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WIPO-UDRP Entscheid
D2006-0642

Fallnummer
D2006-0642
Kläger
The General Conference Corporation of Seventh-day Adventists
Beklagter
Walter Ogden McGill III aka Creation 7th Day Adventist Church, Creation (7th Day Adventist) Ministries, Creation Ministries and Creation Seventh Day Adventist Church
Entscheider
Page, Richard W.
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
21.07.2006

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Conference Corporation of Seventh-day Adventists v. Walter McGill, dba Creation 7th Day Adventist Church, Creation (7th Day Adventist) Ministries, Creation Ministries and Creation Seventh Day Adventist Church, Creation 7th Day Adventist Church

Case No. D2006-0642

1. The Parties

Complainant is the General Conference Corporation of Seventh-day Adventists (“Complainant”), a corporation established by the General Conference of Seventh-day Adventists under the laws of the District of Columbia located at , Silver Spring, Maryland, United States of America, represented by Diller, Ramik & Wight, Annandale, Virginia, United States of America.

Respondent is Walter McGill dba Creation 7th Day Adventist Church, Creation (7th Day Adventist) Ministries, Creation Ministries and Creation Seventh Day Adventist Church, Creation 7th Day Adventist Church (“Respondent”) located at Guys, Tennessee, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <7th-day-adventist.org>, <creation-7th-day-adventist-church.org>, <creationseventhdayadventistchurch.org>, <creationsda.org> (the “Domain Names”).

The registrar is Blue Razor Domains, Inc. (the “Registrar”).

3. Procedural History

On May23,2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On May27,2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee. On May30,2006, the Center received hardcopies of the Complaint.

On May31,2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent’s name.

The Center verified that the Complaint (with Amendment) satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June8,2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, together with copies of the Complaint (with Amendment), with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June27,2006, the Center received the Response of Respondent via email. On July3,2006, the Center received the Response of Respondent in hardcopy.

On July5,2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel.

4. Factual Background

Complainant is the owner of the trademarks and service marks for SEVENTH-DAY ADVENTIST and SDA (the “Marks”), which Marks have been continuously used in interstate commerce in the United States and worldwide since 1860. Complainant has United States registration No. 1,117,185 for “religious books…commentaries, yearbooks, booklets and bibles; …conducting religious observances and missionary services” and has registered SEVENTH-DAY ADVENTIST and SDA in countries outside the United States of America. The Marks have been in continuous and uninterrupted use for 146 years. The Marks have been used as Complainant’s denominational, corporate and trade name (“Seventh-day Adventist Church”) in all of its union conference names, its local conferences, and virtually all of its Seventh-day Adventist churches located in the United States. The ministerial outreach of the Seventh-day Adventist Church includes its churches, schools, colleges and universities, its healthcare institutions, and hospitals, its national and international outreach through the Adventist Development and Relief Agency, its media centers, its radio and television stations, its publishing houses and its publications.

The domain names of Complainant include <adventist.org> and <7thdayadventistchurch.org> among others. Telephone and other directories throughout the United States, including the State of Tennessee in which Respondent is located, list Seventh-day Adventist churches and SDA churches.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contend that it has registrations of the SEVENTH-DAY ADVENTIST and SDA Marks; that its trademark registrations are valid and subsisting; and, that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Marks in connection with the stated goods and services. 15 U.S.C. 1065 and 115(b).

ii. Complainant argues that the Domain Names are confusingly similar to the Marks, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the phrases SEVENTH-DAY ADVENTIST and SDA with the addition of generic terms such as hyphens and the phrase “creation.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that diverting Internet users and consumers by use of the confusingly similar Domain Names is not a bona fide offering of good or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because he has not and is not commonly known under any of the Domain Names. Complainant alleges that Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SEVENTH-DAY ADVENTIST or SDA Marks in a domain name or in any other manner. Complainant further alleges that Respondent cannot demonstrate rights or legitimate interests by usurping for his own use names Respondent knew were protected by the Marks.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant contends that Respondent has deliberately registered the Domain Names containing the SEVENTH-DAY ADVENTIST and SDA Marks to attract the attention of Internet users and to misleadingly divert Internet users and consumers searching for Complainant. Complainant further contends that for this reason Respondent’s use cannot be considered legitimate.

iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(a)(iii).

Complainant argues that Respondent Walter McGill at one time was a Seventh-day Adventist minister of Complainant’s Seventh-day Adventist Church. Respondent subsequently left the Seventh-day Adventist Church and only then registered the four Domain Names at issue in this proceeding. Complainant alleges that Respondent is using the Domain Names to intentionally attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, product or services.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the SEVENTH-DAY ADVENTIST and SDA Marks.

Respondent argues that Seventh-day Adventism is a religion which may be freely practiced by all believers and churches adhering to the tenets of this religion. Respondent cites Stoker & Perry v. General Conference of Seventh-day Adventists, USPTO (1996) in a minority dissent that religion is not protectable as goods or services susceptible to trademark protection.

Respondent argues that Complainant has known of the registration of Respondent’s Domain Names since 1998, and waited seven years to complain of the Domain Names. Respondent essentially argues that Complainant has waived its right to now object.

Respondent asserts that he was a lay-member of the Seventh-day Adventist Church, but separated his membership in 1988, by divine revelation from Yahweh and a belief that Complainant had forsaken church doctrine and unduly punished perceived heretics. Respondent’s Creation Seventh-day Adventist Church restored and maintained historic dogma. Because Complainant has deviated from its own fundamental doctrine, Respondent alleges that Complainant has lost the right to protection of its name as against a new association which adopted the same name and which was formed by dissenting members who remained true to the religious doctrine.

ii. Respondent asserts that the Domain Names are not identical or confusingly similar to the Marks because a reasonable person would not assume the Domain Names are actually being used or sponsored by Complainant.

Respondent asserts that his websites to which the Domain Names resolve are easily distinguishable from Complainant’s because the websites contain the disclaimer “The Creation Seventh Day Adventist Church – Seventh-day Adventist Church Purified & Reorganized.” Respondent further asserts that there is no likelihood of confusion.

iii. Respondent asserts that he has rights to or legitimate interests in the Domain Names because he is conducting a religion which is not engaged in commercial activity.

Respondent alleges that he is involved in the free dissemination of the gospel of Jesus Christ and not in commercial activity. Respondent further alleges that he sells no goods or services and his only receipts are from the donations of Respondents’ followers.

iv. Respondent denies that he registered or used the Domain Names in bad faith. Respondent claims that there is no showing of bad faith based on paragraph 4(b), specifically because Respondent is making a fair, non-commercial use of the Domain Names.

Respondent advises the Panel that he has been commanded by Yahweh to employ the name Creation Seventh Day Adventist Church in describing the true religion and fellowship of His spiritual kingdom on Earth. Respondent must obey God rather than men.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 .

Enforceable Trademark Rights

Complainant contends that it has registrations of the SEVENTH-DAY ADVENTIST and SDA Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the Marks and exclusive right to use the Marks in connection with the stated goods. 15 U.S.C. 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent asserts that he is free to practice adhering to the tenets of his religion and that religion is not protectable as a trademark. Furthermore, Respondent asserts that Complainant has deviated from its own fundamental doctrine and lost the right to protection of its name as against a new association which adopted the same name and which was formed by dissenting members who remained true to the religious doctrine.

The Panel does not believe that the freedom to practice religion or the deviation from fundamental doctrine constitute defenses cognizable under the Policy to invalidate the protection afforded Complainant by its registered Marks.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the Marks.

Identity or Confusing Similarity

Complainant argues that the Domain Names are confusingly similar to the Marks, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the phrases SEVENTH-DAY ADVENTIST and SDA with the addition of generic terms such as hyphens and the phrase “creation”.

Respondent counters that his websites to which the Domain Names resolve are easily distinguishable from Complainant’s. The website further contains the disclaimer “The Creation Seventh Day Adventist Church – Seventh-day Adventist Church Purified & Reorganized.” Therefore, there is no likelihood of confusion.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark, regardless of any disclaimer which may be placed on a respondent’s website.

Accordingly, the Panel finds that the Domain Names are confusingly similar to the Marks in which the Complainant has rights pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii). Respondent has no relationship with or permission from Complainant for the use of the Marks.

Complainant contends that Respondent has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services, is not commonly known under any of the Domain Names and is not making a legitimate noncommercial or fair use of the Domain Names. Complainant further contends that Respondent has deliberately registered the Domain Names containing the SEVENTH-DAY ADVENTIST and SDA Marks to attract the attention of Internet users and to misleadingly divert consumers searching for Complainant.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. The Panel finds that Complainant has come forward with sufficient evidence to make a prima facie showing and to shift the burden to Respondent.

Respondent alleges that he is involved in the free dissemination of the gospel of Jesus Christ and not in commercial activity. No goods or services are sold. The only receipts are from the donations of Respondent’s followers. Respondent notes that he does not derive any financial benefit from the activity on his website and has made no effort to divert customers from the Complainant.

The Panel finds that persons interested in finding religious information are Internet users and consumers within the meaning of the Policy. Respondent is using Domain Names which are confusingly similar for purposes of the Policy. Therefore, he is attracting Internet users and misleading consumers searching for Complainant.

The Panel finds that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product

Complainant alleges that Respondent is using the Domain Names to intentionally attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, product or services.

The Panel believes that the evidence that Respondent is engaging in commercial activity is inconclusive. The Panel further believes that the evidence does support the allegation that Respondent is attracting Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites to which Respondent’s Domain Names resolve.

The four criteria set forth in the Policy, paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 . In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Complainant argues that Respondent only registered the five Domain Names after leaving a ministry with the Seventh-day Adventist Church. Respondent states that he was a lay-member and separated his membership in 1988 by divine revelation from YAHWEH and a belief that Complainant had broken church doctrine. There is no dispute that Respondent had actual knowledge of the Seventh-day Adventist Church and its practices at the time he registered the Domain Names.

An additional factor found to support a finding of bad faith is Respondent’s actual knowledge of the Complainant’s Marks when Respondent registered the Domain Names. When considered with the attraction of Internet users using a likelihood of confusion, the Panel finds this evidence sufficient to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii).

Defenses to Bad Faith

Respondent argues that Complainant has known of the registration of Respondent’s Domain Names since 1998, and waited seven years to complain of the Domain Names. Respondent essentially argues that Complainant has waived its rights to now object.

Respondent advises the Panel that he has been commanded by YAHWEH to employ the name Creation Seventh Day Adventist Church in describing the true religion and fellowship of His spiritual kingdom on Earth. Respondent must obey God rather than men.

The Panel finds that the defense of waiver offered by Respondent is not sufficient to nullify the bad faith of Respondent.

7. Decision

The Panel concludes (a) that the Domain Names <7th-day-adventist.org>, <creation-7th-day-adventist-church.org>, < creation seventhdayadventistchurch.org>, and <creationsda.org> are confusingly similar to Complainant’s registered SEVENTH-DAY ADVENTIST and SDA Marks; (b) that Respondent has no rights or legitimate interests in the Domain Names; and, (c) that Respondent registered and is using the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: July21,2006