DreamWiseBook.com UDRP: Decision did not favor the trademark holder

Dreams are vivid experiences, thoughts, or images occurring during sleep, often shaped by subconscious thoughts, emotions, and memories. In a metaphorical sense, dreams are the visions and aspirations that fuel ambition, guiding people toward their deepest desires and potential.

The registrant of the domain name DreamWiseBook.com chose the domain to deliver explanations about dream states via a book. Meanwhile, the registrant of the DREAMWISE mark is Cynthia Falchet Couto, an industry leader that provides education services, namely, providing training, coaching, and consulting in the field of meditation, mindfulness and dreams.

The mark holder filed a UDRP to get the domain and the WIPO panelist determined that the Respondent’s choice of a domain wasn’t a free ride on the Complainant’s mark but rather their choice of an upcoming  book title.

The Complainant’s request for a domain transfer was thus denied with the added note that this is an issue that a court of law should decide on; it’s a trademark issue and not one related to cybersquatting.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Cynthia Falchet Couto aka Colette Falchet v. Lisa Marchiano
Case No. D2025-0101

1. The Parties

Complainant is Cynthia Falchet Couto aka Colette Falchet, United States of America (“United States”), represented by Cozen O’Connor, United States.

Respondent is Lisa Marchiano, United States, represented by Sounds True Inc., United States.

2. The Domain Name and Registrar

The disputed domain name dreamwisebook.com (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025. On January 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 13, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (“Unknown Registrant”) and contact information in the Complaint. The Center sent an email to Complainant on January 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 15, 2025.

The Center verified that the Complaint together with the amended 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 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2025. The Response was filed with the Center on February 15, 2025.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 18, 2025. 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

According to the Complaint:

“Since 2017, Complainant is an industry leader that provides education services, namely, providing training, coaching, and consulting in the field of meditation, mindfulness and dreams in connection with its DREAMWISE trademarks. For over 30 years, Complainant has been a renowned scholar, mystic, meditation expert, healer, face reader, and visionary who has coached, mentored, and guided people worldwide to succeed in different areas of their lives. Complainant strives to share the transformative power of meditation and mindfulness with the widest possible audience, and to create joy, connection, and excitement. Through innovative programming, robust education initiatives, a commitment to its diverse communities, and the embrace of digital outreach, Complainant is creating an expansive and inclusive future for life training and furthering the place of meditation and mindfulness in society.”

“Complainant has gained significant common law trademark rights in the mark DREAMWISE, through the use, advertisement, and promotion of such mark in connection with Complainant’s various educational services. Complainant has also protected its intellectual property rights by filing for and obtaining trademark registrations for the DREAMWISE mark across more than thirty (30) countries, including the United States, the United Kingdom, Canada, the European Union, Australia, Japan, China, Brazil, South Africa, and India.”

Complainant’s United States Patent and Trademark Office (“USPTO”) registrations include the following: USPTO Reg. No. 5,547,115 for the word mark DREAMWISE, registered on August 21, 2018 in connection with “Education services, namely, providing training, coaching, and consulting in the field of meditation and mindfulness” with a May 29, 2018 date of first use in commerce; USPTO Reg. No. 6,223,189 for the word mark DREAMWISE, registered on December 15, 2020 in connection with “Downloadable computer application software for mobile phones, namely, software for meditation instruction; Downloadable computer software for meditation instruction; Downloadable software in the nature of a mobile application for instruction, guidance and information in the field of meditation, dreams and mindfulness” with a September 23, 2020 date of first use in commerce; and USPTO Reg. No. 5,531,923 for the design mark DREAMWISE, registered on July 31, 2018 in connection with “Education services, namely, providing training, coaching, and consulting in the field of meditation and mindfulness” with a May 29, 2018 date of first use in commerce.

The record lacks evidence regarding the extent to which Complainant’s DREAMWISE trademarks enjoy renown.

The Domain Name was registered on April 2, 2024. The Domain Name resolves to a website promoting a forthcoming book entitled Dream Wise – Unlocking the Meaning of Your Dreams, authored by Respondent and two other writers with whom Respondent is affiliated. Respondent and her co-authors produce a podcast called “The Jungian Life.”

The Parties, through counsel, exchanged a series of letters, beginning with Complainant’s October 29, 2024 cease-and-desist letter to Respondent. In that missive, Complainant asserted its trademark rights and demanded that Respondent agree not to use DREAM WISE in a book title or otherwise, and not use DREAMWISE on a website. Complainant did not specifically request a transfer of the Domain Name. Respondent’s counsel responded by letter dated November 11, 2024, to which Complainant’s counsel replied on December 9, 2024. Finally, on January 21, 2025, Respondent’s counsel sent a final response letter, by which date this UDRP proceeding had been initiated.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Among other things, Complainant argues:

“Respondent’s domain name are likely to be confused as to the source, sponsorship, affiliation or endorsement of the domain name due to the use of the DREAMWISE® Mark. Respondent’s services include education services in the field of dream interpretation. Providers of such dream education services also commonly provide other education services, such as meditation services like those provided by Complainant. Further, Complainant’s website’s landing page clearly states that Complainant has worked with dreams. Thus, Respondent’s educational dream services are related to Complainant’s educational meditation services.”

B. Respondent

Respondent claims a legitimate interest in the Domain Name, as it reflects the name of the forthcoming book she co-authored with two colleagues. Respondent also argues that services related to dreams are different from services related to meditation, chiefly because meditation involves a voluntary mental experience whereas a dream involves an involuntary mental experience. As Respondent states:

“Meditation is a conscious practice whereas dreams are solely subconscious involuntary actions. In other words, Meditation and dreams are separate areas. A consumer looking for dream-related content would not necessarily engage with or be directed to the complainant’s services in connection with the Mark despite the complaint that the Book could lead consumers to believe that it is ‘sponsored, endorsed, or authorized by’ the complainant.”

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel finds that Complainant has rights in the mark DREAMWISE through registration demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the DREAMWISE mark. Notwithstanding the addition of the descriptive word “book” in the Domain Name, Complainant’s mark is clearly recognizable within the Domain Name.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

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 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 need not decide this issue, given its conclusion below in connection with the “Bad Faith” element.

C. Registered and Used in Bad Faith

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 online 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 concludes, on the record provided here, that Complainant has failed to prove bad faith registration and use under the Policy. Simply put, this is not a clear case of cybersquatting. It is, instead, a dispute over trademark rights best resolved by a court of law. The UDRP is concerned with bad faith registration and use of a domain name, which standard requires a finding that the respondent was targeting the complainant’s trademark. That is not the same thing as a claim for trademark infringement, which claim can be established even in the absence of any evidence that the defendant was targeting the plaintiff’s trademark.

Here, Respondent registered the Domain Name because it contained the title of the book she co-wrote, plus the descriptive word “book.” It does not appear from this record that Respondent selected Dream Wise as the book title in order to free-ride on the fame of Complainant’s trademark. (Again, the record does not reveal the extent to which Complainant’s mark may be well known.) Rather, from the record presented, it appears to the Panel that Respondent (and her co-authors) chose this title (and this Domain Name) because the book purports to help the reader to understand one’s dreams.

The Panel offers no comment – because it is beyond the purview of the UDRP – on whether Complainant may have a viable cause of action under the United States Lanham Act. In any event, such a claim belongs in a court of law, and not in a UDRP proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: March 1, 2025

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