Empty Tomb, Inc. v. Global Partnership Ministries
Claim Number: FA1108001403894
Complainant is Empty Tomb, Inc. (“Complainant”), represented by Phillip R. Van Ness of Webber & Thies, P.C., Illinois, USA. Respondent is Global Partnership Ministries (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <missionmatch.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.
On August 19, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <missionmatch.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@missionmatch.com. Also on August 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 September 2, 2011.
On September 22, 2011, the National Arbitration Forum received a non-standard communication, clarifying its Response. This communication did not comply with Supplemental Rule 7 and must therefore not be taken into account.
On September 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant considers the use of the Domain Name by Respondent to create confusion and to constitute a trademark infringement in accordance with the Lanham Act and U.S. case law.
Furthermore, Complainant asserts not to have granted permission to Respondent to use the term ‘missionmatch’ both as a domain name and as an e-mail address. Complainant also contends that Respondent is not known as ‘Mission Match’ and that Respondent’s motives for acquiring the Disputed Domain Name are not apparent.
Finally Complainant contends that Respondent did acquire the Disputed Domain Name long after Complainant began using its ‘MISSION MATCH’ trademarks and after Complainant had registered its ‘MISSION MATCH’ trademarks with the USPTO and after Complainant had acquired the domain names <missionmatch.net>, <missionmatch.org>, <missionmatch.me> and <missionmatch.info>.
B. Respondent
Respondent describes itself as a Christian mission matchmaker and to use the Disputed Domain Name in relation to its business of partnering local churches and individuals with mission opportunities. According to Respondent, there is no reason to confuse its activities with the activities of Complainant. Finally, Respondent asserts not to have had any knowledge of Complainant and not to have had the intention to cause any harm to the Complainant.
1. Complainant is the holder of the following trademark registrations:
- U.S. Reg. No. 2,998,240 – MISSION MATCH for charitable fundraising, namely, organizing a charitable fundraising campaign, and providing matching funds, to encourage church members to increase missions giving, in class 36, registered September 20, 2005;
- U.S. Reg. No. 2,998,348 – MISSION MATCH AN EXPENSE for charitable fundraising, namely, organizing a charitable fundraising campaign, and providing matching funds, to encourage church members to increase missions giving, in class 36, registered September 20, 2005.
2. Complainant first used its trademarks in commerce on May 4, 2001 (MISSION MATCH) and February 22, 2005 (MISSION MATCH AN EXPENSE).
3. Respondent registered the domain name <missionmatch.com> on November 13, 2004.
4. Respondent uses the domain name in relation to its activity of partnering local churches and individuals with mission opportunities.
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 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.
Preliminary Issue: Non-UDRP Legal Arguments
Complainant argues various legal points pursuant to United States Trademark law under the Lanham Act as they may apply to both trademark infringement and in the comparison of competing marks. However, the instant dispute is governed by the UDRP and not United States Trademark law or the Lanham Act. While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel considers these arguments not to be applicable to the present proceedings within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the decision is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to the above referenced trademark law.
Complainant contends that it uses its MISSION MATCH mark “to identify a program that provides matching contributions to congregations that propose mission projects named by the congregation.” Complainant submits two documents in its annexes that it purports establish its rights in the MISSION MATCH mark. Neither document is a trademark certificate but rather notice of Acceptance under Section 8, and Notice of Acknowledgement under Section 15 issued by the United States Patent and Trademark Office ("USPTO"). Nonetheless, these documents show that Complainant is the holder of a trademark registration with the USPTO for its MISSION MATCH AN EXPENSE (Reg. No. 2,998,348 registered September 20, 2005) and MISSION MATCH marks (Reg. No. 2,998,240 registered September 20, 2005). Accordingly, Complainant has established rights in its MISSION MATCH AND EXPENSE and MISSION MATCH marks under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant presents arguments under Policy ¶ 4(a)(i) by using United States Trademark law. Although explicit reference to the Policy is missing in the Complaint, the Panel finds that it is sufficiently clear from the Complaint that the <missionmatch.com> domain name is virtually identical to Complainant’s MISSION MATCH mark under Policy ¶ 4(a)(i), where the domain name merely removed the space between the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Furthermore, this is not denied by Respondent who considers the disputed domain name to be similar to the MISSION MATCH mark.
It is a well-established principle that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that it has not authorized Respondent to use its mark in any way, and that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information identifies the domain name registrant as “Global Partnership Ministries,” which the Panel finds is not similar to the disputed domain name. It appears to the Panel that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent argues that people know its services of partnering local churches and individuals with mission opportunities as ‘missionmatch’, but provides no conclusive evidence in that respect. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant does not present a clear argument as to Respondent’s use of the disputed domain name. However, it is clear that Complainant feels that it is in competition with Respondent in working through religion providing mission services. Complainant does contend that Respondent “continues to use the term [missionmatch] both as a domain name and as an email address [missionmatch@aol.com] without permission from Complainant.” Complainant’s screen shot evidence shows the “welcome” page of Respondent’s resolving website that purports to offer services to missionaries and church groups in facilitating mission trips in Alaska. Such use is adjacent to those services offered by Complainant. Although in the same sphere of Complainant’s services, Respondent’s use of the disputed domain name does not seem to be in direct competition with Complainant and relates to the generic meaning of the terms ‘mission match’. Moreover, the use by Respondent appears to be noncommercial at first glance. Hence, according to previous case law Respondent may very well have a legitimate interest in the domain name. See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose). Hence, it appears to the Panel that Respondent has a legitimate interest in the disputed domain name. However, the Panel has no conclusive evidence that Respondent’s use is truly noncommercial and the Panel’s observation in this respect does not create any rights for the Respondent, as the present proceedings must be considered summary proceedings that were never intended to serve as a vehicle for adjudication of traditional trademark disputes. See Family Watchdog LLC v. Schweiss, D2008-0183 (WIPO April 23, 2008).
The Panel finds that Complainant failed to meet the burden of proof of 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).
According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith. See BellSouth Intellectual Prop. Corp. v. Serena, Axel, D2006-0007 (WIPO Feb. 21, 2006) (holding that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
In the present case, the disputed domain name has been registered on 13 November 2004. At that time, Complainant did not have any registered trademark rights in its ‘mission match’ mark and does not show to have any common law trademark rights in its ‘mission match’ mark. Contrary to Complainant’s assertions, Complainant did not acquire the domain names <missionmatch.net>, <missionmatch.org>, <missionmatch.me> or <missionmatch.info> at that time. Also, Complainant does not show to have been active in the region where Respondent was active or located.
Given the above, it is very unlikely that Respondent knew about Complainant at the time of registering the disputed domain name.
The Panel further finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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 respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Hence, Complainant has failed to establish bad faith registration and use by Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <missionmatch.com> domain name REMAINS WITH Respondent.
Flip Petillion, Panelist
Dated: September 27, 2011
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