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WIPO Arbitration
and Mediation Center
ADMINISTRATIVE
PANEL DECISION
The Heimlich Institute Foundation, Inc. v. Holly Martins
Case No. D2005-0049
1. The Parties
Complainant is The Heimlich Institute Foundation,
Inc., Cincinnati, Ohio, United States of America, represented by Frost Brown
Todd LLC, Cincinnati, Ohio, United States of America.
Respondent is Holly Martins, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <heimlichinstitute.com> is registered with AAAQ.com,
Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration
and Mediation Center (the “Center”) on January 14, 2005. On January 17, 2005,
the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification
in connection with the domain name at issue. On January 20, 2005, AAAQ.com,
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. 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 Respondent of the Complaint, and the proceedings
commenced on February 15, 2005. In accordance with the Rules, paragraph 5(a),
the due date for Response was March 7, 2005. At the Center’s discretion,
an extension of time to file a Response was granted until March 13, 2005. Respondent
did not submit a formal response. Accordingly, the Center notified Respondent’s
default on March 15, 2005.
The Center appointed Nels T. Lippert, Mark Partridge
and Debra J. Stanek as panelists in this matter on April 4, 2005. The Panel
finds that it was properly constituted. Each member of 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 July 12, 2005, the Panel issued a Procedural Order
requesting further statements from the parties. A copy of the Order was also
served on one Mr. Heimlich, who had filed submissions addressing procedural
issues in this proceeding, inviting him to file a response on the merits of
the claim. The date set for filing responses with the Center was July 18, 2005.
A response was timely received from Complainant. A timely e-mail response was
also received from Mr. Heimlich.
A further e-mail response was submitted by Mr. Heimlich
on July 19, 2005. On July 22, 2005, Complainant submitted a request that the
second Heimlich communication be stricken as untimely or alternatively that
Complainant’s further response be considered.
In the interests of ensuring that the parties have
had a fair opportunity to be heard and have been treated with equality, the
Panel has admitted and considered all communications received by the Center.
4. Factual Background
Since 1982, Complainant has conducted its activities
under and continuously used the name The Heimlich Institute to identify itself.
Complainant has also used the name The Heimlich Institute
in connection with providing education and instruction concerning the use of
the Heimlich maneuver; publishing and distributing educational materials; sponsoring
educational speeches and appearances across the United States by Dr. Henry Heimlich;
and maintaining a website through which visitors can access informational materials
and order educational posters and videos.
In 1997, Complainant registered the domain name <heimlichinstitute.org>
and since then such domain name has resolved to Complainant’s website.
The disputed domain name <heimlichinstitute.com>
was registered by Respondent on February 10, 2004.
5. Parties’ Contentions
A. Complainant
Complainant contends that, as a result of its long
and continuous use of the trade name or service mark THE HEIMLICH INSTITUTE,
it has United States common law rights in the designation and, thus, it is a
protectable mark. Complainant further contends that the disputed domain name
is identical to or confusingly similar to its common law mark, differing only
by the deletion of the generic word “the” and the addition of the
top level domain.
Complainant also contends that Respondent has no rights
or legitimate interests in respect of the domain name because it is not authorized
by Complainant to use or register Complainant’s trade name or service
mark, is not commonly known by the name “Heimlich Institute” and
does not provide any products or services or engage in any activities under
the name “Heimlich Institute”. Furthermore, because the disputed
domain name does not include some indication sufficient to notify Internet users
that the website found at the domain name address is not Complainant’s
website, it cannot be said to be a fair use.
Complainant further contends that the disputed domain
name was registered and is being used in bad faith because Respondent has no
legitimate interest in the domain name; Respondent was clearly aware of Complainant
at the time Respondent registered the disputed domain name and by using the
disputed domain name Respondent is attempting to attract Internet users to its
website who are looking for Complainant’s website. Thus, according to
Complainant, Respondent’s intent is to misdirect and divert Internet users
from the website of Complainant to the website of Respondent.
In addition, Respondent’s bad faith is demonstrated,
according to Complainant, by the fact that false information was given to register
the disputed domain name. The registrant of record for the disputed domain name,
Holly Martins, purportedly having an address in New York, is fictitious as is
the telephone number provided on the registration information.
B. Respondent
No formal response was received by the Center from
the named Respondent. However, various e-mails were received under the name
Holly Martins and Mr. Heimlich. In these communications, it was contended that
the proceeding was filed against the wrong entity because Mr. Heimlich had acquired
the disputed domain name some time in 2004 from Holly Martins.
It was also contended that the Complaint is defective
because Complainant is identified as “The Heimlich Institute Foundation,
Inc.” which, according to Mr. Heimlich, ceased to exist in February 1997.
6. Discussion and Findings
Dealing first with the procedural issues, the Panel
finds that the parties are properly identified. At the time of filing of the
Complaint, the registered owner of the disputed domain name, as set forth in
the relevant WhoIs information, was and is the named Respondent. The Rules clearly
define Respondent as the holder of the domain name registration against which
the Complaint is initiated. In this case, the record holder is the named Respondent.
The Panel notes that Mr. Heimlich was invited to be named as a Respondent in
these proceedings, but he specifically declined that invitation. Moreover, the
Panel notes that Mr. Heimlich’s conduct in this proceeding has been less
than forthright. Throughout his initial communications with the Center, Mr.
Heimlich asserted that the named Respondent was a separate entity unrelated
to himself. However, in response to the Procedural Order, Mr. Heimlich admitted,
either expressly or implicitly, that Holly Martins (the Respondent named in
the Complaint) is merely a pseudonym that he has used. Therefore, irrespective
of the name employed, the Panel concludes that the Complaint has been brought
against the proper Respondent. Hereinafter “Respondent” denotes
both the named Respondent and Mr. Heimlich.
Similarly, the contention that the Complaint is defective
because the named Complainant no longer exists is not compelling. The Panel
finds that although there apparently was a name change, the materials submitted
do not show a cessation of existence of the named Complainant. Accordingly,
the Panel concludes that the Administrative Proceeding has been brought by the
proper party in interest.
Dealing now with the merits of the claim, paragraph 4(a)
of the Policy provides that Complainant must prove, with respect to the disputed
domain name, all three of the following elements:
(i) The domain name is identical or confusingly similar
to a trademark 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.
Paragraph 4(b) of the Policy sets out four non-exclusive,
but illustrative, circumstances or acts that for purposes of paragraph 4(a)(iii)
above would be evidence of the registration and use of a domain name in bad
faith.
Paragraph 4(c) of the Policy sets out three illustrative
circumstances, any one of which, if proved by Respondent, would demonstrate
Respondent’s rights or legitimate interests in the domain name for purposes
of paragraph 4(a)(ii).
A. Identical or Confusingly
Similar
The Panel finds that Complainant has demonstrated rights in the mark THE HEIMLICH
INSTITUTE based on use. Georgia Gulf Corporation v. The Ross Group, WIPO
Case No. D2000-0218 (June 14, 2000) (recognizing common law rights as a
basis for a UDRP complaint). With regard to the disputed domain name, it is
well established that the addition (or deletion) of a generic term such as “the”
or the addition of a generic top-level domain such as “.com” is
not relevant when determining whether a disputed domain name is confusingly
similar to a mark. As such, the disputed domain name is identical or confusingly
similar to a trademark in which Complainant has rights, a fact that has not
been disputed by Respondent. Accordingly, the Panel finds that Complainant has
established the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that Respondent has no rights
or legitimate interests in the disputed domain name. For purposes of paragraph
4(a)(i) of the Policy, Complainant has made a prima facie showing, which
Respondent has not refuted, that Respondent has no connection or affiliation
with Complainant and has not received any license or consent to use “Heimlich
Institute” in a domain name or in any other manner. Complainant also asserts,
and Respondent also has not refuted, that Respondent is not commonly known by
or has acquired rights in the disputed domain name.
Similarly, the use to which the disputed domain name has been put does not
evidence a legitimate interest. The Panel notes that Respondent has not offered
any evidence of non-commercial or fair use of the disputed domain name to refute
Complainant’s allegations. Because Respondent has not refuted Complainant’s
prima facie showing, the Panel would be justified to find for Complainant
on this issue without further comment. However this may be, the Panel notes
that the website to which the disputed domain name resolves fails, in the Panel’s
view, to qualify as a fair use in the context of this domain name. That is,
the Panel finds that Respondent’s website does not provide criticism or
commentary on The Heimlich Institute. Rather, the disputed domain name resolves
to a site that provides criticism about the alleged use of the Heimlich maneuver
such as on drowning victims. As Mr. Heimlich characterized it, the site “…serves
as a sort of clearinghouse for recently published articles and information about
my father, Dr. Henry J. Heimlich (known for the “Heimlich maneuver”)
and related information about medical fraud.” Because the disputed domain
name is used to misdirect Internet users to a site that is not providing criticism
of the Institute per se, but criticism about the use of the Heimlich
maneuver on drowning victims and medical fraud, the Panel believes the
rationale expressed in Gardere Wynne Sewell LLP v. DefaultData.com, WIPO
Case No. D2001-1093 (November 16, 2001) is compelling. In Gardere Wynne
Sewell, the respondent registered domain names that corresponded to the
names of a law firm for a website used to criticize the legal profession as
a whole.
Accordingly, the Panel finds that Complainant has established the requirements
of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent does not dispute that it had actual notice of Complainant’s
prior registered domain name incorporating Complainant’s mark as well
as Complainant’s use of “The Heimlich Institute” name under
which it operates its business. Despite the Panel Order and thus a specific
invitation to do so, Respondent has offered no justification for registering
the confusingly similar or identical disputed domain name with knowledge of
Complainant’s business and domain name.
As noted above, the disputed domain name does not, in the Panel’s opinion,
resolve to a legitimate commentary site about Complainant. Rather, considering
Respondent’s inclusion of the specific name of the institute, the Panel
finds that Respondent registered the disputed domain name primarily for the
purpose of disrupting the business of Complainant. Moreover, the Panel notes
that Respondent has submitted evasive responses in this case rather than responding
on the merits and provided false information to register the disputed domain
name. All of these facts lead the Panel to conclude that Complainant has established
the requirements of paragraph 4(a)(iii) of the Policy.
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, <heimlichinstitute.com>, be transferred to Complainant.
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Nels T. Lippert
Presiding Panelist
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Mark Partridge
Panelist
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Debra J. Stanek
Panelist
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Dated: October 28, 2005