DECISION

 

Thru the Bible, Inc. v. Admin Domain / Catch. club

Claim Number: FA2308002057403

 

PARTIES

Complainant is Thru the Bible, Inc. ("Complainant"), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Admin Domain / Catch. club ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thruthebibleradio.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 14, 2023; Forum received payment on August 14, 2023.

 

On August 17, 2023, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <thruthebibleradio.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com 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 September 12, 2023, Forum served the Complaint and all Annexes, including a Japanese and English Written Notice of the Complaint, setting a deadline of October 2, 2023 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@thruthebibleradio.com. Also on September 12, 2023, the Japanese and English 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default in Japanese and English.

 

On October 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Japanese. You have two options: 1. Translate the Complaint and Table of Contents into Japanese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant chose to amend the Complaint, submitting that the proceedings should continue in English. Complainant submits that, (i) the Registrar provides an English-language version of the Registration Agreement online, and (ii), the disputed domain name "features the English words THRU THE BIBLE RADIO, suggesting that Respondent is conversant and proficient in the English language."

 

Neither argument is of any substance. Neither establishes that Respondent is capable in English. Nevertheless, as has been noted in many earlier cases, the bar has been set very low for this language requirement. Paragraph 11(a) of the Rules provides that "the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding" (added emphasis).  Given this broad power I am inclined to find that the proceedings should continue in English. Complainant submits that it has no ability in Japanese and the Panel accepts that statement. Given the evidence of bad faith which follows and the fact that Respondent has shown no sign of defending its position, the Panel takes the view that it is an unnecessary burden for the Complaint to be translated into Japanese and the proceedings recommenced.   

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in THRU THE BIBLE.  Complainant submits that the disputed domain name is confusingly similar to the 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 failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant has since 1967 aired bible study programs under the name, THRU THE BIBLE;

2.       the disputed domain name was registered on July 20, 2023 by Respondent using a privacy service to shield its identity; and

3.       the disputed domain name resolves to a website that displays links including "bible study" and "home church".

 

DISCUSSION

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, 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.  

 

Identical and/or Confusingly Similar

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) does not distinguish between registered and unregistered trademark rights. Complainant asserts use since the 1960s but there is no supporting evidence of that claim and so nothing to sustain common law trademark rights.

 

However, it is well established that a trademark registered with a national authority is evidence of trademark rights and Complainant relies on United States Patent & Trademark Office ("USPTO") Reg. No. 6,939,105, from January 3, 2023.

 

The Panel notes that the registration is not in the name of Complainant. There is no explanation for this (or evidence of the current state of the register in the event of a change of name or assignment) and another panel may have dismissed the Complaint at this point.

 

Nonetheless, the Panel observes that the owner of the registration, Thru The Bible Radio Network, shares the same address as the named Complainant and so, in the absence of contest by Respondent, the Panel is prepared to accept that Complainant (also) has rights in the trademark (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (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).").

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com", can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007). The disputed domain name takes the trademark, merely adding the desriptive term, "radio", an addition which does not distinguish the domain name from the trademark for the purposes of the Policy (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

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 trademark 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 (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified "Admin Domain" as the domain name registrant and "Catch. club" as the registrant organization. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name.

 

There is no evidence that Respondent has any trademark rights. Complainant states, and the Panel accepts, that it has not given Respondent any right in or authority to use the trademark.

 

The domain name is currently used to direct Internet users to a website displaying what the Complaint describes as "click-through opportunities to third party websites that compete directly with Complainant for the offering of religious services." Clearly, such use does not give rise to rights or a legitimate interest.

 

The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

The Panel has already found confusing similarity between the domain name and the trademark. That confusion attracts Internet users to an online location in all likelihood intended for commercial gain. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:

 

(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 paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, 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.").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <thruthebibleradio.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated: October 5, 2023