5 June 2019
The Rolf Institute of Structural Integration v. Specked Films
FORUM Case, Claim Number: FA1904001840729
It is often the case that panels are quick to find in favour of the complainant when the complaint is uncontested, provided that complainants provide substantive evidence under all three elements of the UDRP.
The following case is an example of the UDRP in action, and reiterates that panels will accept that a disputed domain name featuring the complainant’s trademark with addition of a generic word is confusingly similar to the purposes of the policy.
The Case
The case in question concerns an esoteric form of alternative medicine called rolfing, based on the principle that human “energy fields” can benefit from alignment with the earth’s gravitational fields[1]. The complainant, seemingly the guardians of this type of one hit cure all brought a case to the UDRP when it discovered that that the respondent was using the disputed domain name <sexyrolfing.com> in a seeming attempt to spice up our chakras, but diverting business away from the complainant.
Although the respondent did not respond to the claim, the complainant still had to prove all three elements of the UDRP.
Given that the complainant held a trademark for the term ROLFING, the panel had no issues finding that the disputed domain name was confusingly similar to the complainant’s mark, given that, as outlined in para 3.0 of the WIPO Overview, “cases where a domain name incorporates the entirety of a trademark … normally [are considered] considered confusingly similar to that mark.”
With regards to the second and third elements of the policy, the complainant drew the panel’s attention to the respondent’s use of the website, which was to primarily sell both competing and unrelated goods.
Ultimately, this was enough for the panel to find the following:
A respondent’s use of a disputed domain name to divert internet users, causing the belief that some sort of affiliation exists between it and Complainant, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).
As such, the complaint was successful, and the domain transferred to the complainant. There is no great magic in the decision, except that it is a good little case for illustration, where a generic term has been added to the trademark and the domain name is used to promote competing services.
[1] See https://en.wikipedia.org/wiki/Rolfing
[2] Rolf, Ida P. (1990) [1978]. Rolfing and Physical Reality. Healing Arts Press. p. 86.