Biblica US, Inc. v. CSRUS Enterprises / Gerente de Dominia
Claim Number: FA1111001413984
Complainant is Biblica US, Inc. (“Complainant”), represented by Erin A. Kelly of Holme Roberts and Owen LLP, Colorado, USA. Respondent is CSRUS Enterprises / Gerente de Dominia (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <internationalbiblesociety.com>, registered with Power Brand Center Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 8, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <internationalbiblesociety.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@internationalbiblesociety.com. Also on November 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <internationalbiblesociety.com> domain name is identical to Complainant’s INTERNATIONAL BIBLE SOCIETY mark.
2. Respondent does not have any rights or legitimate interests in the <internationalbiblesociety.com> domain name.
3. Respondent registered and used the <internationalbiblesociety.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Biblica US, Inc., is an organization that translates, produces, and distributes Bibles, Scripture materials, and other Christian resources to more than fifty-five countries worldwide. Complainant has used the INTERNATIONAL BIBLE SOCIETY mark in commerce since 1978 and has a trademark registration with the United States Patent and Trademark Office ("USPTO") for its mark (Reg. No. 2,869,528 filed June 20, 2003; registered August 3, 2004).
Respondent, CSRUS Enterprises / Gerente de Dominia, registered the <internationalbiblesociety.com> domain name on December 3, 2000. Respondent’s domain name resolves to a pay-per-click link bank with both competing and unrelated links.
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 rights in the INTERNATIONAL BIBLE SOCIETY mark under Policy ¶ 4(a)(i), dating back to the filing date of June 20, 2003, based on its trademark registration with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also claims rights in its mark dating back to October 4, 1978, which is the “first use in commerce” date on its USPTO trademark registration certificate. Complainant provides several pieces of evidence to show that in one form or another it has been operating its business since around 1809. Complainant contends that it became known by the INTERNATIONAL BIBLE SOCIETY mark in 1978 and has used that mark ever since in advertising its Bible services and goods. Specifically, Complainant asserts that in the year 2000 alone its advertising and marketing expenditures were more that $1 million while its sales revenues that year were “roughly $14,022,00.” The Panel finds that Complainant’s uncontested claims to common law rights in the INTERNATIONAL BIBLE SOCIETY mark are sufficient under Policy ¶ 4(a)(i) and that Complainant has rights in its mark dating back to 1978. See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Respondent’s <internationalbiblesociety.com> domain name merely omits the spaces between the terms of Complainant’s 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks). The Panel finds that the disputed domain is identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i),
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <internationalbiblesociety.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once Complainant has produced a prima facie case, the burden shifts to Respondent to show they do have a right or legitimate interest in the disputed domain name. 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has established a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the evidence on record to determine whether Respondent has rights and legitimate interests in the <internationalbiblesociety.com> domain name under Policy ¶ 4(c).
Complainant argues that Respondent neither is commonly known by the <internationalbiblesociety.com> domain name nor has been given permission to use Complainant’s mark. The WHOIS information identifies “CSRUS Enterprises / Gerente de Dominia” as the registrant of the <internationalbiblesociety.com> domain name, and there is no evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that “Respondent is using the disputed domain name to direct Internet users to Respondent’s website that features links to third-party websites, some of which offer goods and services in direct competition with Complainant’s publishing services and printed publications.” Complainant argues that Respondent receives referral or other fees in association with these links. The Panel notes that such links are found under headings such as “Old Testament,” “New International Version,” “Discount Bibles,” all under a large heading entitled “International Bible Society.” The Panel finds that such use of an identical domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website contains many third-party links to companies that are in competition with Complainant in the Bible translation and publishing industries. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith to disrupt Complainant’s business under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Further, Respondent is using the disputed domain name to create the impression that Complainant sponsors, or is affiliated with, the resolving website. This no doubt results in Respondent’s commercial gain through its receipt of click-through or referral fees. The Panel therefore finds that Respondent also registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <internationalbiblesociety.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 15, 2011
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