High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE
Claim Number: FA1706001737678
Complainant is High Adventure Ministries (“Complainant”), represented by Cheryl R. Winn of Waters Law Group, Kentucky, USA. Respondent is JOHN TAYLOE / VOICE OF HOPE (“Respondent”), represented by David Gilat of Gilat, Bareket & Co., Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <voiceofhope.com>, registered with Tucows Domains Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2017; the Forum received payment on June 28, 2017.
On June 29, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <voiceofhope.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2017 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 firstname.lastname@example.org. Also on July 7, 2017, 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.
A timely Response was received and determined to be complete on July 27, 2017.
On August 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions.
1. Complainant, High Adventure Ministries, uses the VOICE OF HOPE mark in connection with its religious ministry services and has so used them for decades.
2. It has used the mark for this purpose since at least as early as December 1979.
3. Complainant registered the VOICE OF HOPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,084,707, filed June 22, 2015 and registered Nov. 22, 2016 with a first use and first use in commerce of December 1, 1979). See Compl., at Attached Ex. A.
4. Respondent registered the <voiceofhope.com> disputed domain name on March 24, 1998. See Compl., at Attahed Ex. B.
5. The disputed domain name is identical to Complainant’s mark as it wholly incorporates the mark and simply adds a generic top-level domain (“gTLD”), which is a functional element of a domain name and usually disregarded for these purposes.
6. Respondent has no rights or legitimate interests in the <voiceofhope.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
7. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
8. Respondent uses the disputed domain name to solicit and accept donations for religious purposes, which is likely to cause confusion among those wishing to donate to Complainant’s organization. See Compl., at Attached Ex. C (Resolving webpage for the disputed domain name). Further, Respondent has improperly registered the domain name to display a series of hyperlinks used to solicit donations from visitors to its site. Id.
9. Finally, Respondent’s use of a disclaimer on the resolving page denouncing any affiliation with High Adventure Ministries or its use of ‘Voice of Hope’ is of no effect and does not eliminate bad faith.
10. Respondent’s conduct is likely to disrupt Complainant’s ministries.
11. Respondent registered the <voiceofhope.com> domain name in bad faith on or about March 24, 1998 to disrupt the efforts of Complainant’s ministry and so uses the domain name. Respondent registered and uses the disputed domain name for the sole purpose of disrupting Complainant’s business.
12. Respondent was employed by High Adventure Ministry (sic) as an Executive Vice-President and Corporate Director, but Complainant fired him on September 24, 1996 for being a disruptive force in the organization. See Compl., at Attached Ex. E (Board Minutes from High Adventure Ministries on firing date). Respondent immediately began his own competing business, and registered the <voiceofhope.com> domain name on March 24, 1998 to compete with Complainant. See Compl., at Attached Ex. B. Further, the resolving webpage for Respondent’s domain name displays a series of hyperlinks that solicit donations from potential donors, a practice which represents an intentional attempt to attract Internet users by creating a likelihood of confusing with Complainant’s mark. See Compl., at Attached Ex. C (Resolving webpage for the disputed domain name). Finally, Respondent had actual knowledge of Complainant’s VOICE OF HOPE mark as Complainant employed Respondent and proudly used the mark throughout Respondent’s employment with Complainant. See Compl., at Attached Ex. E.
Respondent made the following contentions.
1. This proceeding is part of a broader trademark and commercial dispute which should be resolved in the courts.
2. Complainant has instituted court proceedings in the courts of both Tel-Aviv and Kentucky.
3. Both parties have filed for an Israeli trademark and there is a dispute between the parties underway in the Israeli Trademarks Office.
4. Complainant is therefore engaging in forum shopping and the Panel should not assist it in that regard or issue a decision in a matter that is before the courts.
5. This proceeding is therefore not suitable for UDRP proceedings.
6. In 1998, Respondent founded Strategic Communication Group ("SCG"), a California Non-Profit Religious corporation belonging to the evangelical denomination of Christianity.
7. In 2003, Complainant sold its rights to operate the US radio station ‘Voice of Hope-Americas’ to a third party and Respondent subsequently acquired those rights.
8. Thereafter, Respondent commenced to operate several radio stations and for purposes of branding them, he acquired the <voiceofhope.com> domain name on March 24, 2014 from JR Son.
9. In 2011 Respondent acquired rights to broadcast on the ‘Voice of Hope-Americas’ station and re-commenced broadcasting in 2013 under the name ‘Voice of Hope’. Since 2013 Respondent has operated a global radio network using the name ‘Voice of Hope.’
10. The disputed domain name was registered in 1998 by a Chinese Christian Group named ‘Voice of Hope’, it was not associated with Respondent prior to March 24, 2014 and between 2007 and 2014 it was dormant and available for purchase.
11. Complainant was aware from 2016 of the registration of the domain name and its use by Respondent and acknowledged and approved of the disclaimer referred to above being included on Respondent’s website.
12. Respondent did not acquire or use the domain name in bad faith or to disrupt Complainant’s activities.
13. Respondent has invested in the network and operated it in reliance on Complainant’s lack of objection to its use of the name ‘Voice of Hope’ or the registration of the domain name.
14. Complainant does not have trademark rights in the name VOICE OF HOPE.
15. Complainant has abandoned its rights in the mark to use it for radio broadcasting as it sold its Voice of Hope radio station. In any event Complainant never had trademark rights with respect to radio broadcasting as the trademark was registered only for printed material.
16. There is also no evidence of use or secondary meaning to establish other trademark rights in Complainant.
17. Respondent has rights or legitimate interests in the <voiceofhope.com> domain name. Complainant cannot claim exclusive rights in the VOICE OF HOPE mark, as other third-party organizations commonly use the expression. See Resp., at Attached App. 1 (trademark registrations for “Voices of Hope” and “The Voice of Hope”) , Resp., at Attached App. 2 (screenshots of webpages using the mark) and Resp., at Attached App 3).
18. Respondent also has rights or legitimate interests in the domain name as it legitimately acquired rights in Voice of Hope-Americas radio station. Moreover, Complainant knew of this and consented to it.
19. Complainant knew of Respondent acquiring rights to the “Voice of Hope – Americas” radio station, and even encouraged the use of the mark. See Resp., at Attached App. 5 (Email correspondence between Complainant and Respondent).
20. Moreover, prior to notice of the dispute Respondent has made a bona fide offering of services under the name, as it legitimately operates a radio station under the name and uses the <voiceofhope.com> domain name to communicate with its listeners. Finally, Respondent has used the domain name at issue for several years prior to this UDRP action, and several years before Complainant obtained a registered trademark.
21. Respondent did not register and use the <voiceofhope.com> domain
name in bad faith. The disputed domain name was for sale by a third-party
from 2007-2014 until Respondent purchased it, and Complainant was free to purchase the domain name during that time if it so desired. See Resp., at Dec. ¶ 18 (John D. Tayloe Declaration).
22. Respondent did not register the domain name in 1998 as claimed by Complainant, and did not register it to disrupt Complainant’s business or to redress perceived wrongs. Further, there is no likelihood of confusion, as Respondent prominently displays its own marks, contains an introduction telling the story of Respondent’s organization, and does not reference Complainant at all. See Resp., at Attached App. 4 (screenshot of the home page for the disputed domain name).
23. .Additionally, Respondent includes a disclaimer on the website so as to avoid confusion as to any affiliation with Complainant, and Complainant even approved the use of the disclaimer. See Resp., at Attached App. 9 (email from Complainant approving the disclaimer). Complainant also failed to establish that Respondent registered the domain name for the purpose of disrupting its business, as Complainant had abandoned its rights and it only offered into evidence a record showing Respondent was dismissed from employment in 1996 without any evidence of intention to disrupt Complainant’s business.
24. The Complaint should be denied and there should be a finding against Complainant of Reverse Domain Name Hijacking.
Further issues of fact are dealt with under Discussion.
Procedural Issue: Concurrent Court Proceedings
Complainant makes no assertions as to concurrent court proceedings, except noting in paragraph nine of the Complaint titled “OTHER LEGAL PROCEEDINGS” that there are “none.”
Respondent claims that this is not correct as Complainant filed this UDRP action on June 25, 2017, and subsequently filed a lawsuit in the Tel-Aviv District Court on June 28, 2017. Further, Respondent claims Complainant filed a second lawsuit with the United States District Court for the Western District of Kentucky on July 7, 2017, although Respondent has yet to be served with a copy of the Complaint. Both court proceedings specifically address the issue of rights to the VOICE OF HOPE trademark, the one at issue in this UDRP proceeding.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”).
Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” ) Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
In the present case, the Panel acknowledges the strength and persuasive force of the submissions of Respondent on this issue which have been to the effect that the Panel should not issue a decision in this matter while the dispute is before the courts.
The Panel has given careful consideration to the issue and has decided that it can confine itself to the UDRP issues and deal with them without transgressing on other areas that are more the province of the courts in the pending proceedings. The Panel will therefore proceed with the case in the usual manner.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant submits that it has rights to the VOICE OF HOPE mark based on its trademark registration with the USPTO. See Compl., at Attached Ex. A (Reg. No. 5,084,707, filed on June 22, 2015, registered Nov. 22, 2016).
Respondent asserts rights to the VOICE OF HOPE mark based on its filing for a registration of the trademark with the Israel Patent Office on June 21, 2016, one year prior to Complainant’s filing in Israel for registration of the same mark, which occurred on May 5, 2017. See Resp. Dec., ¶ 20 (John D. Tayloe Declaration).
In sum, Complainant and Respondent both assert rights to the VOICE OF HOPE mark arising from different registrations. It is open to the Panel to determine that the dispute falls outside the scope of the Policy, and therefore choose to dismiss the Complaint. For instance in Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The UDRP, the arbitration process for the resolution of disputes concerning domain names, was adopted by Respondent when he acquired the <voiceofhope.com> domain name. Agreeing to that process is of course compulsory in the acquisition of a domain name. The Policy that governs the process establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes and other purely commercial disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (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); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). It is therefore open to the Panel to dismiss the instant Complaint.
On the other hand, as is also done by panelists under this system, the Panel may determine its own jurisdiction and choose to consider the Complaint and issue an order. Domain name disputes are a type of arbitration; arbitration tribunals determine whether a particular case comes within their jurisdiction. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
The essence of this case is also “the alleged misuse of the domain name in dispute”, as Complainant maintains that Respondent had no right to register the domain name and is now using it to trade off the good reputation of the religious broadcasting service originally run under the name Voice of Hope and to solicit donations for its current broadcasting service under the same name.
The Panel acknowledges the strength and persuasive force of the submissions of Respondent on this issue.
However, the Panel is confident that it can deal with these issues within the framework of the UDRP.
The Panel has given careful consideration to the issue and has decided that it can confine itself to the UDRP issues and deal with them without transgressing on other areas that are more the province of the courts in the pending proceedings in Israel and the US. The Panel will therefore proceed with the case in the usual manner.
However, if there are other issues that the parties want litigated, they are free to bring court proceedings to pursue those issues.
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 Panel will now deal with those issues in order.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims it registered the VOICE OF HOPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,084,707, filed June 22, 2015, registered Nov. 22, 2016). See Compl., at Attached Ex. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the VOICE OF HOPE mark.
The Panel is in some doubt whether Complainant is also submitting that it has common law or unregistered trademark rights in VOICE OF HOPE. On the one hand, Complainant does not specifically so argue. On the other hand, it has argued that it has used the VOICE OF HOPE mark “in conjunction with its ministry services for decades” and it may be that this is an argument that it has not only used the name but that it has used it as a trademark. Certainly the registration certificate for the trademark states that the mark was first used on December 1, 1979 and that it was first used in commerce on December 1, 1979 . Giving Complainant the benefit of the doubt the Panel will consider whether it has made out a case for a common law trademark and, if so, from what date. That fact is vital in this case as the domain name was registered before the registered trademark, but if Complainant had a common law trademark before the domain name was registered Complainant will be on stronger ground when it comes to argue that the domain name was registered in bad faith.
The problem Complainant has in establishing common law trademark rights, as Respondent argues, is that the expression Voice of Hope is very generic and covers a multitude of possible meanings. That being so, Complainant has to show a secondary meaning of the expression as well as its primary meaning and a secondary meaning that links the expression with Complainant. See Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum April 4, 2015) (finding that Complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark.) Moreover, no evidence has been presented to show that the public or a relevant section of it has come to associate this secondary meaning of the expression with Complainant either solely or substantially. In particular, it is not made clear whether Complainant maintains that it has a common law trademark to cover its services as a religious radio broadcaster or whether, as its registered trademark declares, that it is as a publisher of the printed word. In addition, the evidence is that there are at least several other entities that use the expression Voice of Hope or similar, including for religious purposes. Taking all of the evidence together, the Panel is unable to find that Complainant has shown a secondary meaning in the expression and one that links it with Complainant. Complainant is thus unable to show that it has a common law trademark for VOICE OF HOPE.
Complainant is thus obliged to rely solely on its registered trademark.
Respondent also argues that the registered trademark has been abandoned by Complainant but the Panel is unable on the evidence to so find.
The second issue that arises is wheher the <voiceofhope.com> domain name is identical or confusingly similar to Complainant’s VOICE OF HOPE mark. Complainant argues that the domain name is identical to the mark as it wholly incorporates the mark and simply adds a gTLD, which is a functional element of a domain name and usually disregarded for these purposes. The Panel agrees with that submission. The Panel therefore finds that the <voiceofhope.com> domain name is identical to the VOICE OF HOPE mark under Policy ¶4(a)(i).
It will be noted here that the trademark was registered on November. 22, 2016, which was later than the date when the domain name was registered by Respondent which was on March 24, 2014. Indeed, the domain name was also registered before the trademark application was filed, which was on June 22, 2015. Accordingly, when Respondent registered the domain name the field was open, there was no trademark that Complainant could rely on and no trademark for which an application had even been filed. This will cause problems for Complainant when the issue of bad faith registration is considered. That is so because, although UDRP decisions are not precedents, they are useful guides to how panelists will approach difficult issues like this, and the now almost universal approach of panelists, with which the Panel as presently constituted agrees, is that bad faith registration cannot be shown unless there was on foot when the domain name was registered, a trademark to which the bad faith could have been directed. There are a few exceptions to this approach, but apart from those exceptions, the approach of panelists just explained has led to many a failed Complaint, as the complainant will then have failed to prove each of the three elements that the Policy decrees must be shown.
For present purposes, however, the question is whether Complainant “has” a trademark, not whether it had one at any particular time and in the present case that question is answered in the affirmative.
As the Panel has found that Complainant has a trademark and that the domain name is identical to the trademark, Complainant has made out the first of the three elements that it must establish.
This element will determine if Respondent had a right to register the domain name or whether it has some interest in the domain name that could be described as legitimate.
How this is determined frequently depends on who has the onus of proof, Complainant or Respondent. Because Complainant has to prove what is, in effect a negative, it is now well established 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 (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 (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.”).
In the present case, the Panel is unable to find that Complainant has made out a prima facie case. Moreover, if there were a prima facie case, the totality of the evidence has clearly rebutted it.
Complainant’s case is that Respondent does not have a right or legitimate interest in the domain name for “at least” two reasons. The first is that Respondent is not commonly known as VOICE OF HOPE. This requirement in the Policy is included to give a right to anyone to register a domain name that reflects its own name. Thus, in one case the fortunate Mr. A R Marni was able to show that his surname was Marni, the initials of his given names were A and R, and that he was known as Armani, making up the valuable domain name <armani.com>: G.A.Modefine S.A. v. A.R.Mani, WIPO Case D20012-0537 In the present case, it is of course possible that Mr. Tayloe has become so associated with the Voice of Hope that he is commonly known by that name. However, it seems unlikely and, in any event, there is no evidence from anyone that Mr. Tayloe is so known. Complainant is therefore right on this submission and Respondent did not have a right to register the domain name on that ground.
Complainant’s second ground is that Respondent is not using the domain name in connection with a bona fide offering of goods or services or as a fair use. Respondent says he is doing exactly that, because he is using or allowing Srategic Communications Group to use the domain name for the legitimate purpose of lawfully operating several radio stations to disseminate a religious message. But Complainant says in reply that Respondent’s conduct is not bona fide because he is using the domain in a “closely related and confusingly similar way” to the trademark and he is doing so by portraying a connection with the Voice of Hope radio ministries founded by the late George Otis.
That is an interesting argument but not one that the panel accepts. In the first place, it must be doubted that Complainant’s trademark covers the field as Complainant assumes. The trademark is registered with respect to a series of goods and services based on printed materials. It does not refer to radio broadcasts at all. In contrast, the use of the domain name is essentially for radio broadcasting and not for printed material. There is therefore some doubt in the Panel’s mind whether Respondent’s conduct is in breach of the trademark at all.
Secondly, on the limited evidence to which the Panel has access, it is unable to say with any degree of conviction that Respondent is doing what is alleged against him, namely trading on the name of the former Voice of Hope radio and, at least by implication, “giving the impression ( he is) the complainant “ to solicit donations. He certainly invokes the name of the late Mr. Otis (and is married to Mr. Otis’ daughter) and his former work, which is referred to in detail on the website to which the domain name resolves, but he also makes it plain enough to any potential donor that the current service is new, that it has ‘reestablished’ the former broadcasts and that whereas the former project broadcasted from or to South Lebanon, the current service broadcasts to Syria, Lebanon, Jordan, Cyprus and Israel from studios on the Sea of Galilee in Israel as well as elsewhere in the world. The website also makes the point that the original service “went off the air in 2000”.The Panel takes the thrust of these statements to be that the former service was discontinued and the present service is, after being off the air for 17 years, new. The Panel’s view on this aspect of the evidence is that potential donors would probably conclude that Respondent’s project was building on Mr. Otis’ work but that after an interval of 17 years, here was something that was mainly if not solely new. They would be reinforced in that view by the disclaimer on the home page of the website, ‘*Strategic Communications Group is not affiliated with High Adventure Ministries or its use of "Voice of Hope".” The disclaimer is not in bold print but it is certainly visible and makes its basic point clear enough.
The Respondent is certainly not portraying a current connection with Complainant; he is saying exactly the opposite. He is portraying a past connection with the founder of Voice of Hope which seems to be accurate and is building on it to promote his current work and to attract financial support. Although some donors may have thought there was a current connection between Mr. Tayloe and the current High Adventures Ministries, the Panel is not persuaded that this is probable or that Mr. Tayloe intended to give that impression.
The Panel concludes on the evidence that Respondent’s activities are not “closely related or confusingly similar” to or in breach of the terms of the trademark.
Respondent also argues persuasively that it has rights or legitimate interests in the domain name as it legitimately acquired rights in Voice of Hope-Americas radio station,that Complainant knew of this and consented to it. Respondent says Complainant knew of Respondent acquiring rights to the “Voice of Hope – Americas” radio station, and even encouraged the use of the mark. Respondent has presented a detailed case on this issue including correspondence, the Panel finds that this argument has been made out on the evidence. The Panel adds that it was very much to Complainant’s credit that it made those concessions. See Resp., at Attached App. 5 (Email correspondence between Complainant and Respondent).
Accordingly, the Panel finds that Respondent has a right or legitimate interest in the domain name as it reflects the name of Respondent’s undertaking and that Complainant has consented to that use.
There is a further basis to Respondent’s right or legitimate interest in the domain name and one that is more substantial. Respondent acquired the <voiceofhope.com> domain name on March 24, 2014 and yet Complainant’s trademark was not applied for until June 22, 2015 and not registered until November 22, 2016. When the domain name was registered there was therefore nothing standing in Respondent’s way to register a domain name, especially one that is clearly generic. A domain name holder can be said to have rights and legitimate interests in a disputed domain name when it registered the domain name prior to the complainant obtaining the trademark that it relies on, provided it uses the domain name legitimately. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”). As noted above, Complainant obtained its trademark registration on November 22, 2016, and Respondent purchased the disputed domain name on March 24, 2014. See Compl., at Attached Ex. A (VOICE OF HOPE trademark registration); see also Resp., at Attached App. 3 (email correspondence of Respondent purchasing the domain name). The Panel therefore finds on this ground that Respondent did obtain rights in the <voiceofhope.com> domain name prior to Complainant registering the VOICE OF HOPE trademark.
For these reasons, the Panel finds that Respondent has a right or legitimate interest in the domain name.
Complainant has thus not made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was not registered or used in bad faith. That is so for the following reasons.
First, the Panel has already held that Respondent has a right or a legitimate interest in the domain name and that it has used the domain name in a legitimate manner. That being so, it follows that Respondent did not register or use the domain name in bad faith and the Panel finds accordingly. 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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”)
In particular, Complainant’s case is based, as it must be for the purposes of the UDRP, on the existence of the trademark, which was not filed for until June 22, 2015 and not registered until November 22, 2016. By that time, Respondent had acquired the domain name on March 24, 2014, which is taken to be its date of registration and has since used it legitimately. Respondent therefore had every right to register the domain name when he did and could not have been motivated by bad faith towards the trademark as it did not exist at the time of registration of the domain name.
That requires the Panel to say that first that Complainant’s case is not, with respect, well founded. It alleges not only that the domain name was registered on March 24, 1998 but that Respondent registered it on that date. That is not correct. A transfer to a party is regarded as a new registration, which in reality it is. Respondent therefore registered the domain name on March 24, 2014 when it acquired the domain name and that is when it registered the domain name.
Complainant then alleges that Respondent was “well aware of Complainant and its registered trademarks long before” 1998. Obviously Respondent was aware of Complainant before 1998 as he was employed by it. But he could not have been aware of Complainant’s registered trademarks before 1998 or at any time before he registered the domain name as there was only one trademark ,not “trademarks”, and the single trademark was not registered until November 22, 2016, which was after the domain name was registered.
Complainant also alleges that Respondent registered the domain name “in order to redress perceived wrongs and to disrupt Complainant’s ministries.” The Panel finds that those allegations are not correct, there is no evidence to support them and it seems highly unlikely, in view of the passage of time among other reasons, that Respondent was motivated by any such objectives.
Nor is the Panel of the view, so far as the evidence goes, that any use of the domain name by Respondent can fairly be described as in bad faith. Accordingly, Complainant has not been able to show that the domain name was used in bad faith.
Complainant has thus not made out the third of the three elements that it must establish.
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking. The making of such a finding is discretionary and in the exercise of its discretion, the Panel declines to make such a finding. The reason is substantially that although Complainant has lost, the Panel is not persuaded that it was seeking to harass Respondent and it may well be that Complainant felt it had good reasons for bringing the claim.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <voiceofhope.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC,
Dated: August 9, 2017
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