The Maharishi Foundation, owner of the “TM” brand, failed in the dispute over the domain wwtm.org: What looks a lot like a mistake domain and which supposedly justifiably led the Maharishi Foundation to a promising procedure under the Uniform Domain Name Dispute-Resolution Policy, proved turned out to be a case of reverse domain name hijacking.
The US-American Maharishi Foundation USA, founded in 1966 and owner of the brands “TM” and “Transcendental Meditation”, offers courses and seminars for personal development. It uses the domain tm.org, whereby the letters TM are the abbreviation for “Transcendental Meditation”. She sees her trademark rights violated by the domain wwtm.org. In a UDRP procedure before the WIPO against the owner of the domain, who is based in Cambridge (United Kingdom), she submits, among other things, that it is known worldwide under the “TM” market and that the opponent’s domain is confusingly similar and it is a typo domain for the brand “TM” by changing the URL www.tm.org. The domain only serves to lead users to the opponent’s website based on the brand and thus to achieve economic advantages. The opponent who registered wwtm.org 2020 corrects that one can only compare “tm.org” and “wwtm.org” or “www.tm.org” and “www.wwtm.org”. He has no interest in the Marahish Foundation or its customers, which he was completely unknown. WWTM stands for “Working With The Mind”, whereby he offers his services and a book written by him on his website, which differ from those of the complainant. His offer is a legal social offer that the 2019 “Mindfulness in Prisons” project designed. His offer also lives from donations, such as the 2020 from the National Lottery COVID19 Fund to help people affected by COVID19 with a “Mindfulness Program”. He applied for reverse domain name hijacking (RDNH) to be established. The Australian lawyer John Swinson was appointed as the decision maker.
Swinson dismissed the appeal and upheld the RDNH (WIPO Case No. D2021-1333). It was clear to him that the “TM” brand was completely contained in the wwtm.org domain, which is why the first element of the UDRP was fulfilled. The complainant had also provided prima facie evidence that the opponent had no right or legitimate interest in using the domain. However, the latter successfully presented his actual justification and thus invalidated the prima facie evidence. He runs a legal social enterprise in the form of a Community Interest Company (CIC). There is no evidence that the opponent founded, registered or operates his CIC “Working With The Mind” and the domain with the complainant in mind. In doing so, the complainant had not fulfilled the second element. It was also unsuccessful on the question of bad faith because Swinson found no evidence that the complainant’s trademark and she herself were also registered and known in the United Kingdom. As a result, he could not find any evidence that the opponent had registered or used his domain with the trademark in mind. The opponent’s declaration that he called his CIC, with which he was promoting “mindfulness”, “Working With The Mind” and then registered the domain wwtm.org, was credible. Swinson therefore did not see that the domain in question had been registered as a typo domain. Finally he turned to the question of the RDNH. Here it came together that the parties had already communicated with each other before the UDRP proceedings and the opponent had referred to the content of his website. With the words:
You and the Foundation you represent can read more about WWTM on our website at wwtm.org.
he gave them an opportunity to clarify the reason for the domain name. In addition, the complainant was represented by a law firm that had the necessary specialist knowledge to recognize that a UDRP procedure would not be successful here. For Swinson, this was a typical case of abuse of the UDRP and such an RDNH, which is why he rejected the complaint and granted the request for reverse domain name hijacking.
The domain wwtm.org itself leaves room for the assumption that it is a typical typo domain that would have had a third “w”. But in fact, the owner not only offered an explanation for the domain name, but also corresponding content and evidence that it was not a mistake domain. The result of the UDRP procedure would certainly have been different without the corresponding evidence.
Lawyers who specialize in domain law can be found at Domain-Anwalt.de, a project by united-domains AG.
