Respondent is not making a legitimate noncommercial or fair use of the domain names, is not as an individual, business or other organization, known by the name “thethreestepplan” or “the3stepplan”, and that Respondent has not and is not using the domain names in connection with a bona fide offering of goods or services.

In view of Respondents failure to respond to the allegations, the Panel finds that Respondent has no rights or legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

Evidence of the registration and use of a domain names in bad faith is pursuant to 4(b) (iv) of the Policy is found when by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites 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 websites or location or of a product or service on Respondent’s websites or location.

The evidence before the Panel indicates that Respondent was in all probability aware of Complainant’s mark when registering the disputed domain names, and that Respondent did so because of the clear likelihood of confusion with the Complainant’s mark. In fact, the unrefuted evidence shows that Respondent’s websites contain material copied from Complainant’s website. This is evidence of actual knowledge of Complainant’s website and unrefuted allegations of copying certainly supports a finding of bad faith use of the domain name. It also supports an inference that Respondent had actual knowledge of Complainant’s use and rights at the time the domain names at issue were registered. This in turn justifies a finding of bad faith. Respondent is in all likelihood using the disputed domain names to divert Internet traffic to Respondent’s website for the purpose of selling services in direct competition with Complainant’s services.

In the circumstance, the Panel finds that the domain names <thethreestepplan.com> and <the3stepplan.com> were registered and used in bad faith by Respondent for the purpose of diverting Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website. See G.D. Searle & Co. v. Mahoney, NAF Claim No. 1112559 (finding that the respondent registered and used the domain name in bad faith where respondent was using the confusingly similar domain name to attract users to its commercial website).

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, <thethreestepplan.com> and <the3stepplan.com> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist

Dated: June 21, 2006