Kabbalah Centre International, Inc. v. Bnei Baruch USA
Claim Number: FA1101001369415
Complainant is Kabbalah Centre International, Inc. (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Bnei Baruch USA (“Respondent”), represented by Ralph N. Gaboury of The Dorf Law Firm, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org>, registered with Dotster, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Calvin A. Hamilton, David H. Bernstein and The Hon. Carolyn Marks Johnson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 25, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names are registered with Dotster, Inc. and that Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kabbalahlearningcenter.info, postmaster@kabbalahlearningcenter.net, postmaster@kabbalahlearningcenter.org, and postmaster@kabbalahcenters.org. Also on January 26, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 8, 2011.
Complainant submitted an Additional Submission that was received and deemed to be in compliance with the Forum Supplemental Rule 7 on March 14, 2011.
Respondent submitted an Additional Submission that was received and deemed to be in compliance with Forum Supplemental Rule 7 on March 21, 2011.
On March 15, 2011, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, David H. Bernstein and The Hon. Carolyn Marks Johnson as Panelists.
On March 29, 2011, the Panel issued a procedural order extending the time for the Panel to submit its decision until April 5, 2011.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it is the owner of a family of KABBALAH marks, which family includes the marks THE KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE, that it uses in connection with a wide variety of goods and services that have acquired substantial consumer recognition and good will. Complainant is the owner of the following United States Trademark and Service Mark Registrations on the principal register, many of which have achieved incontestable status:
Reg. No. Mark International First Use
Class
2,266,317 THE KABBALAH LEARNING CENTRE 16 1/30/94
2,416,726 THE KABBALAH CENTRE and design 9 3/30/96
2,885,664 THE KABBALAH CENTRE 41 1/30/91
2,885,663 THE KABBALAH CENTRE and design 41 1/30/91
2,264,214 THE KABBALAH CENTRE 16 1/30/91
2,416,725 THE KABBALAH CENTRE and design 16 1/30/91
2,709,764 THE KABBALAH CENTRE ESTABLISHED 16 1/1986
1992 JERUSALEM DIRECTOR RAV BERG
IMPROVING PEOPLE’S LIVES and design
3,705,292 THE KABBALAH CENTRE BOOKSTORE 35 1/1/97
2,381,448 KABBALAH CENTRE 25 1/1/97
Complainant states that it has invested a substantial amount of time, money and other resources advertising, promoting and marketing its goods and services provided under its family of KABBALAH marks throughout the United States and elsewhere throughout the world, including through use of its web site, which can be accessed via the domain names <www.kabbalah.com> and <www.kabbalahcentre.com>. Complainant further asserts that, by virtue of Complainant’s long and extensive use of the marks THE KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE, the marks have developed significant and substantial recognition and goodwill, and the marks THE KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE have come to be widely recognized by the public as identifying Complainant and its high quality goods and services. In light of Complainant’s ownership of the aforementioned incontestable registrations and long history of continuous use of the marks, Complainant concludes, it has protectable trademark and service mark interest in the names and marks THE KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE.
Complainant states that <kabbalahlearningcenter.info> (the “Domain Name”), and <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> (the “Additional Domain Names”) are confusingly similar to Complainant’s trademarks. Complainant states that the only variation in all of the domain names is (i) the inclusion of “.info,” “.net” or “.org”; (ii) an alternate spelling of the word “Centre”; and (iii) the exclusion of the word “the.” Complainant argues that these changes are not significant, and that Respondent’s Domain Name and Additional Domain Names will therefore result in a likelihood of confusion with Complainant’s marks.
Complainant also asserts that Respondent has no rights or legitimate interests in the Domain Name and Additional Domain Names. Complainant states that the sole purpose of Respondent’s use of the Domain Name is to create competition and to deceptively route internet users to Respondent’s own website, which Complainant argues is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(iii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant further asserts that the only use of the Additional Domain Names that Respondent has made has been in connection with click-through web pages, the sole purpose of which is to direct internet traffic to Respondent’s website or third party websites, many of which are selling or providing goods or services which compete with Complainant.
Complainant lastly asserts that Respondent has registered and is using the Domain Name and the Additional Domain Names in bad faith by (i) registering the Domain Name with the purpose of disrupting Complainant’s business; (ii) registering the Domain Name in an attempt to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s registered trademarks; and (iii) using the Additional Domain Names to attract internet users to third party websites, which Respondent most likely receives “click-through” fees for.
B. Respondent
Respondent states that its registration and use of the Domain Name is directly related to Respondent’s descriptive use of the generic term KABBALAH to describe its educational “learning centers”. Respondent states that it registered the Domain Name in good faith to advertise its bona fide Kabbalistic educational services, and not in an attempt to unfairly attract internet users to its website away from the Complainant’s site, and that the Domain Name resolves to the Respondent’s “Bnei Baruch Kabbalah Learning Centre” (BBKLC) website located at edu.kabbalah.info (the BBKLC website). Respondent assets that it has used the BBKLC website in connection with the bona fide offering of Kabbalistic educational services to students worldwide (not just in the United States) since 2006.
Respondent denies any confusing similarity between the Domain Name and the Complainant’s alleged trademark rights. It claims that Complainant’s alleged trademark rights in the mark THE KABBALAH LEARNING CENTRE are not enforceable against Respondent with respect to Respondent’s use of the generic term “Kabbalah” to describe its Kabbalistic educational services offered in Israel and throughout the world via its online classes. Further, even in the United States, Respondent states, Complainant’s trademark rights in the mark THE KABBALAH LEARNING CENTRE are at best weak and subject to a narrow scope of protection due to the highly descriptive nature of this mark, as acknowledged by Complainant in its filings with the United States Patent and Trademark Office (“USPTO”) in connection with the registration. Respondent points out, with respect to Complainant’s sole United States trademark registration for THE KABBALAH LEARNING CENTRE (US Reg. No. 2,266,317), that Complainant disclaimed the words “LEARNING CENTRE” apart from the mark as shown, and acknowledged that the mark is descriptive by requesting registration pursuant to section 2(f) of the Lanham Act.
Respondent further denies that its use of the Domain Name constitutes any violation of the UDRP Policy, trademark infringement, cybersquatting or unfair competition in violation of the United States federal or state laws.
With respect to the Additional Domain Names, Respondent states that its registration and use comports with its right to use the generic term “Kabbalah” as described above. Further, the web pages to which each of the Additional Domain Names resolves is the Dotster registrar’s standard “parked page”. Contrary to the assertion of the Complainant, Respondent says that it gets no revenue from any advertising posted on these pages, whether by click-through or otherwise.
Respondent submits evidence that Complainant’s own website (“The Kabbalah Centre” at <www.kabbalah.com>) is in fact advertised in each of the websites for the Additional Domain Names. In addition, Respondent says, none of the other links listed on the web sites for kabbalahlearningcenter.net and kabbalahlearningcenter.org are for any websites related to the practice of Kabbalah in any way (not even to Respondent’s website), and thus cannot be considered to be “competing third party sites.” Only the page for <kabbalahcenters.org> has links to other Kabbalah-related sites, and with respect to those, Respondent asserts, Complainant has provided no testimonial or documentary evidence whatsoever that those pages somehow “compete” with Complainant.
Respondent also asserts that, in connection with each of the Additional Domain Names, Respondent is making demonstrable preparations for their use in connection with the offering of Kabbalistic educational services to Respondent’s students. Respondent claims, and supports with the Declaration of Elizabeth Shillington, that it has (i) completed a “Kabbalah Glossary” which is planned to be put on a website to be linked-to by one of the Additional Domain Names; (ii) that it is actively planning to post a website with questions and answers about Kabbalah which would be linked-to by one of the other Additional Domain Names; and (iii) that it is actively planning to use one of the Additional Domain Names in connection with its physical learning centers located in the United States and Worldwide.
Finally, Respondent states that Complainant has failed to offer proof of Respondent’s bad faith. Instead, Respondent claims, Complainant has offered a conclusory statement that Respondent’s intent to disrupt Complainant’s business is demonstrated by the fact that Respondent is a competitor of Complainant. Respondent further asserts that it has no interest in being associated with Complainant and points out that Complainant has failed to provide testimonial or documentary evidence of any intent on the part of Respondent to divert users from Respondent’s website.
C. Additional Submissions
Complainant
Complainant contends that Respondent has completely failed to legitimize its registration and use of the subject domain names and that Respondent has failed to cast any doubt as to the validity and strength of Complainant’s THE KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE marks. Further, Complainant states that Respondent has misrepresented the true nature of its activities in a misguided attempt to demonstrate rights or legitimate interests in and to the disputed domain names, when absolutely none exists.
Particularly, Complainant states and provides documentary evidence that Respondent is not, and has never been, known as “Bnei Baruch Kabbalah Learning Center.” Instead, Complainant states, Respondent has gone by the names “Bnei Baruch World Center for Kabbalah Studies,” “The Wisdom of Kabbalah,” and Bnei Baruch Kabbalah Education & Research Institute.” Further, Complainant states, Respondent’s efforts to diminish or discredit Complainant’s rights in and to its the KABBALAH LEARNING CENTRE and THE KABBALAH CENTRE marks are not appropriate matters to resolve in this forum because the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
Finally, Complainant states that Respondent’s bad faith has been firmly demonstrated by virtue of (i) a long and contentious history between Complainant and the principal of Respondent, Dr. Michael Laitman; (ii) the use of the Additional Domain Names in connection with websites that contain links to third party websites where competing goods and services are being sold, and (iii) that none of Respondent’s future plans for the Additional Domain Names justify the registration and use of domain names which are comprised solely of the trademarks of Respondent’s biggest competitor.
Respondent
Respondent argues that Complainant’s Additional Submission fails to provide any testimonial or documentary evidence through a declaration, and relies solely upon conclusory allegations unsupported by evidence. Respondent reiterates that Complainant has failed to meet its burden of proof, and that the relief requested by Complainant should be denied.
Particularly, Respondent states that it has been offering bona fide services at the Domain Name since 2006; that nowhere in the evidence offered by Complainant is it shown that Respondent did not offer a bona fide service via the domain name; that Complainant’s trademark rights are not enforceable against it; and that Complainant has failed to prove bad faith registration by Respondent.
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 Complainant must prove each of the following three elements to obtain an order that each 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.
Complainant alleges that it has rights in THE KABBALAH LEARNING CENTRE mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”). As shown below, though, in many cases, the words “Kabbalah,” “Learning,” and/or “Centre” have been disclaimed, meaning that the registration provides no exclusive rights to use those words apart from the mark as shown:
Mark Reg. No. Issue Goods/ Disclaimed
Date Services Words/Distinctiveness
Limitation Statement
THE KABBALAH CENTRE 2,264,214 7/27/99 Books “Centre”
THE KABBALAH 2,266,317 8/3/99 Books “Learning Centre”
LEARNING CENTRE
KABBALAH CENTRE 2,381,448 8/29/00 Baseball caps None
and t-shirts
THE KABBALAH CENTRE 2,416,725 1/2/01 Books “The Kabbalah Centre”
THE KABBALAH CENTRE 2,416,726 1/2/01 Audio and “The Kabbalah Centre”
video tapes
THE KABBALAH CENTRE 2,885,663 9/21/04 Educational “The Kabbalah Centre”
services
THE KABBALAH CENTRE 2,885,664 9/21/04 Educational “Centre”
services
As these disclaimers reflect, the Complainant’s marks appear to be generic, or at least highly descriptive, when used in connection with educational institutions for the study of kabbalah. This is because “kabbalah” is generic for a type of spiritual teaching, and “learning centre” is descriptive for an educational institution. Nevertheless, Complainant’s registrations are prima facie evidence of the validity of Complainant’s marks, which creates a rebuttable presumption that its marks are inherently distinctive. See Toilets.com, Inc. v. United Sites Services, D2008-0151 (WIPO Mar. 18, 2008); EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO Mar. 24, 2000).
Although trademark registrations should be given appropriate deference in light of this presumption of validity, it is important to acknowledge that the presumption is rebuttable. If a party submits “compelling evidence” that a mark is generic or merely descriptive, notwithstanding the existence of a registration, that can be sufficient to rebut the presumption of validity. Electronic Commerce Media, Inc. v. Taos Mountain, Claim Number: FA 95344 (Nat. Arb. Forum Oct. 11, 2000).
Here, Respondent has provided evidence that “kabbalah learning center” should not receive trademark protection when used in connection with educational institutions for the study of kabbalah. That is a compelling argument. However, Complainant has also submitted evidence that it owns registration number 2,381,448 for KABBALAH CENTRE used in connection with baseball caps and t-shirts. Even if “kabbalah centre” is generic for an educational institution that teaches kabbalah, that mark is not necessarily generic when used in connection with caps and t-shirts. It is true that those articles of clothing may be used in connection with the kabbalah learning center itself, but Respondent has not sustained its burden of proving by compelling evidence that KABBALAH CENTRE is generic or merely descriptive for caps and t-shirts. Therefore, in light of the Complainant’s registration at the USPTO for KABBALAH CENTRE for caps and t-shirts, the Panel finds that Complainant has established at least some trademark rights.
Complainant must also show that the Domain Name and Additional Domain Names are confusingly similar or identical to Complainant’s marks. Complainant argues that Respondent’s <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names are confusingly similar to Complainant’s KABBALAH CENTRE mark. Complainant alleges that the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, and <kabbalahlearningcenter.org> domain names differ from Complainant’s mark only in the omission of the term “the,” the removal of the spaces between the terms, the alternate spelling of “centre” as “center,” and the addition of the generic top-level domains (“gTLDs”) “.info,” “.net,” or “.org.” Complainant claims the <kabbalahcenters.org> domain name differs from Complainant’s mark in the removal of the terms “the” and “learning,” the omission of the spaces between terms, the addition of the letter “s” to “center,” the alternate spelling of “centre” as “center,” and the addition of the gTLD “.org.”
As many prior panels have recognized, removing terms from a complainant’s mark does not alleviate confusing similarity under Policy 4(a)(i). E.g., Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
Similarly, using an alternate spelling of a word or misspelling a word in a complainant’s mark does not negate a finding of confusing similarity. E.g., Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
Panels also have made clear that adding the letter “s” to a term in a complainant’s mark is not a distinguishable change. E.g., Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Similarly, removing spaces between terms and adding a gTLD are insignificant changes that do not overcome a Policy ¶ 4(a)(i) confusingly similar analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.
Accordingly, the Panel finds that the disputed domain names <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> are confusingly similar to Complainant’s KABBALAH CENTRE mark for the purposes of Policy 4(a)(i).
With respect to the second factor under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden of production shifts to Respondent to come forward with evidence that it does have rights or legitimate interests. See Ets Leobert, SARL v. Jeonggon Seo, D2009-0004 (WIPO Apr. 8, 2009) (“[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing”) (quoting Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com , D2001‑0784 (WIPO Jan. 10, 2001); see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, D2002‑0683 (WIPO Sept. 16, 2002)); Document Technologies, Inc. v. International Electronic Communications Inc., No. D2000-0270 (WIPO June 6, 2000) (“[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name. This ‘burden shifting’ is appropriate given that Paragraph 4(c) of the Policy, which is entitled ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,’ discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name.”). While the burden of production may shift, the overall burden of proof ultimately remains on Complainant. Eurail Group GIE v. Epasses, D2003-0393 (WIPO July 17, 2003); Document Technologies, Inc. v. International Electronic Communications Inc., No. D2000-0270 (WIPO June 6, 2000) (“The burden of proof, however, does not shift as the Policy makes clear that ‘the complainant must prove that each of these three elements are [sic] present.’ Policy, ¶ 4(a).”).
The Panel holds that Complainant has not sustained its ultimate burden of proving that Respondent lacks rights and legitimate interests under Policy 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that complainant did not satisfactorily meet its burden of showing that respondent lacked rights and legitimate interests in the domain name under UDRP 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Complainant has offered evidence that Respondent has been known by names such as “Bnei Baruch World Center for Kabbalah Studies,” “The Wisdom of Kabbalah” and “Bnei Baruch Kabbalah Education & Research Institute,” but never “Kabbalah Learning Center.” Respondent contends, however, that it has made a bona fide offering of goods and services at the <kabbalahlearningcenter.info> domain name since at least May 2006, which is well before Respondent had any notice of this dispute. Respondent further alleges that, since that date, it has offered kabbalistic educational services and products through its Bnei Baruch Kabbalah Learning Center website to students worldwide who wish to learn about kabbalistic spiritualism. Complainant does not refute this, but instead, maintains that Respondent has never been known under the precise name “Kabbalah Learning Center.”
Because Respondent is offering information and education about kabbalah through its educational center and its website and because the Domain Name describes or is generic for such services, the Panel finds that Respondent is making a bona fide offering of goods or services under Policy 4(c)(i). See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Accordingly, the Panel need not consider the potential effectiveness and effect of Respondent’s parent organization’s trademark for KABBALAH LE AM for use in connection with “Internet site management in the field of Kabbalah: lectures, courses and lerning [sic] center in the field of Kabbalah; publishing of newspaper and books; all included in Class 41,” registered with the Israel Copyright Office (“ICO”) (Reg. No. 199,975 issued May 6, 2007).
Turning to the Additional Domain Names, Complainant alleges that Respondent does not have rights or legitimate interests in the Additional Domain Names because those domain names are pay-per-click pages at which competing advertising is being offered. Respondent, however, has offered evidence that it, and its parent Bnei Baruch Association, are making demonstrable preparations to use the Additional Domain Names in connection with the offering of Kabbalistic educational services to Respondent’s students throughout the world. Respondent provided evidence that it has already completed a “Kabbalah Glossary,” which is planned to be put on a website to be linked-to by one of the <kabbalahlearningcenter.net> and <kabbalahlearningcenter.org> domain names. Respondent also provided evidence that it is actively planning to post a website with questions and answers about Kabbalah which would be linked-to by one of these domain names. With respect to the <kabbalahcenters.org> domain name, Respondent offered evidence that it is actively planning to use this disputed domain name in connection with its physical learning centers located in the U.S. and worldwide. Respondent offered evidence that it registered this disputed domain name specifically to differentiate its in-person kabbalistic classes and study centers from its online offerings.
Having reviewed this evidence, the Panel finds that Respondent’s demonstrable preparations to use the Additional Domain Names, together with the generic nature of the marks when used in connection with kabbalistic education, support a finding that Complainant has failed to demonstrate that Respondent lacks rights and legitimate interests in these disputed domain names under Policy 4(a)(ii). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).
Respondent also argues that Complainant’s THE KABBALAH LEARNING CENTRE mark is descriptive and any use it is making of the mark is designed to take advantage of that descriptive meaning. Respondent supports this argument by asserting that Complainant disclaimed the descriptive wording “Learning Centre” apart from the mark as shown, which Respondent argues is “evidence that the disclaimed portion was descriptive [and] weak.” Respondent also notes that Complainant’s registration of the mark was obtained under Section 2(f) of the United States federal Lanham Trademark Act, which Respondent asserts amounts to an acknowledgement on Complainant’s part that the term was inherently descriptive . Respondent maintains that, in Israel, the term “kabbalah” is a generic term for a particular spiritual discipline and school of thought related to Judaism. Respondent contends that under the doctrine of foreign equivalents, as the term “kabbalah” is generic in Israel, enforcement of Complainant’s trademark containing this term against Respondent in the United States is foreclosed. To further support its argument that the term “kabbalah” is generic, Respondent points out that Complainant itself uses the term repeatedly on its website in a generic sense, defining “Kabbalah” as “an ancient wisdom that provides practical tools for creating joy and lasting fulfillment.” Thus, Respondent alleges that the terms of the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names are common and generic or descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
The Panel agrees with Respondent and finds that the term KABBALAH is indeed generic when used in connection with kabbalistic goods and services. The Panel finds further that that the domain names are being used, or are being prepared to be used, in connection with goods and services that are directly related to this common and generic or descriptive meaning. Complainant cannot have an exclusive monopoly on the terms on the Internet.
Accordingly, Complainant has failed to establish that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields).
In light of the Panel’s finding in favor of Respondent with respect to the existence of any rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). The Panel nevertheless finds that Complainant failed to meet its burden of proving bad faith registration and use under Policy 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Because Respondent has rights or legitimate interests in the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names pursuant to Policy 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). Indeed, having found that the KABBALAH LEARNING CENTRE mark is comprised of generic terms, the Panel finds that Respondent is free to register domain names consisting of such common terms. Accordingly, the Panel finds that Respondent did not register the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names in bad faith under Policy 4(a)(iii).
The Complainant, having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kabbalahlearningcenter.info>, <kabbalahlearningcenter.net>, <kabbalahlearningcenter.org>, and <kabbalahcenters.org> domain names REMAIN WITH Respondent.
Calvin A. Hamilton (Chair), David H. Bernstein (Panelist), The Hon. Carolyn Marks Johnson (Panelist)
Dated: April 4, 2011
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