Claim Number: FA0903001251581
Complainant is Word of Faith International Christian
Center (“Complainant”), represented
by Dwayne K.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordoffaith.org>, registered with Moniker Online Services Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
G. Gervaise Davis, III and Anne M. Wallace as Panelists and Bruce E. O’Connor as Chair.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2009.
On March 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 7, 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 firstname.lastname@example.org by e-mail.
A Response was received on April 7, 2009. However because this Response was received not in hard copy the National Arbitration Forum does not consider this Response to be in compliance with Rule 5.
Complainant submitted an Additional Submission on April 13, 2009, which was in compliance with Supplemental Rule 7.
On April 17, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervaise Davis, III and Anne M. Wallace as Panelists and Bruce E. O’Connor as Chair.
Respondent submitted an Additional Submission on April 20, 2009, which was in compliance with Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Word of Faith International Christian Center has used the trademark WORD OF FAITH (the "Mark") since at least as early as 1979. The Mark has been continuously used since at least as early as 1979 in association with Complainant's religious and educational services. As such, Complainant owns substantial common law rights to the Mark, which has been in use well prior to Respondent's procurement of the contested Domain Name.
In addition, Complainant registered its own domain name, <woficc.com>, in June 2000, well prior to Respondent's registration of the Domain Name <wordoffaith.org>. Complainant's website prominently uses the WORD OF FAITH mark in connection with Complainant's services. Thus, Respondent cannot argue that it was unaware of Complainant or its rights, since its registration of the Domain Name came well after the long-standing and prominent use of Complainant's Mark.
The Mark has been used by Complainant in interstate commerce since at least as early as 1979, and is used in diverse manners customary to the relevant industry.
Complainant has spent substantial sums of money since 1979 promoting and advertising the Mark and goods and services offered thereunder.
The Mark is exclusively associated with Complainant's goods and services, which include not only religious and educational services, but also clothing and various other consumer items.
has no affiliation or relationship with Complainant, and has no right otherwise
to use "Word of Faith." Respondent's website is accessible in the
Respondent does not offer any legitimate goods or services under the Domain Name, and does not offer any goods or services relating to "Word of Faith" via the website. Therefore, Respondent's registration of the Domain Name is confusing, deceptive, and misleading.
Complainant's official website is located at <woficc.com>. Complainant's domain name was registered in June 2000. Respondent registered the Domain Name in April 2003. Respondent therefore not only knew or should have known about Complainant, but because of Complainant's prior registration of the domain name "woficc.com," Complainant had actual or constructive knowledge of Complainant and its use of the Mark (which is shown on the website using the domain name "woficc.com"). Further, a simple web search for "Word of Faith" will reveal the prominence of Complainant's trademark usage.
Respondent's registration of <wordoffaith.org> impermissibly suggests that Complainant has sponsored, approved, or is otherwise affiliated with Respondent, and trades upon the goodwill in and to the mark in violation of Complainant's rights.
Respondent has, without regard to the goods or services of the parties, a bad faith intent to profit from the Mark, and has registered, trafficked or used a domain name that is identical, confusingly similar or dilutive of the Mark. The activities of Respondent are and have been without authorization from Complainant and were taken in bad faith as the following facts illustrate:
1) Respondent's lack of use of the Domain Name in association with a bona fide offering of goods or services;
2) Respondent's lack of use of the Domain Name as a trade name to refer to itself;
3) Respondent has no trademark or intellectual property rights in the Domain Name. Respondent registered the Domain Name well after Complainant began using the Mark, and after Complainant registered its own domain name, "woficc.com";
4) Respondent has diverted consumers from Complainant's online location to a site accessible under the Domain Name that could harm the goodwill represented by the Mark, either for commercial gain or with the intent to tarnish or disparage the Mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
5) Respondent has registered the Domain Name, which Respondent knew or should have known was identical or confusingly similar to Complainant's Mark. The Domain Name is dilutive of Complainant's Mark. All of the foregoing actions were undertaken by Respondent without regard to the goods or services of the parties;
6) Respondent has registered the Domain Name to prevent Complainant from using its Mark in connection with the Domain Name; and,
7) Respondent's use of a general search page with respect to the Domain Name presents a likelihood of confusion to relevant consumers, will frustrate consumers, and will affect Complainant's ability to provide its services under the Mark.
Respondent is acting with intent to misleadingly divert consumers from Complainant's Internet website and is diluting and/or tarnishing Complainant's Mark by virtue of its use of the Domain Name, which does not constitute legitimate noncommercial or fair use.
Respondent has not offered any bona fide goods or services in association with its Internet website that utilizes the Domain Name, prior to notice by Complainant.
Under the circumstances of use, <wordoffaith.org> is sufficiently similar to the Mark so that consumers are likely to believe that the two users are somehow associated.
In light of Respondent's registration of "wordoffaith.org," consumers are likely to believe that Complainant has licensed the Mark to Respondent, licensed use of the Domain Name to Respondent, or that there is some other affiliation between the two.
Consumers will be further confused and become frustrated if the site associated with the Domain Name is not in fact related to Complainant or its services, or is simply a general search page, which may reflect poorly upon Complainant and affect the purchasing decisions of consumers.
While the Complainant has shown that its trade name "Word of Faith International Christian Center" contains the term "Word of Faith" as a component thereof, the Complainant has not attempted to show that the term "Word of Faith" is distinctive or exclusive to the Complainant. The very definition of a trade or service mark is that it must serve as a distinctive indicator of the source or origin of the goods so marked. A mere showing that the Complainant's trade name includes these three words does not establish such distinctiveness or exclusivity, such that "Word of Faith" is recognized by any relevant consumer as distinguishing the goods or services of the Complainant in the relevant marketplace.
There is a simple reason the Complainant does not attempt a pass at alleging or demonstrating any such distinctiveness or exclusivity. The reason is that "Word of Faith" refers to a particular strain of believe in circles within the Pentecostal/charismatic range of American Protestant Christianity. The "Word of Faith" quasi-doctrine is based upon such scripture as John 14: 13, "And whatsoever ye shall ask in my name, that will I do, that the Father may be glorified in the Son." Whether this belief is characterized as "Name it and Claim it", or more derisively as "Blab it and Grab it", the belief revolves around an operative and imminent material manifestation of faith resulting from the spoken word. It is the type of belief parodied in the Janice Joplin song "Oh Lord, Won't You Buy Me A Mercedes Benz".
The Complainant is very careful not to claim to have coined the term, which a Wikipedia entry refers to as "a family of local Christian churches as well as a teaching movement kindred to many Pentecostal and Charismatic churches and individuals worldwide". Indeed the origins of "Word of Faith" teaching within American Protestant Christianity date back to the early Twentieth Century, and are typified today by well-known proponents of what is variously known as the "Prosperity Gospel" by such televangelists as Joel Osteen, Creflo Dollar, and Robert Tilton.
As with any religious teaching or movement, there are adherents and opponents of “Word of Faith” teaching. Various documents are attached.
While this collection is by no means comprehensive, it is representative of the wealth of literature available to describe the "Word of Faith" movement from a variety of perspectives. Further, there is certainly no position taken by the Respondent on a matter of religious belief, the point is that "Word of Faith" is commonly and widely used primarily to refer to a type of religious belief, not to a particular religious organization, and certainly not to the Complainant.
Not only is "Word of Faith" a referent term, but it is widely used in the names of religious organizations on a non-distinctive basis, much as terms such as "Free Will", "Whole Gospel", "Orthodox" or other varieties of belief or particular doctrines are used within such organizational names to indicate a variety of belief. The Complainant is neither distinctive nor exclusive in this regard. Reference is made to a small collection of organizations which, like the Complainant, use the term "Word of Faith" within their trade names to refer to themselves, but which do not, and cannot, use the term exclusively or distinctively to identify the source or origin of goods and services, precisely because of the profusion of such entities:
"Word of Faith" a periodical magazine published by Word of Faith powerhouse Kenneth Hagin
"Word of Faith Family Worship
"Word of Faith Ministries" of
The Panel will also observe that many organizations us the term "Word of Faith" within their domain names, as highlighted above. There is no doubt that, like any independent religious organizations, they do not all agree with each other on a variety of particulars, and the Panel may consider the likely consequences of anointing the Complainant as an owner of exclusive or distinctive rights in this widely used term.
However, among the many organizations using the term "Word of Faith" on a nonexclusive and non-distinctive basis, there is one stand-out from the crowd. It is the Respondent's position that the term "Word of Faith" is a non-exclusive and non-distinctive referent term, which refers to a type of teaching within Protestant Christianity. However, the Complainant contends that the term is capable of identifying a particular organization as a mark.
the Complainant's contention must be weighed on its own relative to US TM Reg.
No. 1,138,281 for "WORD OF FAITH", claiming a first use in commerce
date in 1976, prior to the Complainant's claimed founding, for "CONDUCTING
CHURCH SERVICES AND PROMOTING CHRISTIAN LIVING THROUGH A SPIRITUAL AND
PHILOSOPHICAL ORGANIZATION". This
other words, the Complainant is attempting, through this Proceeding, to obtain
a domain name which, if it is believed to be a trade or service mark, is most
certainly not a trade or service mark of the Complainant in the
It is nothing short of astounding that the Complainant has come to this Proceeding claiming trade or service mark rights for activities that are precisely the subject of a subsisting federal registration owned by another. To be certain, the Respondent denies that "Word of Faith" is an enforceable mark owned by any entity, but the Complainant cannot claim before this Panel to be the owner of a trade or service mark right in a term which, in fact, is the subject of a federal registration to another party entirely.
The Respondent MDNH Inc. is a wholly-owned subsidiary of Marchex Inc., as identified in the contact data available through the link placed at the bottom of thousands of web pages operated by the Respondent for the purpose of monetization of common generic terms and short phrases. The registration data provided for the domain name identifies a technical employee - Mr. Brendan Hight - above the line identifying MDNH Inc. (which is an acronym for Marchex Domain Name Holding). MDNH Inc.'s status as a registrant of many descriptive words and common phrases is extremely well documented in various cases listed by Respondent.
Because there is some reasonable connection between Respondent's use and the Domain Name and for the other reasons set out above, Complainant has not succeeded in proving that Respondent lacks any rights or legitimate interests in the Domain Name.
There is no question that the term "Word of Faith" is indeed a common phrase. A Google Search on the exact phrase turns up more than 260,000 results from which many of the examples discussed above were gleaned. Indeed, the Complainant does not appear to be uniquely or famously associated with the term at all, of which the ordinary meaning is that of a type of teaching within American Protestantism at Amazon.com:
"In Defense of the Word of Faith: An Apologetic Response to Encourage Charismatic Believers" by Timothy Sims
"Righteous Riches: The Word of Faith Movement in Contemporary African American Religion" by Mi1mon F. Harrison
"The Word of Faith Movement" by Dan Lirette
"God In a Box? (The Sovereignty of God in Word of Faith Theology)" by D.B.S. Chad Marinelli
"The Love of Power or the Power of Love: A Careful Assessment of the Problems Within the Charismatic and Word-Of-Faith Movements" by Tom Smail et al.
"Only Believe: Examining the Origin and Development of Classic and Contemporary "Word of Faith" Theologies" by Paul L King (Author)
And, again, this list is truncated from among the many other offerings of "Word of Faith" related publications and materials available at a single online vendor - Amazon.com - and which have utterly nothing to do with the Complainant. The fact of the matter is that "Word of Faith" theology is the subject of considerable interest, debate, inquiry, and yes, merchandise.
Accordingly, the Respondent's use of a non-inherently distinctive term as a domain name in connection with a search directory of relevant subject matter cannot be considered "illegitimate", and is certainly not illegitimate relative to the Complainant's fatally flawed claim here. The type of use which the Respondent has made of the domain name since obtaining it is precisely the type of use well-documented in the decisions above, and the Respondent is perfectly entitled to use the term "Word Of Faith" as a descriptor of site content in connection with providing paid advertising links to subject matter relating to religious interests.
The Respondent's business model is well documented in the cases referenced above, and the Respondent's use of ordinary words and phrases in connection with advertising search results has repeatedly been found to be a legitimate practice
Accordingly, the Respondent submits that prior to notice of a dispute, the Respondent was using the domain name to provide automated advertising links to goods and services relating to best selling goods and services, and to contests in accordance with the primary meaning of the phrase "Word of Faith" to refer to a particular subject relative to the topic of religion generally.
The Complainant has provided no reason to believe that an Internet user, whether conducting a general search or directly entering a domain name is seeking the Complainant. As documented herein, the Complainant is but one of literally hundreds of entities, products, and publications using or referring to the phrase "Word of Faith" as a descriptor of a type of religious belief. Indeed, the Complainant does not explain why quite a few Word of Faith type churches use the term "Word of Faith" in internet domain names, yet the Complainant does not. The Complainant has provided no reason to believe that an Internet user typing <wordoffaith.org> is seeking the Complainant, instead of the wholly unrelated church using the domain name <wordoffaith.net>. It is interesting to note, however, that the Complainant appears to know better than to challenge an actual competing religious organization using the ".net" domain name, and instead chose to challenge the Respondent, which is not a competitor of the Complainant and instead uses the term "Word of Faith" as a descriptive term referring to the subject of religious topics, for which the Respondent provides relevant advertising links.
It is not sufficient for the Complainant to claim that internet users are "misdirected" by virtue of the fact that internet users reach the Respondent's website as a consequence of using the domain name. The Complainant must provide a reason to believe that internet users, employing this dreadfully non-exclusive and non-descriptive term, are by necessity, or even by a preponderance seeking the Complainant's church, and not the dozens of others of "Word of Faith" churches mentioned above, or for religious information, goods, or services generally. The notion that Internet users would believe the Respondent is licensed by the Complainant would indicate that the Complainant must have a massive licensing program of which the Complainant provides no clue. No, "Word of Faith" is by no means associated with the Complainant to any exclusive or distinctive extent, and the matter is that simple.
The Complainant has further provided no reason to infer that the Respondent or its predecessor had notice of the Complainant's odd "common law" claim contrary to a federal registration owned by another. As the Complainant possesses and possessed no federal registration, the Respondent certainly had no duty of notice of such claim at the time the domain name was initially registered, or at the time the original registrant was acquired by the present Respondent. Certainly, the Respondent, had it conducted a search of users of the term at that time would have had no reason to believe the Complainant was or is in possession of trade or service mark rights, in view of the evident widespread use of the term by a multitude of organizations, publications, and other materials relating to "Word of Faith" theology. This type of religious thought is not a brand, does not originate with the Complainant, and certainly does not distinctively identify the Complainant.
A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain was to profit from and exploit the complainant's trademark. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant's rights.
If the Respondent had conducted a trademark search, the Respondent would have found Rev. Tilton's unusual federal registration, which the Respondent does not believe to be valid, and the Complainant has provided zero evidence whatsoever that the Respondent could or should have been aware of the Complainant when the domain name was registered.
C. Additional Submissions
With respect to Complainant's rights, the evidence stands completely unrebutted:
The WORD OF FAITH mark was first used by Complainant as early as 1979.
Complainant registered its domain name <woficc.com> in June 2000.
The WORD OF FAITH mark has been extensively advertised, promoted and used by Complainant in diverse manners customary to the relevant industry, including for religious and educational services, clothing and various other consumer items.
Complainant's website makes prominent use of the WORD OF FAITH mark, and has done so since its inception.
All of the foregoing activities occurred prior to Respondent's registration of the domain name <wordoffaith.org> in April 2003. Respondent's only purpose for the domain name <wordoffaith.org> is to funnel the public from the site through advertising links to businesses that pay Respondent for such traffic.
It is undisputed that Complainant owns common law rights in the mark WORD OF FAITH. These common law rights pre-date Respondent's registration of the domain name <wordoffaith.org> by nearly 25 years. There is no doubt that common law rights form a sufficient basis on which to complain of another's domain name registration.
refers to other third parties using "Word of Faith," but does not
establish whether those parties are affiliated with Complainant or not. The
fact is, there are several "satellite"
churches affiliated with Complainant throughout the
All of these satellite churches are using WORD OF FAITH as a trademark or service mark with respect to the specific goods and services offered by Complainant. WORD OF FAITH is not used by Complainant to describe a particular movement or faith-based system, but as a trademark or service mark with respect to Complainant's own goods and services. Such widespread usage by Complainant has caused the mark to acquire substantial secondary meaning.
respect to confusing similarity, the domain name <wordoffaith.org> is identical to Complainant's WORD OF FAITH
trademark. It is common knowledge that the top-level domain (.com, .net, .org,
etc.) is ignored when comparing the similarity of a domain name to a trademark.
Complainant makes open and obvious use of WORD OF FAITH as a trademark, which
is prominently displayed on Complainant's website, with "
Respondent never addresses confusing similarity, and instead alleges that the concept of "word of faith" existed before Complainant's use of the mark for its institution. Respondent cites no case law whatsoever to support this position. Complainant has spent 30 years building its goods and services around the mark. Complainant provided in its Amended Complaint evidence of its extensive use of the mark, which has not been disputed by Respondent.
Instead, Respondent cites to a website and various literature which discusses the general concept of "word of faith" to allege that Complainant has not obtained distinctiveness or exclusivity with respect to its mark. Such a proposition is without support.
Respondent claims that others may use "word of faith" (although not as a trademark), but never establishes whether such third parties are affiliated with Complainant. As indicated above, Complainant has satellite churches throughout the country and in other countries as well. In addition, even if others may use a particular term as a generic phrase or descriptive phrase does not mean that WORD OF FAITH cannot acquire trademark rights with respect to the specific goods and services offered by Complainant. For example, anyone can use the word "apple" to refer to the specific fruit, but APPLE when applied to computers is a protectible trademark. In this instance, others may refer to the "word of faith" or "words of faith" in a descriptive sense, but not to Complainant's specific religious and educational services.
In sum, there is no question that <wordoffaith.org> is confusingly similar to Respondent's WORD OF FAITH mark.
Respondent admits that MDNH Inc. is a wholly-owned subsidiary of Marchex Inc. It is therefore undisputed that (a) Respondent is not a licensee of, or otherwise affiliated with, Complainant, (b) Complainant's rights in the WORD OF FAITH mark precede Respondent's domain name registration, and (c) Respondent is not commonly known by the Domain Name.
Complainant has thus made a prima facie showing, which Respondent has not rebutted, that Respondent lacks rights or legitimate interests in the domain name.
Apparently, Respondent's basis for its "legitimate interest" rests in "equitable interests such as expectation and reliance interests," which are completely unsupported by fact or case law. Respondent apparently alleges that its use of "ordinary words and phrases in connection with advertising search results" constitutes a legitimate interest in the domain name. As the following will establish, Respondent's unsupported allegations are insufficient to show legitimate use. According to Respondent, it obtained the domain name at issue "for the purpose of monetization of common generic terms and short phrases." In other words, Respondent generates revenue based on the number of times internet users click on Respondent's client-sponsored links featured on Respondent's website.
Respondent is making use of the domain name <wordoffaith.org> by linking to various products and services, some of which are in competition with Complainant.
If Respondent's position were upheld, it would allow other cybersquatters to simply establish a parked page using someone else's trademark (regardless of whether registered or not), generate ad revenue for themselves by directing users to third party sites, and try to pass off such blatant infringement as bona fide. This is not proper, as the Panel is well aware, and as many decisions have illustrated.
Further, Respondent's use of the .org top-level domain (TLD) is also instructive. The .org TLD is typically used for non-profit organizations, not for commercial entities such as Respondent, which is admittedly trying to monetize the domain name. Use of the .org TLD, when Respondent could have chosen a purely generic or descriptive domain such as <religiouspromotions.com>, will create confusion and mistake, and points to an illegitimate use in connection with "Word of Faith."
Respondent claims that it is using "Word of Faith" to "refer to a particular subject relative to the topic of religion generally."
If Respondent were using "Word of Faith" as a descriptive term for a Pentecostal religious movement, then the links posted on Respondent's website would reasonably be expected to refer that movement. As is readily apparent, they do not. Respondent's home page has tabs for various items such as "car donation," "Christian dating," and "home school," and has links as diverse as finding Microsoft, finding a child day care center, genealogy, candle making, baby furniture, donating a car, low price shopping, etc. Thus, Respondent's use of WORD OF FAITH does not describe Respondent's alleged services or the links on Respondent's web page, and bears no connection whatsoever to what Respondent claims that "Word of Faith" means in a religious context. Thus, "Word of Faith" does not describe the Respondent's intended content or theme.
In addition, many of the links on Respondent's website have changed since the filing of this complaint in order to allege a more "religious" focus than what was originally posted. The sponsored listings on Respondent’s current website are generic advertisements in general: "Rent Textbooks Online," "Waldenbooks Book Store," "Borders Bookstore," "Greek Word for Faith," "Black Expressions Book Club," etc. There were also various "related searches" and "lifestyle categories" listed, but these did not refer to anything specific to a religious movement. Obviously, Respondent added information to its website and search fields, after the fact, in a transparent attempt to try to "squeeze" its commercial revenue generation into the guise of offering information more specific to religion in general.
Even today though, if you click on the "Related Search" categories, it is patently obvious that the allegedly related searches are not related to Word of Faith at all, and are mostly not even religious-oriented in nature. For example, clicking on "Christian Credit Counseling" in the "Related Searches" field brings up 8 separate sponsored listings, only 3 of which have even any ostensible relationship to Christianity in general. The rest are all for credit counseling and debt relief. The same is true for the other related searches as well. For example, the "Christian T-Shirt" link brings up 8 sponsored listings, only 3 of which have any relation to "Christian" themes at all. Others are simply generic t-shirt offerings. These links, and others on Respondent's portal page, simply do not support an assertion that "Word of Faith" is descriptive of Respondent's goods or services at all.
The first listing on Respondent's website is a sponsored listing of <LightSource.com>, which refers to Bishop Keith Butler and Word of Faith International. Keith Butler is the Bishop of Word of Faith International, i.e., the Complainant. This constitutes direct competition with Complainant. Respondent's website does not clarify whether such competition is sponsored or approved by Complainant, or is in affiliation with Complainant.
This listing of Complainant, on Respondent's website, will result in confusion as to the source, sponsorship or affiliation of Respondent's services. By accepting such sponsored listings, Respondent is directly trading on the goodwill and distinctiveness of WORD OF FAITH in a commercial setting, for its own financial gain.
In sum, Respondent has no legitimate rights to use WORD OF FAITH, and it has wholly failed to rebut Complainant's evidence in this regard.
Respondent's defense to allegations of bad faith essentially consist of unsupported statements that others are using "Word of Faith," there is no evidence that users of
<wordoffaith.org> would be seeking Complainant, and that Respondent could not have been aware of Complainant when registering the domain name. Respondent's arguments ring rather hollow in light of (a) the open and obvious use of the WORD OF FAITH mark by Complainant, (b) the open and obvious use of WORD OF FAITH in conjunction with Complainant's website, (c) the widespread advertising, marketing, publicity and promotion of the mark by Complainant, and (d) the lack of any intellectual property rights owned by Respondent in WORD OF FAITH.
Bad faith can be comprised of, inter alia, lack of use of the domain name in association with a bona fide offering of goods or services, lack of use of the domain name as a trade name to refer to itself, or lack of any trademark or intellectual property rights in the domain name.
It has already been established that Respondent does not use the domain name <wordoffaith.org> to refer to itself, and that Respondent has no trademark or other intellectual property rights in the domain name.
Respondent has also admitted that it operates "thousands of web pages" in a similar manner to the website associated with <wordoffaith.org> "for the purpose of monetization of common generic terms and short phrases." Thus, Respondent recognizes the commercial value to it in utilizing a domain name (which incorporates Complainant's trademark), and tacitly admits that it intends to trade on the goodwill inherent in WORD OF FAITH. Otherwise, there is no plausible reason why Respondent could not undertake its plan under a different domain name, e.g., <religiouspromotions.com>.
Thus, it is evident that Respondent's entire business model is to snatch up various domain names (that it apparently believes are generic or descriptive), and then make money on those domains by third party advertising, or through outright sale to the actual trademark owner. In fact, Respondent offered to sell the <wordoffaith.org> domain name to Complainant if an offer in excess of $75,000 was conveyed to Respondent's domain name registrar. Thus, Respondent's bad faith is further evident from such an excessive sales price for a domain name to which it owns no intellectual property rights.
There can also be no doubt that Respondent knew or should have known of other's rights in WORD OF FAITH. Complainant has used the mark for years, and a search for "Word of Faith" brings up Complainant's website as the very first listing. As a result, if Respondent had done a simple web search, it would have found the prominent usage by Complainant of the WORD OF FAITH mark. Respondent's argument essentially admits that WORD OF FAITH is a distinctive mark capable of secondary meaning, and of which Respondent should have been aware.
As indicated by the evidence submitted by Complainant, it has used the WORD OF FAITH mark since at least as early as January 1979, which is prior to the filing date for the third party application that Respondent refers to on p.10 and elsewhere in its response Respondent claims that it does not believe that registration to be valid, but has offered no evidence, proof or other support of this naked claim. Thus, Respondent has offered no evidence as to why Complainant is not entitled to the relief it requests, when in fact a simple review of the evidence submitted indicates that Complainant has prior use of the WORD OF FAITH mark, even though someone else may have applied for registration of the mark first. This does not diminish the common law rights that Complainant has, and Respondent's argument in fact bolsters the notion that WORD OF FAITH is a registrable mark, and that Respondent's registration violates third party trademark rights.
Finally, the fact that Respondent changed its home page or the search parameters for its site to make the sponsored listings more overtly religious in nature also shows Respondent's lack of good faith. If Respondent's initial usage were innocuous and descriptive, as Respondent alleges, no such transparent attempts would have been made to the original site. Also, the fact that Respondent offers links to competitors (such as for religious services or for clothing items) also establishes Respondent's bad faith.
As a result, the evidence establishes that Respondent's arguments are factually incorrect and wholly unsupported by any credible evidence. Respondent did not rebut Complainant's evidence, and the domain name <wordoffaith.org> should therefore be transferred to Complainant.
As documented in the Response, the term "Word of Faith" is neither exclusive nor distinctive to the Complainant. In its Supplement, the Complainant refers vaguely to "satellite churches". The Complainant does not refer to "licensees", the Complainant does not refer to having ownership therein, and the Complainant does not even identify these "satellite churches". The reason why is that the Complainant's website does indeed list a handful of "satellite churches" with no explanation whatsoever of what constitutes a "satellite church".
The point of the Complainant's vague comments about "satellite churches" is to attempt to render the impression, without actually lying, that the numerous churches listed in the Response are somehow "licensees" or otherwise controlled by the Complainant. The Complainant's "satellite church" web page, lists the following locations:
Birmingham, Alabama, Round Rock, Texas, Grand Rapids, Michigan, Smyrna, Georgia, Miami, Florida, Toronto, Canada, Nashville, Tennessee, Phoenix, Arizona, Montgomery, Alabama, San Francisco, California, Jacksonville, Florida, Tampa, Florida, Lubbock, Texas, Varna, Bulgaria, Mobile, Alabama, San Antonio, Texas, Jackson, Mississippi, St. Thomas, US Virgin Islands, London, England, Ypsilanti, Michigan, Philadelphia, Pennsylvania
Inspection of quite a few of these indicates that not all of them even use the term "word of faith" in their name. The Complainant does not explain its interest in these "satellite churches" or how the Complainant exercises quality control over the mark, as would be required of licensees. The Complainant does not explain how the activities of these "satellite churches" results in the accrual of good will to the Complainant. The Complainant does not even state, because it is not true, how all of these "satellite churches" even use the term "word of faith" in any manner whatsoever. The Complainant appears to assume the Panel is unfamiliar with basic principles of trademark law, and merely hand waves at having "satellite churches", whatever that might mean in relation to Complainant's claimed "mark".
As a reminder, the Response noted "Word of Faith" churches in the following locations:
The Panel will observe that not a single one of the organizations mentioned in the Response is one of the Complainant's claimed "satellite churches", and that the Complainant does not even attempt to sort out the dates of establishment of its "satellite churches" or how it is that the Complainant claims to have been expanding the geographic scope of its claimed trade or service mark rights while another party entirely held a US federal registration.
The Complainant seems to believe it necessary to prove or disprove whether the Complainant had trade or service mark rights some 25 years ago. The Complainant does not appear to understand that the Policy requires the Complainant to demonstrate the present possession of a trade or service mark right. Hence, it is not necessary for the Respondent to demonstrate whether or not the Complainant stood alone some 25 years ago in its use of the term "Word of Faith" (although the literature references make clear that the Complainant did not). The question is whether the Complainant, as of the filing of this Complaint in 2009 does or does not have a trade or service mark right.
Complainant does not have a federal registration, and the Complainant's best
claim to a trade or service mark right would be to a claim arising under the
common law of
Word of Faith
International Ministries of
Nehemiah Word of Faith Baptist of
The Rhema Word of
Word of Faith Fellowship in
Living Word Church of Midland, Michigan, which describes itself as "We are a nondenominational, Spirit-filled, word of faith church."
is no question that these are not "satellites" of the Complainant.
Indeed, Rhema Word of Faith is a
the original Response, the Respondent can supply many more examples - in
Again, the Complainant does not seem to understand the point. Even if we were to assume, arguendo, that Complainant was the one and only "Word of Faith" church at some point decades ago, the distinctiveness and exclusivity horse has long since left the barn and gone to pasture. Of course, the Complainant was not the only such church, but it would not matter if the Complainant had invented the term. What the Complainant fails to grasp here, through such evidence as the Wikipedia entry, the various articles on "Word of Faith" teaching, and the profusion of certainly not "satellites" of the Complainant is that whatever the historical situation may have been, the Complainant did not come to this Proceeding with any claim whatsoever to have any claim of distinctiveness or exclusivity whatsoever in the term "Word of Faith" - not in the United States, and not even in Michigan.
Policy requires the Complainant to show that it has a trade or service mark - an
exclusive and distinctive indicator of goods or services originating with the
Complainant. The Complainant has not shown that it possesses such exclusive or
distinctive association in the mind of a single relevant consumer, even in the
The Complainant's apparent intention to muddy the waters by a vague reference to "satellite churches" as if every "word of faith" church is somehow associated with the Complainant, is a surprisingly cynical and misleading line of argument for a religious institution to advance.
The Respondent in particular has been the focus of numerous decisions in which the association of words with advertising links relating to the same general category denoted by such words has been found to be legitimate. The Complainant hyperbolically claims that such a principle undermines the Policy. The Respondent trusts that the Panel is able to distinguish between cybersquatting - i.e. intentional registration of actually distinctive and/or famous trademarks for the purpose of exploiting them, and run-of-the-mill monetization of generic words and phrases of the type for which the Respondent is extremely well known, as reflected in the cited decisions in the Response.
Decisions under the Policy in relation to "portal" sites relating in general to a nondistinctive, non-exclusive word or phrase are legion.
Again, the Complainant appears to believe that the use of a phrase for a certain amount of time renders the phrase to be a trade or service mark. Purina, for example, has been using the phrase "dog food" for decades, but it will never be a trade or service mark, because the term is generic to "dog food". The Respondent has amply demonstrated that the term "word of faith" is generic to a type of belief system, and is most certainly not exclusive or distinctive to the Complainant. The Respondent is as free as any of the various entities listed in this Reply or in the Response, to exploit the common descriptive meaning of the term "word of faith" in general connection with religious subject matter.
The Complainant's claim that the web site in question has changed is irrelevant. Of course, the placement of links on the page is dynamic, and is based upon the real-time keyword bidding market within the generally targeted area of religious subject matter. The Respondent is not relying on the present content of the web page to demonstrate legitimate rights and interests. The Policy requires the Panel to look to the use of the domain name prior to notification of a dispute. The web site will continue to change, but it is not at all clear what the Complainant seeks to prove by pointing out that irrelevant fact, since the Respondent's argument here does not rely on any claimed "changes" to the site.
The Complainant presents a further grab-bag of allegations here, all of which are premised on the Complainant's thoroughly unproven and contradicted claim to have an exclusive or distinctive association with the term "word of faith" by mere fact of its being one of possibly hundreds of independent and unrelated entities which refer to the "word of faith" type of religious practice, teaching, or outlook.
clear, the Respondent does not require an "intellectual property
right" in the term. That is
the entire point here - it is not a term that is at present capable
of any party in the
The owner of the federal registration, Robert Tilton, went virtually underground after being discredited by an investigative report by the ABC Television network in recent years, and a spate of civil suits for fraud. Having divorced and re-married, Rev. Tilton re-launched his "ministry" under a different name. The Complainant's claim that the Respondent was "violating third party trademark rights" while at the same time the Complainant desperately wants to claim that it has been expanding its own "Word of Faith" church in "satellites" during the term of that federal registration is a landmark in hypocrisy. The bottom line on Rev. Tilton's federal registration is that it is by now well past the three years of non-use required for presumptive abandonment, but that does not mean that "a trademark right" somehow devolves upon the Complainant alone among the innumerable independent and non-exclusive users of the term.
The Complainant's claim that the Respondent should have known of the Complainant at the time the domain was registered, on the ground that a Google search in 2009 reflects the Complainant's apparent good efforts to obtain high search engine rank in 2009 is hard to characterize as other than silly. No, a 2009 Google search is not evidence of a trade or service mark at some arbitrary point in the past, and indeed it is by conducting such a search that one rapidly learns the term is widely used by many parties unrelated to the Complainant.
The Respondent believes it need not insult the intelligence of the Panel by a time wasting tit-for-tat rejoinder of the various and largely pointless arguments raised by the Complainant which, in the main, do not solve the Complainant's central problems in this dispute - i.e. that Complainant has not demonstrated any sort of exclusive or distinctive association with the term "word of faith" in the US or even in Michigan; that the Complainant cannot explain how it expanded its "satellite churches" during the term of a subsisting federal trademark registration owned by another prior to abandonment thereof; and that Complainant's claimed use of "word of faith" since 1979 is at all relevant to the present and obvious reality that the term "word of faith" is, as the Complainant would put it, "open and obviously used" by innumerable unrelated organizations and writers to refer to a generic type of religious belief.
In summary, the Complainant has the burden of proving each element of the Policy. Such proof must be made by competent evidence, and not merely "speaking into existence" a trade or service mark, a lack of legitimate interest, and bad faith, in the face of the weight of reality-based evidence to the contrary.
The National Arbitration Forum has determined that a hard copy of the Response was not received before the Response deadline. Rule 5(b) requires each response to be filed in hard copy, as does Supplemental Rule 5(b).
10(b) requires the Panel to ensure that each party is given a fair opportunity
to present its case. Rule10 (d) gives the
Panel the power to determine the admissibility of the evidence. To deny admissibility to the Response on the
technical ground of failure to file a hard copy would be to deny Respondent the
opportunity to present its case.
Especially is this so in view of the fact that Supplemental Rule 7(d)
permits the filing of Additional Submissions (as here) in hard copy or
electronic form. See Strum
v. Nordic Net
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum for the Panel to give any weight to the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum for the Panel to give any weight to the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents. The Panel finds that the factual contentions made by Complainant will be given weight as appropriate.
Respondent has provided the required ¶ 5(b)(viii) certification, and additional documents. The Panel finds that the factual contentions made by Respondent will be given weight as appropriate.
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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent contends that
Complainant has not established rights in the mark pursuant to Policy ¶ 4(a)(i). Respondent
points out that Complainant fails to include any extrinsic evidence to show
that secondary meaning is attached to the phrase “WORD OF FAITH,” connecting
this phrase with Complainant, beyond
Complainant’s own website and assertions about its church. Also, Respondent asserts that Complainant
cannot have established rights in the mark because WORD OF FAITH refers to a
type or sect of Pentecostal Christianity first espoused by E.W. Kenyon in the
early twentieth century and used by hundreds of other churches and religious
organizations. Further, Respondent
asserts that the WORD OF FAITH mark is registered with the USPTO (Reg. No.
1,138,281 issued July 29, 1980) by a
The last contention is of critical importance to the resolution of this dispute. The Trademark Act states that
A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate. 15 U.S.C 1057(b).
The evidence submitted by Respondent shows that Registration No. 1,138,281 is on the Principal Register, protects the identical mark WORD OF FAITH for which Complainant asserts ownership, covers the identical services provided by Complainant, and is owned by an organization (Word of Faith Outreach Center Church) other than Complainant. Although Respondent also states that such organization (or its founder) has not used the mark for over three years, resulting in presumptive abandonment of the mark (under 15 U.S.C. §1127), the Panel notes that Registration No. 1,138,281 is still in full force and effect (having been last renewed on February 9, 2001). The issue of the registration’s validity is beyond the scope of the Panel’s powers that are limited to cancellation or transfer of the domain name at issue (under Policy ¶ 4(i)).
The Trademark Act also states that:
To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce… Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:
(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to … the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988 … Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved. 15 U.S.C. §1115(b).
The evidence submitted by Respondent shows that the mark in Registration No. 1,138,281 has become incontestable (by the timely filing of a declaration of 5 years’ continuous use under 15 U.S.C. §1065). Rather than being the owner of the mark WORD OF FAITH, Complainant may be an infringer of that mark unless it can establish that it had established common law rights in the mark and made continuous use of the mark from a date prior to July 29, 1980, the date of Registration No. 1,138,281.
The evidence submitted by Complainant for the establishment of any common law rights in WORD OF FAITH is skimpy, to say the least. The evidence submitted by Respondent shows that numerous unrelated third parties are using the term either in a descriptive sense or as part of their organizational name.
All that Complainant has submitted is its factual allegation of use of WORD OF FAITH as a trademark since 1979. That allegation is not corroborated by any compelling evidence of record. Further, long use does not make a trademark. Acquired distinctiveness of what is clearly a descriptive term requires a promotion of the term in such a way that the term transcends its primary or descriptive meaning and achieves a secondary meaning in which the viewer sees the term as a trademark. Typical circumstantial evidence of secondary meaning, in addition to long use, is exclusive use as a trademark, substantial promotion, and substantial revenues. Complainant addresses none of these factors. Respondent, on the other hand, clearly demonstrates that WORD OF FAITH is a descriptive term that appears to retain its primary meaning.
Even if Complainant were to establish prior common law rights in WORD OF FAITH, the Panel does not see how Complainant could succeed under ¶ 4(a)(i) of the Policy until it deals with the existence and effects of Registration No. 1,138,281.
The Panel finds that Complainant has not established rights in the WORD OF FAITH mark pursuant to Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Nat. Arb. Forum June 3, 2003) (holding that as the complainant provided no evidence to the panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to the complainant, the complainant did not have standing to bring a claim under the UDRP).
The Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Bruce E. O’Connor, Chair
Anne M. Wallace, Panelist
G. Gervaise Davis, III, Panelist
Dated: May 1, 2009
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