General Council of the Assemblies of God v. DomCollect Worldwide Intellectual Property AG c/o Andre Schneider
Claim Number: FA0904001259727
Complainant is General
Council of the Assemblies of God (“Complainant”), represented by Christopher Schneider, of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gospelpublishinghouse.org>, registered with PSI-USA, Inc. d/b/a Domain Robot.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 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@gospelpublishinghouse.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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:
1. Respondent’s <gospelpublishinghouse.org> domain name is identical to Complainant’s GOSPEL PUBLISHING HOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <gospelpublishinghouse.org> domain name.
3. Respondent registered and used the <gospelpublishinghouse.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, General Council of the Assemblies of God, is
the world’s largest Pentecostal fellowship with over 300,000 churches in over
110 countries. Complainant has been a publisher
of extensive religious material through its publishing division, Gospel
Publishing House, since its inception in 1913.
Complainant is the owner of the GOSPEL PUBLISHING HOUSE mark, registered
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
3,515,092 issued
Respondent registered the <gospelpublishinghouse.org>
domain name on
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant has established rights in
the GOSPEL PUBLISHING HOUSE mark for the purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
Prior to Respondent’s registration of the disputed domain
name, Complainant did not possess a trademark registration for its GOSPEL
PUBLISHING HOUSE mark. However,
Complainant argues that it has common law rights in its GOSPEL PUBLISHING HOUSE
mark predating Respondent’s registration of the disputed domain name. If Complainant can demonstrate adequate
common law rights in the mark, the Panel finds that this is sufficient for the
purposes of a Policy ¶ 4(a)(i) analysis.
See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
Complainant contends that the first use of its GOSPEL PUBLISHING HOUSE mark occurred in 1913 when its organization was founded. The mark has since acquired substantial, valuable secondary meaning all over the world. Complainant has introduced evidence of Complainant’s widespread and continuous utilization of the mark in print media, advertising, and the global dissemination of Complainant’s religious materials since 1913. Additionally, Complainant contends that it is the world’s largest Pentecostal fellowship with a presence in over 110 countries. The Panel finds that such continuous and widespread use, together with the widespread goodwill Complainant has acquired, establishes sufficient secondary meaning in the GOSPEL PUBLISHING HOUSE mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has adequately established common law rights in its GOSPEL PUBLISHING HOUSE mark prior to Respondent’s registration of the <gospelpublishinghouse.org> domain name. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name).
Respondent’s <gospelpublishinghouse.org> domain
name contains Complainant’s GOSPEL PUBLISHING HOUSE mark in its entirety with
the omission of spaces between the words of the mark and the addition of the
generic top-level domain “.org.” The
Panel finds that the affixation of a generic top-level domain and the omission
of spaces are is insignificant for the purposes of a Policy ¶ 4(a)(i)
analysis. Thus, the Panel concludes that
Respondent’s <gospelpublishinghouse.org> domain name is identical
to Complainant’s GOSPEL PUBLISHING HOUSE mark under Policy ¶ 4(a)(i). See
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has produced a sufficient prima facie case showing that Respondent has no such rights. Thus, Complainant met its burden and once Complainant does so the burden shifts to Respondent to come forward with proof that it has rights to or legitimate interests in the disputed domain name. Respondent failed to respond to the allegations against it and therefore, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain name. Nonetheless, the Panel will examine the record to determine whether the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges
that Respondent is not commonly known by the <gospelpublishinghouse.org>
domain name. The WHOIS information lists
the registrant as “DomCollect Worldwide Intellectual Property AG c/o Andre
Schneider.” This information suggests
that Respondent is not commonly known by the <gospelpublishinghouse.org>
domain name and there is no evidence in the record to the contrary. Therefore, the Panel concludes that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent’s <gospelpublishinghouse.org> domain
name resolves to a website displaying click-through links that further resolve
to the websites of Complainant’s competitors.
The Panel presumes that Respondent is generating revenue from such
use. Thus, the Panel concludes that
Respondent’s use of the disputed domain name does not constitutes a bona fide offering of goods or services
or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or
(iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with the complainant was not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute 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)).
Respondent prominently displays
the message, “this domain for sale!” on the disputed domain name’s resolving
website. Additionally, the <gospelpublishinghouse.org>
domain name is up for auction on the <sedo.com> website. The Panel finds
that Respondent’s willingness to sell the disputed domain name demonstrates
additional evidence of Respondent’s lack of rights and legitimate interests
under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25,
2007) (concluding that a respondent’s willingness to sell a domain name to the
complainant suggests that a respondent has no rights or legitimate interests in
that domain name under Policy ¶ 4(a)(ii)); see
also Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that
auctioning domains does not constitute a bona fide offering of goods and
services or a legitimate noncommercial or fair use of domains.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad
faith registration and use of the disputed domain name pursuant to Policy ¶
4(b)(i) based on Respondent’s willingness to sell the disputed domain
name. The Panel agrees and finds that Respondent’s
listing of the <gospelpublishinghouse.org> domain name for sale in
multiple forums is evidence that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(a)(i).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Complainant alleges that
Respondent is using a domain name, which is identical to Complainant’s GOSPEL
PUBLISHING HOUSE mark, to attract Internet users to a website containing
commercial links resolving to the websites of Complainant’s competitors. The Panel finds that Respondent’s
misappropriation of Complainant’s GOSPEL PUBLISHING HOUSE mark to divert
Internet users seeking Complainant’s website to Respondent’s <gospelpublishinghouse.org>
domain name is likely disrupting Complainant’s business and constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Complainant further alleges that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is intentionally attempting to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its GOSPEL PUBLISHING HOUSE mark. Additionally, the domain name and resolving website contains click-through links which further resolve to the websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gospelpublishinghouse.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 27, 2009
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