Intellectual Reserve, Inc. and The Church of Jesus Christ of Latter-day Saints f/k/a Corporation of the President of The Church of Jesus Christ of Latter-day Saints v. Peter Thomas / 2015
Claim Number: FA2204001992010
Complainant is Intellectual Reserve, Inc. and The Church of Jesus Christ of Latter-day Saints f/k/a Corporation of the President of The Church of Jesus Christ of Latter-day Saints (“Complainant”), represented by Joshua S. Rupp of Kirton McConkie, Utah, USA. Respondent is Peter Thomas / 2015 (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <liahona.life> and <liafona.ai>, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2022; the Forum received payment on April 12, 2022.
On April 13, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <liahona.life> and <liafona.ai> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2022 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@liahona.life, postmaster@liafona.ai. Also on April 18, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. However, on April 19, 2022 and after service on Respondent of the Complaint and Written Notice as aforesaid, Respondent sent an email to the Forum and Complainant stating, formal parts and salutation omitted, as follows:
“…In regards to the domains in question, I forgot I even had them. As you know the Liafona.ai domain has been pointed to the church's www.liahona.com domain since last year, and I had completely forgotten that the liahona.life domain was still in my possession. In any case, I have already eliminated that connection and both domains are waiting to be transferred to the church. Just let me know when you would like them to be transferred over. Thank you! Please let me know if you have any questions. Have a great day!”
On May 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter:
(a) Intellectual Reserve, Inc. and
(b) The Church of Jesus Christ of Latter-day Saints f/k/a Corporation of the President of The Church of Jesus Christ of Latter-day Saints. Intellectual Reserve, Inc. is a nonprofit corporation that holds intellectual property for the The Church of Jesus Christ of Latter-day Saints f/k/a Corporation of the President of The Church of Jesus Christ of Latter-day Saints, a religious denomination.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the two Complainants and it will therefore treat them both as a single entity. The Complainants will therefore be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant is a religious denomination and holds intellectual property. Complainant has rights in the LIAHONA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,111,573 registered November 11 1997). See Compl. Annex F. Respondent’s <liahona.life> and <liafona.ai> domain names are virtually identical and confusingly similar to Complainant’s mark because <liahona.life> incorporates the LIAHONA mark in its entirety and adds the “.life” generic top-level domain (“gTLD”) and <liafona.ai> misspells the LIAHONA mark by replacing the letter “h” with the letter “f” and adds the “.ai” gTLD.
Respondent has no legitimate interests in the <liahona.life> and <liafona.ai> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the LIAHONA mark.
Respondent registered and uses the <liahona.life> and <liafona.ai> domain names in bad faith. Respondent purports to be affiliated with Complainant in order to attract customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the LIAHONA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, as noted above, on April 19, 2022 Respondent sent an email to the Forum and Complainant stating in effect that he consented to the voluntary transfer of the disputed domain names to Complainant.
The Panel has therefore naturally given consideration to acting automatically on Respondent’s apparent consent to transfer the domain names to the Complainant. However, in view of the detailed exposition of the history of this and related matters provided in the Complaint and particularly in the annexes to the Complaint, the Panel has decided that the more appropriate course is to proceed with the matter and make findings in the usual manner on all of the elements set out in the Policy.
1. The first Complainant is a nonprofit corporation that holds intellectual property for the second Complainant. The second complainant is a religious denomination.
2. Complainant has established its rights in the LIAHONA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,111,573 registered November 11 1997).
3. Respondent registered the <liahona.life> domain name on August 30, 2021 and the <liafona.ai> domain name on September 15, 2020.
4. The evidence shows that each of the disputed domain names is virtually identical and confusingly similar to the LIAHONA mark.
5. The evidence shows that Respondent has no right or legitimate interest in either of the disputed domain names.
6. The evidence shows that Respondent registered and has used the disputed domain names in bad faith.
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.
In view of Respondent's failure to submit a response, albeit that Respondent has indicated its consent to the transfer, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s LIAHONA mark. Complainant argues Respondent’s <liahona.life> and <liafona.ai> domain names are identical or confusingly similar to Complainant’s LIAHONA mark because <liahona.life> incorporates the LIAHONA mark in its entirety and adds the “.life” generic top-level domain (“gTLD”) and <liafona.ai> mispells the LIAHONA mark by replacing the letter “h” with the letter “f” and adds the “.ai” gTLD. The addition of a gTLD and a misspelling fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). See also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s LIAHONA mark and to use it in its domain names and in the case of <liahona.life> incorporating the LIAHONA mark in its entirety and adding the“.life” generic top-level domain (“gTLD) and in the case of the <liafona.ai> domain name misspelling the LIAHONA mark by replacing the letter “h” with the letter “f” and adding the “.ai” gTLD;
(b) Respondent registered the <liahona.life> domain name on August 30, 2021 and the <liafona.ai> domain name on September 15, 2020;
(c)There is no evidence showing a prima facie case that Respondent has a right or legitimate interest in either of the two domain names and by registering them Respondent purports to be affiliated with Complainant in order to attract customers and internet viewers for commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <liahona.life> and <liafona.ai> domain names since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the LIAHONA mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Moreover, where a complainant’s mark consists of a word that is unique to that complainant, it is open to a Panel to find for that reason additional support for a respondent’s lack of rights of legitimate interest. See G.D. Searle & Co. v. Sean, FA 129128 (Forum Dec. 27, 2002) (“[A]s Complainant's mark is a fanciful term specifically coined by Complainant, it is doubtful that anyone other than Complainant could claim to be ‘commonly known by’ a derivative of the mark.”). The WHOIS information for the disputed domain name lists the registrant as “Peter Thomas/2015”. See Registrar Email Verification. Complainant submits that it has not licensed or otherwise authorized Respondent to use Complainant’s LIAHONA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus 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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and used <liahona.life> and <liafona.ai> in bad faith because the disputed domain name incorporates the LIAHONA mark in an attempt to pass Respondent off as affiliated to the Complainant in order to attract internet users. Use of a disputed domain name to pass a respondent off as affiliated with a complainant can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Complainant has provided evidence that Respondent stated an intention to use Complainant’s mark to attract customers affiliated with or interested in Complainant. See Compl. Annex J. Complainant also provides evidence that Respondent utilized Complainant’s mark on the webpage that redirects from <liahona.life>, in an effort to misrepresent the disputed domain name as affiliated with Complainant. See Compl. Annex M. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the LIAHONA mark. Complainant argues that Respondent's alleged desire to garner the attention of Complainant and customers affiliated with Complainant through its use of the LIAHONA MARK indicates that Respondent had actual knowledge of Complainant's mark and rights. See Compl. Annex J. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the LIAHONA mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression. That is particularly so as the domain names registered by Respondent invoke a name and trademark that are unique and can refer only to Complainant. Despite this, Respondent has gone ahead and without any permission from the trademark owner, registered the domain names to which he does not have a shadow of right or entitlement. On top of that, the email it sent on the Forum and Complainant on April 19, 2022 is an admission that both what he had been doing and putting Complainants to time and expense to reclaim the domain names, was wrong.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liahona.life> and <liafona.ai> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 19, 2022
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