Lectionary Homiletics Inc. v. J. Nichols Adams
Claim Number: FA0902001249700
Complainant is Lectionary
Homiletics, Inc. (“Complainant”), represented by Mary E.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <festivalofhomiletics.com>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2009.
On February 26, 2009, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <festivalofhomiletics.com> domain name is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@festivalofhomiletics.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant arranges and conducts educational conferences for religious leaders.
Complainant registered its FESTIVAL OF HOMILETICS service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,568,749, issued January 27, 2009, filed February 26, 2008).
Complainant's common law rights in the FESTIVAL OF HOMILETICS mark date from at least 1993, when Complainant began to use the mark to publicize its annual conferences for improving preaching effectiveness.
Complainant has also used the
FESTIVAL OF HOMILETICS mark since at
least July 29, 2002, to reach its customer base via the Internet.
This annual event has been
well publicized, is well known and has been well attended for 17 continuous years,
so that, by 2008, over 2,100 pastors from all 50
Respondent registered the <festivalofhomiletics.com> domain name on July 29, 2002.
Respondent served as a technology services provider for Complainant from 2002 to 2006, but, unbeknownst to Complainant, registered the disputed domain name in its own name, rather than Complainant’s, in contravention of Complainant’s explicit directive.
While the disputed domain name was used for Complainant’s benefit until termination of this business relationship, the domain is now used by Respondent to resolve to websites in competition with the business of Complainant.
Respondent’s <festivalofhomiletics.com> domain name is identical to Complainant’s FESTIVAL OF HOMILETICS mark.
Respondent does not have any rights or legitimate interests in the domain name <festivalofhomiletics.com>.
Respondent registered and uses the disputed <festivalofhomiletics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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.
Complainant’s registration of the FESTIVAL OF HOMILETICS mark with the USPTO demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007): “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant also asserts common law rights in the FESTIVAL OF HOMILETICS mark dating from its first use in 1993. Complainant has asserted that it has continuously marketed its annual conference under this mark since that time, and that the event has achieved significant growth and success. Respondent does not dispute these assertions. We conclude that Complainant has established sufficient secondary meaning in the mark dating from 1993 to confer upon it common law rights in the mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that a complainant established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before a respondent registered a disputed domain name); see also Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding common law rights where a complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that Complainant’s mark has been recognized as associated with Complainant’s artwork by several publications and the national media.”).
The disputed <festivalofhomiletics.com> domain
name contains Complainant’s entire FESTIVAL OF HOMILETICS mark while omitting
the spaces and adding the generic top-level domain “.com.” These changes are immaterial under Policy ¶
4(a)(i). Accordingly, the disputed domain name is
identical to Complainant’s mark. See
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes a sufficient showing to this effect, the burden shifts to Respondent to show that it nonetheless has rights or interests adequate for purposes of the Policy. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant
must make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights and legitimate interests in a disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have rights or legitimate interests in the domain).
From the allegations of the Complaint, we conclude that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. And, because Respondent has not responded to the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain name.
It also allows the Panel to accept all reasonable allegations set forth…as
true.
However, we elect to examine the record to determine whether there is any basis for concluding that Respondent has rights or legitimate interests in the contested domain by reference to the factors outlined in Policy ¶ 4(c).
We begin by noting that the evidence of record does not indicate that Respondent is or ever has been commonly known by the disputed domain name. In particular, the pertinent WHOIS information identifies Respondent only as J. Nichols Adams, c/o Network Solutions. We are compelled to conclude, therefore, that Respondent lacks rights to and legitimate interests in its domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s allegations that Respondent registered the disputed domain name in Respondent’s name in the first instance despite Complainant’s instructions to the contrary, and that, upon termination of the business relationship between the parties, Respondent withheld the disputed domain name from Complainant and has since used it to resolve to websites competing with the business of Complainant. This evidence is adequate to permit us to conclude that Respondent has not employed the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.
See also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a
disputed domain name to redirect Internet users to a financial services website
which competed with the business of a complainant was not a bona fide
offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
In our analysis of the question of bad faith registration
and use of a domain name, we are not limited to the four factors enunciated in
Policy ¶ 4(b). Rather, we may consider
the totality of the circumstances under Policy ¶ 4(a)(iii). See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000): “[T]he examples [of
bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”
In approaching this question, therefore, we take account of the undenied accusation of the Complaint to the effect that Respondent registered and now uses the disputed domain name in contravention of a directive to register and hold the disputed domain name in Complainant’s name and on its behalf so that Complainant could use the domain name for its website. These allegations are sufficient to permit us to conclude that Respondent registered and now uses the disputed domain in bad faith under Policy ¶ 4(a)(iii). See Int’l Soc’y for Cellular Therapy v. L. Hache, FA 671078 (Nat. Arb. Forum June 13, 2006):
In
view of Respondent’s creation of the original <celltherapy.org> website
and its management of the website on behalf of Complainant for several years,
Respondent knew of the Complainant’s use of the domain name. This Panel therefore finds that Respondent
acted in bad faith in registering the <celltherapy.org> domain name.
See also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum
Dec. 16, 2002) (finding bad faith where the method by which a respondent
acquired disputed domain names indicated that that respondent was well aware
that the domain names incorporated marks in which a complainant had rights).
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <festivalofhomiletics.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 10, 2009
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