Love Your Neighbor v. Love Thy Neighbor Organization
Claim Number: FA0010000095772
The Complainant is Love Your Neighbor, Detroit, MI, USA ("Complainant"). The Respondent is Love Thy Neighbor Organization, Fort Lauderdale, FL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "lovethyneighbor.org", registered with Network Solutions.
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 the panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 6, 2000; The Forum received a hard copy of the Complaint on October 6, 2000.
On October 12, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "lovethyneighbor.org" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").
On October 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
On November 3, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist. The Panelist has considered additional materials submitted by the parties.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
1. Complainant registered the mark "Love Your Neighbor" with the United States Patent and Trademark Office on October 20, 1998, and registered the mark "Love Thy Neighbor" with the United States Patent and Trademark Office on April 18, 2000. The first registration is prior to Respondent’s registration of the confusingly similar domain name in issue on November 6, 1998, and the utilization of the domain name by Respondent infringes on Complainant’s mark.
2. By virtue of Complainant’s earlier registration of its mark, Respondent has no legitimate interest or rights in the domain name here in issue.
3. Respondent was informed of its infringement and was informed that it must cease and desist the utilization of the domain name. Having failed so to act, Respondent is chargeable with bad faith.
1. The domain name in issue is generic and descriptive. It is derived from the Bible and, thus, is in the public domain.
2. The domain name is not being used for commercial purposes, and is only being used to collect alms for the needy. This is a noncommercial and fair use within the Policy guidelines.
3. Again, because the domain name in issue is not being used for commercial purposes, it was not registered in bad faith, nor is it being used in bad faith, as required by the Policy for transfer.
1. Complainant registered its mark "Love Your Neighbor" with the United States Patent and Trademark Office on October 20, 1998. It also registered the mark "Love Thy Neighbor" with the United States Patent and Trademark Office on April 18, 2000.
2. Respondent registered the domain name in issue with Network Solutions on November 6, 1998,a later date, but prior to any attempted domain registration by Complainant.
3. The domain name in issue is the Golden Rule derived from both the Old and New Testaments, and, accordingly, properly is subject to universal use.
4. Respondent is an accredited 26 U.S.C. §501(c)(3) corporation, and it uses the domain name to collect charitable contributions for donations to people in need. This is a noncommercial purpose by a non-profit corporation.
Preliminarily, the incongruity of a disputation over the use of the vital biblical injunction is to be observed.
Secondly, it must be recognized that this arbitration is not the appropriate forum for the resolution of a trademark infringement suit. The Panelist here is required to apply the Policy in making his determination. The assignment of domain names by Network Solutions does not necessarily correspond with the established principles of trademark law. (See, Delta and Matsurra, Law of the Internet (Updated, 2000) §5.04(B), p. 5-56.)
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant first charges that the domain name in issue is identical to its mark. It is to be remembered that the domain name in issue uses ".org." A domain name combination must include a top-level domain, which can be "com.," "net.," "org.," "gov.," or "edu.," among others. The combination also must include a second-level domain, which can be any word not already reserved in combination with the top-level domain. (See, Avery Dennison Corporation v. Jerry Sumpton (9th Cir. 1999) 189 F.3d 868, 871.)
The top-level domain "org." customarily is in usage by non-profit organizations. This top-level domain name, accordingly, properly was registered by Respondent.
In 4 McCarthy (4th ed. 1996) Trademarks and Unfair Competition, §25:72.1, it is said:
The 1997 IAHC (International Ad Hoc Committee) recommended the adoption worldwide of seven new generic top-level domains (gTLDS) in addition to existing ones:
This new agreement is called the Generic Top Level Domain Memorandum of Understanding (gTLD-MoU) and was published on February 4, 1997. While implementation of the seen new to-level domains was originally scheduled for 1998, transfer of Internet authority to ICANN in 1999 put that plan on hold. One reason for the opening of new top-level domains was to permit more domain names to be available to companies with the same name. Under trademark law, several concurrent users can legally coexist in different territories (parts of the U.S. or in separate nations) or in different product and service markets. But there can only be one domain name. Thus, although there are several concurrent users of marks like ACME, BEST or NATIONAL, there can only be one ‘acme.com,’ ‘best.com,’ and ‘national.com,’ the new gTLDs would permit, for example, four different companies using the name or mark ACME to have ‘acme.firm’ (for a furniture company); ‘acme.web’ (for an Internet service provider); ‘acme.rec’ (for an owner of a soccer team); and ‘acme.info; (for a trade journal). (Emphasis supplied.)
It is recognized that it has been held that the ".com" top-level domain indicator normally is of no importance in distinguishing the marks. (See, Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558.)
Nevertheless, by a parity of reason with Professor McCarthy’s treatise, it follows that the domain name "lovethyneighbor.org" is not identical to Complainant’s mark. (See, Avery Dennison Corporation v. Jerry Sumpton, supra, at 880-881.)
It may be held, however, that the domain name in issue, although not identical, clearly is confusingly similar to Complainant’s mark.
It may be assumed that the first required element of the Policy has been met by Complainant.
Rights or Legitimate Interests
Paragraph 4(c)(iii) of the Policy informs a Respondent that, without limitation, he may demonstrate that he has rights to and a legitimate interest in a domain name for purposes of Paragraph 4(a)(ii), as follows:
. . . you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panelist has found that Respondent is an accredited §501(c)(3) corporation and that it is collecting alms for the poor. It is, accordingly, making a legitimate noncommercial use of the domain name without intent for commercial gain. Complainant has not presented any credible evidence to the contrary.
Thus, Respondent does have a legitimate interest and rights in the domain name pursuant to the Policy above.
Registration and Use in Bad Faith
The Panelist has considered the circumstances, which, without limitation, for purposes of Paragraph 4(a)(iii) of the Policy, would be evidence of the registration and use of the domain name in bad faith as follows:
(i) Circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
There is no evidence supporting this factor, and it is denied by Respondent.
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.
There is no evidence supporting this factor. In any event, there is no evidence of a pattern of such conduct.
(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor.
There is no evidence supporting this factor.
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
There is no evidence supporting this factor.
Respondent expressly denies that it is using the domain name in issue for "commercial gain." It sells no goods or services, but collects and distributes donations for charity.
Thus, the Panelist is required to find that Respondent has not registered or used the domain name in bad faith. In the last analysis, accordingly, it is "first come, first served."
The claim of Complainant Love Your Neighbor against Respondent Love Thy Neighbor Organization seeking to have the domain name "lovethyneighbor.org" transferred to Complainant, be and the same, is hereby denied.
Judge Irving H. Perluss (Retired)
Dated: November 15, 2000
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