Working With The Mind is the expanded version of WWTM and its matching .org domain, WWTM.org. Its registrant is using it for legitimate purposes, after registering it in 2020.
Meanwhile, Maharishi Foundation USA, Inc., alleged infringement of its mark TM that stands for TRANSCENDENTAL MEDITATION.
The ensuing UDRP was found to have no merit, as the mark and the expanded version of WWTM are completely unrelated. The Complainant operates from the domain TM.org.
The sole panelist at the WIPO slapped the Complainant with a finding of Reverse Domain Name Hijacking, stating:
“The Complainant was legally represented. The Complainant promotes techniques to improve calmness, clarity of mind and happiness. The Respondent is a small social enterprise with limited funds and is self-represented, and it is reasonable for the Panel to conclude that the Complainant was aware of this before filing the Complainant.”
Final decision: Deny transfer of the domain WWTM.org with a RDNH finding.
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ADMINISTRATIVE PANEL DECISION
Maharishi Foundation USA, Inc. v. Matthew Ward, WWTM
Case No. D2021-13331. The Parties
The Complainant is Maharishi Foundation USA, Inc., United States of America (the “United States” or “U.S.”), represented by Shuttleworth & Ingersoll P.L.C., United States.
The Respondent is Matthew Ward, WWTM, United Kingdom (“UK”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <wwtm.org> 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 April 29, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021, which was extended upon the Respondent’s request until May 28, 2021. The Response was filed with the Center on May 28, 2021.
The Center appointed John Swinson as the sole panelist in this matter on June 7, 2021. 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 Complainant advertises, promotes and provides courses and seminars on personal development. The Complainant has been in existence since 1966. The Complainant’s website is located at “www.tm.org”.
The Complainant owns U.S. Trademark Registration No. 1,015,556 for TM. This application was filed June 1, 1972 and has a registration date of July 8, 1975. The description of services for this registration is “educational services namely, conducting courses and seminars on personal development”. The letters TM in this trademark represent the term “Transcendental Meditation”. The Complainant also owns U.S. trademark registrations for TRANSCENDENTAL MEDITATION.
The Respondent is the founder and director of Working With The Mind C.I.C. which is a community interest company (CIC) located in Cambridge in the UK. The name of this CIC is abbreviated by the Respondent as WWTM being the first letter of each word in its name. Working With The Mind C.I.C. is a social enterprise that uses UK accredited mindfulness practices and approaches to provide support to local people and communities.
The disputed domain name was registered on May 5, 2020. The website at the disputed domain name promotes the Respondent’s social enterprise, solicit donations and advertises a book written by the Respondent that is available on the Amazon UK website.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions:
Identical or Confusingly SimilarThe Complainant has continuously used the trademark TM on educational services – namely conducting courses and seminars on personal development since at least as early as 1966. TM is an acronym for the Complainant’s registered trademark, TRANSCENDENTAL MEDITATION.
Since at least as early as 1966, the Complainant has made a substantial investment in advertising and promoting its courses and seminars on personal development. The Complainant created a website found at “www.tm.org” where it advertises its educational courses. The website also provides customer service links to information regarding the wealth of published, peer-reviewed scientific studies on the efficacy of the Complainant’s services.
As a result of more than fifty years of using, advertising, and promoting the TM and TRANSCENDENTAL MEDITATION trademarks on courses and seminars on personal development, consumers around the world have come to know and recognize the Complainant’s TM trademark and to associate this trademark with the Complainant and the services sold by the Complainant, thereby creating goodwill in connection with the sales of products under the TM trademark.
The disputed domain name is confusingly similar to the Complainant’s TM trademark. The disputed domain name is an intentional misspelling of the TM trademark.
Rights or Legitimate InterestsThe letters “TM” are commonly associated with the Complainant with respect to health and wellness, especially meditation. While this acronym may have some meaning in commerce unrelated to the health and wellness consumer category, in this category the TM trademark is famous.
None of the circumstances set out in paragraph 4(c) of the Policy apply.
The Respondent created and is using its website to create promote competing educational services on personal development related to “mindfulness” meditation.
The Respondent selected and used the disputed domain name solely to attract consumers to its website by trading on the fame of the TM trademark; such use can not confer any proprietary rights in the Complainant’s trademark to the Respondent.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent’s website is purely to trick or deceive consumers who have accidently errored in typing the Complainant’s domain name into thinking that they are on the Complainant’s site.
The disputed domain name is nothing short of typosquatting.
Registered and Used in Bad FaithRespondent’s registration of the disputed domain name is simply a case of typosquatting and was intended to derive revenue from Internet users who inadvertently omitted the final “w” and the full stop (or period) in the Complainant’s own web address “www.tm.org”. As such this is a classic example of registration and use in bad faith.
B. Respondent
The Respondent does not use the Complainant’s TM trademark.
The proper comparison in this case is between <tm.org> and <wwtm.org>.
Another comparison is between “www.tm.org” and “www.wwtm.org”.
It is incorrect to compare “www.tm.org” with <wwtm.org>.
The Respondent’s CIC is a very small UK social enterprise that uses UK accredited mindfulness practices and approaches to support people and communities, and has no interest in the Marahish Foundation or its customers.
The services of the Respondent are not similar to the services of the Complainant.
Working With The Mind is a non-profit community interest company that develops community mindfulness projects in the UK, and uses donations and proceeds from the services provided to support and deliver these projects. Working With The Mind is not Transcendental Meditation, and the community projects run by the Respondent, and services the Respondent is developing, are not in any way affiliated with or similar to meditation services offered by the Complainant.
The Complainant alleges that the Respondent is intentionally misspelling the Complainant’s trademark. When using WWTM, the Respondent is abbreviating the name of Working With The Mind. The Respondent has no need to use the trademarks of other organisations.
There are no registered trademarks in the UK for WWTM.
The Respondent does not use WWTM as a trade or service mark, merely as an abbreviation for Working With The Mind. TM transcendental meditation is markedly different from WWTM working with the mind.
The Respondent has a legitimate interest in using WWTM because it is an abbreviation for Working With The Mind.
The Complainant wrote to the Respondent alleging trademark infringement, but when questioned, did not provide details as to how the Respondent was infringing the TM trademark.
The Respondent promotes its services and books on the website at the disputed domain name.
The Respondent offers free online support courses with funding provided by The National Lottery Community Fund.
As set out on the Respondent’s website, the Respondent’s bona fide offering of goods or services developed out of a prisons project to wider mindful community projects helping people find a way to work with their minds.
The Respondent is commonly known as WWTM.
The Respondent was unaware of the Complainant and its business when the Respondent registered the disputed domain name.
The Respondent did not select the disputed domain name to trade off the Complainant’s fame.
There is nothing on the Respondent’s website that suggests any affiliation with the Complainant.
The Respondent seeks a finding of Reverse Domain Name Hijacking.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe Complainant has proven ownership of a longstanding U.S. registered trademark for TM.
The disputed domain name includes the Complainant’s registered TM trademark in its entirety, and for the purposes of the Policy is confusingly similar to the Complainant’s TM trademark. As is appropriate in this case, the Panel disregards the Top-Level Domain “.org” when making this comparison.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
The Complainant asserts that none of the circumstances set out in paragraph 4(c) of the Policy apply in the present case. The Complainant states that the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the TM trademark. The Complainant also states that the Complainant has prior rights in the TM trademark which precede the Respondent’s registration of the disputed domain name by fifty years. The Complainant also asserts that the Respondent’s website is a commercial website, which competes with the Complainant, and “such use can not confer any proprietary rights in Complainant’s trademark to the Respondent.” In the Panel’s view, this establishes a prima facie case against the Respondent.
However, the Respondent rebuts that prima facie case.
The Respondent is the founder and director of a legitimate social enterprise, known as a CIC in the UK. Even though the CIC is small, the Respondent provided evidence of the operations of this CIC. For example, the Respondent’s CIC operated a project in 2019 called Mindfulness in Prisons. In 2020, the Respondent’s CIC received a charitable grant from the National Lottery COVID-19 Fund to operate a mindfulness program for people impacted by COVID-19.
The disputed domain name is an acronym of Working With The Mind, which is the legal name of the Respondent’s CIC.
As discussed below, there is no evidence that the Respondent registered or used the disputed domain name with the Complainant in mind, or that the Respondent named the CIC as “Working With The Mind” because of the Complainant’s TM trademark. In short, there is no evidence that the Respondent selected the name of the CIC or the disputed domain name to trade off the reputation of the Complainant’s TM trademark or for the purposes of typosquatting. The Respondent has a bona fide offering of services.
Accordingly, the Respondent meets the requirements of paragraphs 4(c)(i) of the Policy.
The Complainant fails on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
There is no evidence that the Respondent selected or registered the disputed domain name with the Complainant or the Complainant’s TM trademark in mind. The Respondent is located in the UK. The Complainant operates in the United States. There is no evidence that the Complainant has trademark rights or any reputation in the UK. The Complainant’s TM trademark consists of two letters, and it is highly unlikely that the Respondent included the letters TM in the disputed domain name as a reference to transcendental meditation or to the Complainant.
There is also no evidence that the Respondent is using the disputed domain name in bad faith. The Respondent named the CIC as “Working With The Mind”, and for a social enterprise to promote mindfulness, this is an entirely believable and appropriate name. It is not asserted by the Complainant that the Respondent selected “Working With The Mind” as the name for his CIC as a ruse or that the Working With The Mind CIC is a sham.
In the circumstances, the Panel does not accept the Complainant’s assertion that the disputed domain name was registered and used for the purposes of typosquatting.
The Complainant fails on the third element of the Policy in relation to the disputed domain name.
7. Reverse Domain Name HijackingThe Respondent asks that the Panel make a finding that the Complainant is engaging in reverse domain name hijacking (RDNH). In effect, the Respondent states that the Complaint focused on the Complainant’s rights and did not consider the Respondent’s actual conduct, and that the Complainant makes allegations without proof.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the Rules in addressing possible RDNH scenarios.
In relation to the second element, the Complaint states:
“Clearly, Respondent selected and used the Disputed Domain Name solely to attract consumers to its website by trading on the fame of the TM trademark; such use can not confer any proprietary rights in Complainant’s trademark to the Respondent.
Furthermore, nothing on the Respondent’s website suggests any proper use of the TM acronym or a good faith basis for adopting the WWTM name. Respondent does not state anywhere on his sites what TM, alone, or in combination with WWTM means.”
Based on the evidence presented in the Complaint, it is certainly not clear to the Panel that the Respondent selected the disputed domain name solely to trade on the fame of the TM trademark.
Further, it is clear to the Panel that, even on a cursory review of the Respondent’s website, the disputed name is an acronym for “Working With The Mind”. The Respondent’s website uses the name “Working With The Mind” in many places, including in the title. Prior to filing the Complainant, the Complainant and the Respondent communicated by email. The Respondent in this correspondence stated to the Complainant’s attorney: “You and the Foundation you represent can read more about WWTM on our website at wwtm.org.” The Complainant had no reasonable basis to assert in the Complaint that nothing on the Respondent’s website suggests any proper use for adopting the WWTM name.
The Complainant was legally represented. The Complainant promotes techniques to improve calmness, clarity of mind and happiness. The Respondent is a small social enterprise with limited funds and is self-represented, and it is reasonable for the Panel to conclude that the Complainant was aware of this before filing the Complainant.
In these circumstances, the Panel finds the Complainant guilty of RDNH.
8. DecisionFor the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: June 18, 2021
