The Heimlich Institute Foundation, Inc. v. Holly Martins

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.

Nels T. Lippert

Presiding Panelist

Mark Partridge

Panelist

Debra J. Stanek

Panelist

Dated: October 28, 2005