General Conference Corporation of Seventh-day Adventists v. GREG EVERETT / PHILANTHROPIST.COM
Claim Number: FA1612001706357
Complainant is General Conference Corporation of Seventh-day Adventists (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is GREG EVERETT / PHILANTHROPIST.COM (“Respondent”), represented by Eve J. Brown of Bricolage Law, LLC, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adventist.com>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
The Honourable Neil Anthony Brown QC, Jeffrey Samuels and Debrett G. Lyons (chair) as panelists.
Complainant submitted a Complaint to the Forum electronically on December 7, 2016; the Forum received payment on December 7, 2016.
On December 8, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <adventist.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2016 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@adventist.com. Also on December 9, 2016, 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 December 29, 2016.
On December 13, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed as The Honourable Neil Anthony Brown QC, Jeffrey Samuels and Debrett G. Lyons (chair) as panelists (the "Panel").
Having reviewed the communications records, the Administrative 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.
A. Complainant
Complainant asserts registered trademark rights in ADVENTIST and alleges that the disputed domain name is legally identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent concedes the identity of the trademark and the disputed domain name but challenges the validity of the registrations founding the claim to trademark rights.
Respondent claims to have a legitimate interest in the disputed domain name because “Adventist” is a dictionary word with meanings not exclusively linked to Complainant.
Respondent denies having registered the disputed domain name in bad faith for the same reason.
Respondent submits that the Complaint fails and that there should be a finding of reverse domain name hijacking made against Complainant.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a not-for-profit organization which holds title to the assets of the Seventh-Day Adventist Church (“SDAC”), a religious organization;
2. those assets include the trademark ADVENTIST (the “trademark”) which has been used in connection with religious services, missionary services, educational services, and related matters since 1863;
3. the trademark is the subject, inter alia, of United States Patent & Trademark Office (“USPTO”) Regn. No. 1,176,153, registered on November 2, 1981;
4. the SDAC promotes itself via a website at www.adventist.org;
5. Respondent is a domain name reseller;
6. the domain name was created on September 25, 1998 by a third party and acquired by Respondent at auction on June 28, 2016;
7. the domain name is for sale on a website controlled by Respondent at www.philanthropist.com for USD1,200,000; and
8. there is no commercial agreement between the parties.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. A trademark registered with a national authority is evidence of trademark rights.[i] Annexed to the Complaint is a copy of the USPTO registration for the trademark cited earlier and so the Panel finds that Complainant has trademark rights.
Respondent states its intention to challenge the validity of that (and another) registration before the United States Trademark Trial and Appeal Board (“TTAB”) in keeping with its argument that the word “Adventist” is generic.
It is not the mandate of this Panel to investigate matters already determined by the USPTO and absent evidence of a decision of the TTAB that the trademark be removed from the Principal Register, the Panel finds that trademark rights have been established for the purposes of paragraph 4(a)(i) of the Policy.[ii]
To the extent that the descriptive or generic characteristics of a trademark might show a respondent to have acted in good faith or to have a legitimate interest in a disputed domain name, UDRP panelists are agreed that these are matters to be left for consideration under the other elements of the Policy.[iii]
The Panel is satisfied that the disputed domain name is legally identical to Complainant’s trademark since the domain name takes the trademark and adds the non-distinctive gTLD, “.com” [iv]. Respondent concedes the identity of the disputed domain name and the trademark.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant is required to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.
The publicly available WHOIS information identifies Respondent as “GREG EVERETT / PHILANTHROPIST.COM” and carries no suggestion that Respondent might commonly be known by the disputed domain name. Respondent does not advance any such argument.
There is no evidence that Respondent has relevant trademark rights and there is no evidence that Complainant has authorized Respondent to use the trademark. The domain name is legally identical to Complainant’s trademark and is for sale.[vi]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The next question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent states that it is a generic domain name reseller, and submits that the sale of domain names comprising generic terms is a bona fide offering of goods or services. Respondent claims to have registered over 10,000 such domain names, 8,000 of which are currently for sale at www.philanthropist.com.
Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy.[vii]
It might be questioned how strictly Respondent does just that. The substance of the Response is found in an Affidavit made by Greg Everett (“the Everett Affidavit”) who describes himself as the founder and owner of the online marketplace at www.philanthropist.com. Exhibit A to that Everett Affidavit contains a handful of domain names said to be representative of the 8,000 names for sale there. Of them, the Panel observes in passing <thenationalnewspaper.com> and <maryclaire.com>.[viii] More interestingly for present purposes the Panel notes <presbyterian.com>.
The Everett Affidavit is a wordy document entailing the single premise that “advent” is an ordinary dictionary word and that “Adventist” has a broader meaning than solely that of an adherent to the SDAC.
The Response states:
“The word cannot be inherently distinctive, as it is composed of a generic word and is descriptive of one who believes in an advent, or the forthcoming arrival of someone or something of consequence.
…
Nothing in the Complaint proves that consumers identify the word with the Complainant’s specific church, rather than as a term merely describing a general belief system or outlook”.
The Panel assumes that this is what Respondent understands when it claims to register only generic terms.
The principal issue for the Panel is not the legitimacy of Respondent’s business model, but whether Respondent has a legitimate interest in the disputed domain name. Put another way, the legitimacy (or otherwise) of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.
The Everett Affidavit is essentially argumentative. It does not exhibit evidence in the way required by a Court. At best it collates unauthenticated abstracts from other sources and contains links which might enable the Panel to follow its own research. From that perspective it is a largely inadequate document in so far as it aims to prove use of the word “Adventist” in ways having no unique association with Complainant.
Ignoring that shortcoming, the Panel notes that many of the dictionary definitions of the word "Adventist" relied upon by Respondent give the SDAC as the second definition. Many of the website references said to show general use of the word in fact refer to the SDAC or to members of the SDAC.
So, for example, referring to the Everett Affidavit, the Merriam – Webster Dictionary defines “Adventism” as “(1) the doctrine that the second coming of Christ and the end of the world are near at hand, but (2), the principles and practices of Seventh-Day Adventists.” The Collins English Dictionary - Complete & Unabridged 2012 Digital Edition defines “Adventist” as “a member of any of the Christian groups, such as the Seventh-Day Adventists that hold that the Second Coming of Christ is imminent.” Further, Dictionary.com defines “Adventist” as “(1) … a member of any of certain Christian denominations that maintain that the Second Advent of Christ is imminent, (2) of or relating to Adventists.” Panel notes that this is then followed by a so-called “contemporary example”, being: “The daughter of 7th Day Adventist missionaries, Heidi Nelson was raised with the expectation that she would do well.”
The Encyclopedia Brittanica lists an “Adventist” as:
“…[a] member of any one of a group of Protestant Christian churches that trace their origin to the United States in the mid-19th century and that are distinguished by their emphasis on the belief that the personal, visible return of Christ in glory (i.e., the Second Coming) is close at hand, a belief shared by many Christians. While most Adventist groups remain relatively small, the Seventh-day Adventist Church has become a significant global body, with congregations in more than 200 countries and a membership of more than 14 million.”
In terms of the Policy, these definitions are not without ambiguity. A legitimate interest might exist when a word is “generic” in the sense that it relates to, or is characteristic of a whole group or class. However, the position is quite different if the word principally connotes to the public a single enterprise.
The Everett Affidavit cites a legal article authored by Jenna DiJohn entitled “Examining the Outer-Limits of Trademark Law in the Religious Context and Potential Implicit Bias for Non-Secular Litigants: Eller v. Intellectual
Reserve, Inc.”[ix] in which she refers to the 2010 Sixth Circuit Court in GENERAL CONFERENCE CORPORATION OF SEVENTH-DAY ADVENTISTS and GENERAL CONFERENCE OF SEVENTH-DAY ADVENTISTS,
an Unincorporated Association v. WALTER MCGILL, d/b/a CREATION 7TH DAY
ADVENTIST CHURCH et al., where it was held that “if the consumer sees the mark and identifies it with the religious beliefs, the mark is generic; on the other hand, if the mark is associated with the religious organization itself, the mark has not become generic”.
Taking the submissions of both parties as the Panel finds them, on balance the "evidence" is that the word has a broader meaning than just the SDAC. If the argument was that the word connoted the SDAC above all else, then the Complaint does not go far enough to show that.
The Panel finds that Respondent has shown a legitimate interest in the domain name since its conduct falls under the paragraph 4(c)(i) of the Policy. With that finding the complaint fails and Panel need do no more. [x] In this case and for the sake of absolute clarity, Panel has chosen to go on and make the paragraph 4(a)(iii) analysis.
Complainant must prove, on the balance of probabilities, both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance can be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. The four specified circumstances are:
‘(i) circumstances indicating that the 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that there is no evidence whatsoever that Respondent was primarily actuated by a motive described in any of subparagraphs (ii) to (iv) above. However, Panel has paid attention to paragraph 4(b)(i) since it is a touchstone of whether or not Respondent registered the domain name in bad faith. In that regard (a) Respondent admits that its business is such that it acquired the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration, and (b) Respondent would do so for valuable consideration in excess of the out-of-pocket acquisition costs.
It therefore remains to consider whether Respondent had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant”. That intention must, on the evidence, be Respondent’s primary motivation in order for it to be caught by paragraph 4(b)(i).
In the alternative, if Complainant sought to prove independently from the four scenarios set out above that Respondent registered the domain name in bad faith, then it must do so on the balance of probabilities. Arguably, that might involve a lower evidentiary threshold than establishment of Respondent’s primary motive under paragraph 4(b)(i).
In redacted form with citations removed, Complainant’s submissions are that:
“… the record is clear that Respondent acquired the <adventist.com> domain name with the sole intention of selling the domain name for an exorbitant price. The listing currently displayed on Respondent’s web site offers to sell the domain name for $1.2 million dollars. While this is an offer to the general public rather than a direct offer to Complainant, it is still sufficient to demonstrate Respondent’s bad faith.
Furthermore, it is apparent that the reason Respondent is demanding such an exorbitant price for the <adventist.com> domain name is due entirely to the association of this domain name with Complainant’s ADVENTIST mark. The listing refers to <adventist.com> as a “hand-picked premium domain name” and states that “business brandability is very high for adventist.com”. Obviously, this “business brandability” is based upon the extremely high level of consumer recognition of the mark, due to the efforts of Complainant and its predecessors over the last 150 years to promote the mark and to associate the mark with Complainant’s goods and services.
Moreover, as Complainant is the legitimate owner of rights in the ADVENTIST mark, it is likely that Respondent’s goal in acquiring the domain name was to sell the domain name to Complainant at an excessive price.”
Respondent states that:
“…the impressive number and variety of individuals, entities, organizations, interest groups, and for-profit companies operating under names that contain the word ADVENTIST indicate that the domain name … could reasonably be expected to be attractive to any number of potential purchasers, all of whom would have justifiable reasons to own it. For example, anyone who practices Adventism, disagrees with its teachings, has left the religion, wants to educate the public about it, wants to connect with others affiliated with it, or wants to explore its history might want to – [use the domain name].”
The Panel might wonder whether the classes of potential purchases exemplified above would have an interest in the domain name at the listed price. Put another way, although the offer is to the public at large it could be asked whether Complainant is the most viable purchaser.
Nonetheless, Respondent states at www.philanthropist.com that it sells domain names at prices from USD250 to USD2.5 million. The Panel considers that whilst the price placed on the domain name might be a marker of a respondent’s intentions, it can only be one factor, for otherwise the measure of bad faith would simply rise and fall with the asking price for a domain name.[xi]
The proper starting point must be the observation made many times by UDRP panelists that once a respondent is shown to have a legitimate interest in a domain name it follows that a complainant will struggle to show bad faith, especially bad faith registration.
Complainant’s submission is that Respondent had constructive knowledge of the USPTO registration of the trademark (and, thus, of Complainant’s trademark rights). Constructive knowledge is generally insufficient to show bad faith. In any event, even if it were assumed that Respondent had actual knowledge of Complainant and its trademark at the time of registration of the domain name, that knowledge would not impute bad faith to Respondent unless registration was made with the intention of targeting Complainant.
The Everett Affidavit states that Respondent did not target Complainant and that its genuine belief at all times was that “Adventist” is a generic, non-proprietary dictionary word.
This is not a case of “willful blindness” to Complainant’s possible rights. The Everett Affidavit states that proper research was undertaken so that Respondent had satisfied itself that the word “Adventist” was generic.[xii]
The Response states that:
“Complainant [has not] set forth any facts showing that Internet users typing the word ADVENTIST into their search engines must be seeking Complainant’s particular church, and not one of the multitude of other Adventist churches, organizations, dating sites, informational sites, or third-party Adventist-related ventures mentioned earlier in the Response.”
Had Complainant done so, the Panel assumes that a different analysis might have been demanded of it. The Panel finds that this is a “close case” on the issue of bad faith. Upon review of all the evidence and bearing in mind that Complainant bears the burden of proof, the Panel finds that the disputed domain name was not registered in bad faith.
Accordingly, the Panel finds that Complainant has failed to establish the third element of the Policy.
Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if, after considering the submissions, the Panel finds that the Complaint was brought in bad faith or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Respondent alleges that Complainant has acted in bad faith and engaged in reverse domain name hijacking by initiating the proceeding. It states that it was in contact with Complainant leading up to the dispute and that Complainant is trying to avoid purchase of the domain name at market value.[xiii]
Complainant’s failure to satisfy all elements of the Policy does not, of itself, call for a finding of reverse domain name hijacking. In view of the Panel’s analysis above, and in particular the existence of fair questions concerning Respondent’s right or legitimate interest in the domain dame, as well as whether the domain name was registered in bad faith, the Panel does not consider this a case of attempted reverse domain name hijacking.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <adventist.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons (chair)
The Honourable Neil Anthony Brown QC
Jeffrey Samuels
Panelists
Dated: January 23, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[ii] See, for example, Medpay Systems, Inc. v AffiniPay, Claim Number: FA1404001553796 ((Nat. Arb. Forum July 7, 2014) holding that “It is of no relevance whatsoever to the establishment of trademark rights that the registration might be the object of a pending, yet undecided, cancellation action. Provided the registration remains on foot at the time of this decision, it is enough to prove rights no matter what might later become of it.”
[iii] See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) examining respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
[iv] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) dealing with the disputed domain name <dogpileuk.com> where the integer “uk” was added to the DOGPILE trademark.
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[vi] See, for example, University of Rochester v. Park HyungJin, FA1410001587458 (FORUM Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”).
[vii] See, for example, Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000).
[viii] The “National” being the name of newspapers in a number of places around the world and “Marie Claire” being the name of an internationally published woman’s magazine.
[ix] See http://via.library.depaul.edu/cgi/viewcontent.cgi?article=1012&context=jatip
[x] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[xi] See, for example, Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (FORUM Feb. 21, 2002) finding that "[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner".
[xii] See, for example, Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048, for a similar analysis.
[xiii] See, for example, Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (FORUM May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”.
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