World Intellectual Property Organization published three reverse domain name hijacking decisions today.
When it rains, it pours, and today that means we have three reverse domain name hijacking (RDNH) cases to report.
Earlier today, I wrote about reverse domain name hijacking findings for Koibox.com and Machani.com.
The third case is for WWTM.org.
Maharishi Foundation USA, Inc is the guilty party in this case. It has a U.S. trademark for TM, which is short for its Transcendental Meditation technique. It uses the domain TM.org.
Working With The Mind, a community interest company in the UK, uses WWTM.org for its site. The organization helps people with mindfulness, including mindfulness programs for prisons and people impacted by COVID-19.
One of the Complainant’s arguments was that WWTM.org is a typo of WWW.TM.org, but the panelist didn’t buy that.
World Intellectual Property Organization panelist John Swinson took issue with how Maharishi Foundation USA, Inc presented its case.
In finding RDNH, called attention to this statement by Maharishi Foundation:
“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.
Shuttleworth & Ingersoll P.L.C. represented the Complainant. The Respondent represented himself.
Thanks Andrew for sharing.
Congrats to Ankur bhai for his hard work. Great to see his dedication and bringing the best out of every case he fights back.
Zak Muscovitch says
Well said, AbdulBasit. Congratulations Ankur!
Aryeh Siegel says
TM has quite a history of going after those deemed to have infringed its domain name. Below is a quote taken from my book, Transcendental Deception, Behind the TM Curtain:
As reported by the Des Moines Register on November 30, 2011, Maharishi Foundation USA filed a trademark infringement lawsuit against The Meditation House, LLC, accusing the latter of false advertising, unfair competition, trademark infringement, trademark dilution, false representation, and unjust enrichment. Jules Green, the sole proprietor of The Meditation House, operated with no employees. The Maharishi Foundation asked the court to require Green to turn over all wrongfully generated profit from her allegedly improper activities to the foundation.
Green was indignant that the Maharishi Foundation or its licensees thought they were the only sources of knowledge of meditation and only they could teach it. She further pointed out that vedic meditation had been around for thousands of years. The Des Moines Register article also quoted from her website, in which she says she studied meditation in India with the “world-renowned Vedic scholar Thom Knoles.” Her website further had the following disclaimer: “Jules Green and The Meditation House, LLC expressly disclaims any association with Maharishi Foundation Ltd., its programs, its methods, its trademark ‘Transcendental Meditation’ (the common words ‘transcendental’ and ‘meditation’ as defined in Webster’s Dictionary but given an initial capital) and its licensees.”
David Spector says
Maharishi Foundation USA came after me in 2010, leading up to a lawsuit settlement agreement in 2017. I was and still am offering the world a deep meditation technique (quite different in nature from mindfulness) as an alternative to TM. I figured that since I never used their trademarked terms for my products or services I was safe. I was wrong. They charged trademark infringement because I compared my technique with TM in the spirit of healthy competition, and because I claimed that my technique “similarly taught transcending”. They charged I was misleading the public in comparing NSR with TM in these ways, because the generic word “transcending” was a variant of their trademarked term “Transcendental Meditation”.
A lawsuit would have put me out of business since I (as an ordinary retired person) had no significant financial resources as compared with the TM organization. This would have deprived thousands of people access to effortless mantra meditation through my teaching activities, due to the relatively high price of TM instruction. Over the past 15 years I have taught NSR meditation to 3000 people in English alone.
I spent about four years arguing with the TM organization through lawyers and the result was that we jointly negotiated a Settlement Agreement that resolved their complaints provided I simply changed how I spoke about NSR and TM. I have been happily free of TM harassment ever since, and I don’t mind comparing my successful meditation technique with TM solely on objective grounds (we require no trips to a meditation center, we charge less than 10% of the price, we require no ceremony of gratitude (puja) during instruction). I am allowed to say that, and it is more than sufficient.
I still hope that someday the TM organization and I can work together or merge, so that the public can benefit from learning deep meditation in a way that is better for many on objective terms. I admit that it is a dim hope.
Natural Stress Relief/USA