Universal Life Church Monastery Storehouse, Inc. v. Amy Long / Quest Ministries of the Universal Life Church & ULC Seminary, Inc.
Claim Number: FA1501001602375
Complainant is Universal Life Church Monastery Storehouse, Inc. (“Complainant”), represented by Michael P. Matesky of Matesky Law PLLC, Washington, USA. Respondent is Amy Long / Quest Ministries of the Universal Life Church & ULC Seminary, Inc. (“Respondent”), represented by John Di Giacomo of Revision Legal, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <universallifechurchmonastery.com>, <universallifechurchmonastery.net>, and <universallifechurchmonastery.org>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil - Jimenez as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2015; the Forum received payment on January 28, 2015.
On January 29, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <universallifechurchmonastery.com>, <universallifechurchmonastery.net>, and <universallifechurchmonastery.org> 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 January 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 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@universallifechurchmonastery.com, postmaster@universallifechurchmonastery.net, and postmaster@universallifechurchmonastery.org. Also on January 30, 2015, 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 February 19, 2015.
A timely Additional Submission was received from Complainant on February 25, 2015.
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil - Jimenez 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.
A. Complainant:
Complainant makes the following allegations:
Complainant owns the UNIVERSAL LIFE CHURCH MONASTERY mark through common law rights. Complainant asserts that Complainant and its predecessors-in-interest have used the UNIVERSAL LIFE CHURCH MONASTERY mark for nearly 40 years, and Complainant has filed applications to register the UNIVERSAL LIFE CHURCH MONASTERY mark with the USPTO.
Beginning in 1977, Complainant’s president, George Freeman, began ordaining ministers, conducting religious rites, and providing other religious services as an unincorporated religious association under the UNIVERSAL LIFE CHURCH MONASTERY mark. In 1999 Mr. Freeman and others formed Universal Life Church/ULC Monastery, Inc.—an Arizona corporation—and began using the UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY marks online in connection with religious services and related online retail services.
Complainant argues as well that Respondent, who was a former associate of Complainant, with actual prior knowledge of said use and without authorization from Complainant registered the UniversalLifeChurchMonastery.TLD domain names, and used them to direct Internet traffic to her own website offering religious services and related online retail services in direct competition with Complainant.
In sum, Complainant contends that the UniversalLifeChurchMonastery.TLD domain names are identical to a mark in which Complainant has rights; that Respondent has no rights or legitimate interest in the domain names; that Respondent is not commonly known by the disputed domain names, and that
Respondent registered and has used the UniversalLifeChurchMonastery.TLD domain names in bad faith.
B. Respondent
Respondent’s arguments to contest Complainant under caption may be summarized as follows:
The Universal Life Church was created in 1959 by Kirby Hensley, who established the church in his garage. According to Respondent, Mr. Hensley continued to run the Universal Life Church until his death in 1999.
Registrant Quest Ministries of the Universal Life Church was formed on September 8, 2004, and has operated with the approval of Universal Life Church since 2004. Respondent accepts ordination requests for the Universal Life Church and forwards these requests to the Universal Life Church for approval and fulfillment. Universal Life Church continues to serve as the sole ordaining body of the Universal Life Church denomination, and has done so since 1959.
Respondent adds that Complainant Universal Life Church Monastery Storehouse, Inc. was organized under the laws of the state of Washington on September 13, 2006. In turn, the domain names <UniversalLifeChurchMonastery.com>, <UniversalLifeChurchMonastery.net> and <UniversalLifeChurchMonastery.org> were registered by Registrant in 2004, i.e., two years prior to the formation of Complainant Universal Life Church Monastery Storehouse, Inc.
Respondent continues stating that Complainant’s owner George Freeman served as the Vice President of Universal Life Church/ULC Monastery, Inc. which was owned by Mr. Daniel Zimmerman, and operated the domain <ulc.org>. However, in 2005 Mr. Zimmerman removed Mr. Freeman as Vice President of Universal Life Church/ULC Monastery, Inc. and publicly denounced Mr. Freeman’s actions.
Respondent also asserts that Complainant has no affiliation with Universal Life Church, and consequently has no right to use the Universal Life Church name. Complainant is not an authorized affiliate or licensee of Universal Life Church, but a trademark infringer and a cybersquatter.
Moreover, according to Respondent the disputed domain names are not confusingly similar to Complainant’s mark, because Complainant has no rights in the UNIVERSAL LIFE CHURCH MONASTERY mark. Complainant has unsuccessfully filed numerous trademark applications that have been rejected by the United States Patent and Trademark Office. The two pending applications are those filed on January 27, 2015, one day prior to the filing date of this Complaint. Respondent adds that Registrant cannot obtain trademark rights in or to UNIVERSAL LIFE CHURCH due to the likelihood of confusion of this name with the trademarks UNIVERSAL CHURCH No. 3214976, LIFE CHURCH No. 3214976 and LIFECHURCH.TV No. 3212474.
Lastly, Respondent contends that it does have rights and legitimate interests in the disputed domain names. Respondent is commonly known by the names “Universal Life Church”, “Universal Life Church Seminary”, “Universal Life Church Monastery” and “Quest Ministries of the Universal Life Church & ULC Seminary, Inc.” since as early as 2004. Respondent has not registered the disputed domain names in bad faith. Respondent registered the disputed domain names two years prior to Complainant’s existence, and is an authorized affiliate of Universal Life Church.
C. Additional Submissions
Complainant submitted an additional submission containing, among others, the following statements:
Respondent has provided no facts or legal authority to contradict the relevant points set forth in the Complaint. Rather than clearly explaining why Respondent’s knowing registration and use of domain names identical to Complainant’s trademark does not violate the UDRP, the Response raises a multitude of irrelevant and tangential issues in an attempt to convince the Panel that the Complaint cannot be resolved under the UDRP.
In this concern, Complainant asserts that Respondent either does not dispute, or provides no evidence to dispute, the relevant facts; and the vast majority of allegations and evidence provided by Respondent are irrelevant to determination of whether the elements of the Policy are satisfied.
Complainant adds that the case at hand concerns the UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY trademarks used and developed for decades by Complainant and its predecessors (Universal Life Church/ULC Monastery, Inc. and George Freeman’s unincorporated religious organization), and Respondent’s intentional registration of the UniversalLifeChurchMonastery.TLD domain names for purposes of operating a competing website.
Furthermore, Complainant argues that this dispute has nothing to do with third party Universal Life Church, Inc. This dispute has nothing to do with any supposed trademark rights in the UNIVERSAL LIFE CHURCH or ULC designations used alone. This dispute has nothing to do with whether ULC MONASTERY is confusingly similar to ULC SEMINARY. The Complaint has nothing to do with ownership of ULC.org, ULC.net, or any of the other 20+ domain names mentioned in the Response. This dispute has nothing to do with the corporate leadership changes of Universal Life Church/ULC Monastery, Inc. after Respondent registered the disputed domain names. According to Complainant, this dispute only concerns the UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY trademarks, and the <UniversalLifeChurchMonastery.com>, <UniversalLifeChurchMonastery.net> and <UniversalLifeChurchMonastery.org> domain names.
Respondent argues that irrespective of whether Complainant’s trademark applications have been rejected, or voluntarily abandoned in the past, said other trademark applications are irrelevant because it is not necessary to have a trademark registration to demonstrate rights.
The case at hand is certainly a quite complex case in which a number of facts raised do denote a separate bigger confrontation between the parties that really has nothing to do with a domain dispute; however, relevant facts have been found that do relate with a domain dispute and with the rights that may be used to bring such dispute, and therefore the Panel finds that there is sufficient evidence to properly decide the dispute under the UDRP 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.”).
Complainant bases its case on his alleged common rights over the trademarks UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY, and the rights that said trademarks grant to act against certain domain names.
In turn, Respondent rebuts the alleged trademark rights of Complainant by illustrating about the beginnings of the Universal Life Church, and the creation of the entities named Universal Life Church/ULC Monastery, Inc., Universal Life Church Monastery Storehouse Inc. and Quest Ministries of the Universal Life Church & ULC Seminary, Inc.
It is therefore deemed that in order to render a decision on the present case it is necessary to elaborate around the requirements to be able to claim undisputed common rights over a trademark. Such study will be conducted herein below when analyzing whether the Complaint meets the requirements of Paragraph 4(a) of the Policy.
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.
As said before, Complainant bases its arguments on its alleged common rights over the trademarks UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY.
According to Respondent, the Universal Life Church was created in 1959 by Kirby Hensley. In this concern, although the creation of the Church itself may have taken place in 1959, the documentary evidence submitted does demonstrate that the formal incorporation of the Universal Life Church took place in 1962.
Evidence was filed as well to demonstrate that the entity named Universal Life Church/ULC Monastery, Inc. was incorporated in 1999. There is proof (a copy of the Arizona corporate record) that Complainant’s owner, Mr. George Freeman, was as the Vice President of this corporation, for which Mr. Daniel Zimmerman was President. Now, according to Respondent, Mr. Zimmerman removed Mr. Freeman as Vice President in 2005, and even though Mr. Zimmerman retained control over the Universal Life Church/ULC Monastery, Inc. Mr. Freeman unlawfully took control over the <ulc.org> domain name which was redirected to <themonastery.org>. There is evidence of the fact that the domain ulc.org redirects to themonastery.org.
Respondent also contends that two days before Mr. Zimmerman’s passing away in 2012 Mr. Freeman declared himself the President of Universal Life Church/ULC Monastery, Inc. However, the Complaint was not submitted by this corporation but by the entity Universal Life Church Monastery Storehouse Inc. incorporated in 2006 (i.e. two years after the registration date of the disputed domains).
Lastly, as if the foregoing was not sufficient, evidence was submitted (an Affidavit of Mr. Andre Hensley, President of Universal Life Church, Inc.) as regards the fact that Universal Life Church has never authorized Universal Life Church Monastery Storehouse, Inc. to use the Universal Life Church name. This statement should be understood as the lack of authorization, mutatis mutandis, to use the name Universal Life Church Monastery.
With all the foregoing facts at hand, the undersigned Panel will proceed to determine whether Complainant has acquired common law rights over the trademarks UNIVERSAL LIFE CHURCH MONASTERY and ULC MONASTERY.
Let us see:
There is an essential requirement in order for a mark to be eligible for trademark protection: The trademark must be distinctive. This requirement refers to the trademark's capacity to identify and distinguish particular goods or services as emanating from one source and not another. In the present case, and contrary to Complainant’s contentions, the case does refer to third party prior rights: Those of Universal Life Church, Inc., which was the original UNIVERSAL LIFE CHURCH and continues to be around in Modesto, California.
Two trademarks do not need to be identical in order to establish likelihood of confusion between them. In the case at hand, it would be rather difficult to say that there is no confusing similarity between Universal Life Church (first in time) and Universal Life Church Monastery (Complainant), since the immediate impression that one gets from both names is almost the same.
This being the case, the Panel considers that the common law trademark rights claimed in the Complaint are quite debatable, in as much as the trademark Universal Life Church Monastery is not distinctive due to its lack of capacity to differentiate the services rendered by this entity from those rendered by the Universal Life Church, which was demonstrated to be the original entity.
The Panel thus concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and therefore declines to analyze the other two elements of the Policy. See 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).
AS TO THE REVERSE DOMAIN HIJACKING
The Panel considers that since not all the elements of the Policy merit being analyzed due to the fact that Policy ¶ 4(a)(i) was not satisfied, there are no grounds to establish a case of reverse domain hijacking.
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 <universallifechurchmonastery.com>, <universallifechurchmonastery.net>, and <universallifechurchmonastery.org> domain names REMAIN WITH Respondent.
Luz Helena Villamil-Jimenez, Panelist
Dated: March 16, 2015
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