Halleluyah Scriptures Inc. v. Ted Ramp
Claim Number: FA1411001590107
Complainant is Halleluyah Scriptures Inc. (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Ted Ramp (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <halleluyahscripturesreview.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2014; the National Arbitration Forum received payment on November 14, 2014.
On November 17, 2014, GoDaddy.com, LLC confirmed by email to the National Arbitration Forum that the <halleluyahscripturesreview.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@halleluyahscripturesreview.com. Also on November 19, 2014, 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.
The Forum received brief email correspondence from Respondent on December 7 and December 9, 2014, the latter of which stated, “[T]he owner of the site is Bill Meyer. He will be making contact.” On December 15, 2014, the Forum received an email message from Bill Meyer of Pretoria, South Africa, stating that he is Respondent’s authorized representative, and containing various assertions relating to allegations in the Complaint. A submission designated “Respondent’s Filing” was received from Bill Meyer on December 17, 2014. This latter submission purported to substitute Bill Meyer as Respondent. These submissions were received after the deadline to file a response, and the latter submission was 29 pages in length (exclusive of appendices), far exceeding the 15-page limit imposed by Paragraph 5(a) of the National Arbitration Forum’s Supplemental Rules. For these reasons, the Panel declines to consider the submissions made by and on behalf of Respondent.
On December 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a New Jersey corporation formed in March 2013. Complainant states that it (and presumably its predecessor(s) in interest) have used the HALLELUYAH SCRIPTURES mark since 2007 in connection with the publication and distribution of religious books. Complainant owns a U.S. trademark registration for HALLELUYAH SCRIPTURES (issued in 2014, with a first use date of 2007); Complainant also asserts common-law rights in the mark.
Complainant contends that the disputed domain name <halleluyahscripturesreview.com>, registered in April 2013, is confusingly similar to its mark. Complainant contends further that Respondent has no rights or legitimate interests with respect to the disputed domain name. In support thereof, Complainant states that it has never granted Respondent any license, permission, or other authorization to use its mark in a domain name. Complainant alleges that Respondent is using the domain name “to advertise views and opinions against the work done by Complainant in an attempt to tarnish the goodwill of Complainant’s Mark in revenge for the time spent volunteering at HalleluYah Scriptures and their belief of unfair treatment while doing the same.” Complainant asserts that this use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy, and that it is not entitled to First Amendment protection because Respondent is using the mark to identify the source of a product or service rather than as part of a communicative message.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent registered the domain name while being fully aware of Complainant’s rights in the corresponding mark, and asserts that Respondent registered and is using the domain name to disrupt Complainant’s business by creating consumer confusion in the marketplace as to the source of the website and any goods emanating therefrom, through initial interest confusion.
B. Respondent
As stated above, the Panel declines to consider the submissions made by and on behalf of Respondent.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
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.
The disputed domain name is identical to Complainant’s registered mark HALLELUYAH SCRIPTURES, but for the omission of the space and the addition of the generic term “review” and the “.com” top-level domain. None of these alterations sufficiently distinguishes the domain name from Complainant’s mark for purposes of paragraph 4(a)(1) of the Policy. See, e.g., SelectQuote Insurance Services v. Dunham, FA 1454896 (Nat. Arb. Forum Sept. 6, 2012) (finding <selectquotereview.com> confusingly similar to SELECTQUOTE). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark in its entirety. Complainant alleges that Respondent is using the domain name “to advertise views and opinions against the work done by Complainant in an attempt to tarnish the goodwill of Complainant’s Mark in revenge for the time spent volunteering at HalleluYah Scriptures and their belief of unfair treatment while doing the same.” Respondent’s website (based upon the copy furnished by Complainant) appears to be a wholly noncommercial site captioned “HalleluYah Scriptures Review: The Truth,” and containing information about and criticism of Complainant.
As the WIPO Overview notes, there is a divergence of opinion among UDRP panelists as to whether rights or legitimate interests can arise from the use of a domain name that is identical or confusingly similar to a trademark for a genuine noncommercial free speech website. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.4 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/. In cases involving U.S. parties (such as the present case), the Overview notes that the prevailing view is that legitimate interests do arise in such circumstances, even if the domain name itself is not indicative of criticism. Id.
In Jams/Endispute, LLC v. Flynn, D2012-0293 (WIPO May 14, 2012), the Panel noted this divergence of opinion and held that the domain name at issue (comprised of the complainant’s trademark and a related generic term) was being used for a genuine “gripe site,” giving rise to legitimate interests. Similarly, in SelectQuote Insurance Services v. Dunham, FA 1454896 (Nat. Arb. Forum Sept. 6, 2012), the Panel considered a domain name comprised of a trademark and the word “review,” and found legitimate interests based upon use of the domain name for a noncommercial criticism site, noting that “the addition of the term ‘review’ implies a lack of association with the Complainant as a review is customarily written by someone unassociated with the subject being reviewed.”
The present case involves circumstances similar to those described in Jams/Endispute and SelectQuote Insurance Services. The Panel finds that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
In light of the Panel’s findings as to rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <halleluyahscripturesreview.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: December 18, 2014
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