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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Joyce Meyer Ministries Inc. v. Amjad Kausar

Case No. D2006-1555

 

1. The Parties

The Complainant is Joyce Meyer Ministries Inc., Fenton, Missouri, United States of America, represented by Winters, King & Associates, Inc., United States of America.

The Respondent is Amjad Kausar, Karachi, Pakistan.

 

2. The Domain Name and Registrar

The disputed domain name <joycemeyerministries.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 10, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 18, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2007.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 19, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a religious organization. It was formed as a not for profit corporation in the State of Missouri on August 27, 1985, under the name, Life in the World, Inc., but formally changed its company name to Joyce Meyer Ministries Inc. on September 18, 2003.

On August 14, 1989, it registered the business name, “Joyce Meyer Ministries” with the Missouri Secretary of State. The business name is in force until August 28, 2009.

The Complainant is the proprietor of a number of trademark registrations in different countries, including United States Trademark Registration Number 3014700 dated November 15, 2005 in classes 9 and 45 for the word mark JOYCE MEYER MINISTRIES.

Outside the United States, the Complainant has a presence in Australia, Canada, South Africa, Russia, Ukraine, India, Brazil, Uganda, Sri Lanka, Thailand, Germany, England and the Middle East.

The Respondent’s business is not known. It registered the disputed domain name on September 10, 2001, and has renewed it since.

On March 8, 2004, the Complainant first wrote to the Respondent petitioning it to transfer the domain name to the Complainant. The Respondent did not reply to that or to subsequent letters.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is one of the largest evangelical organizations in the world. In 2005, it spent $US84 million on various religious outreaches. It employs over 500 people in the United States and over 300 more in foreign offices. Its religious television broadcasts are made in 27 languages around the world. It has sold or distributed 5 million religious books, nearly 10 million religious magazines, has aided disaster victims on different continents, established 22 orphanages and provided over 5 million meals to the poor and needy.

The Complainant does not specifically address the issue of whether the disputed domain name is identical or confusingly similar to one or more of its registered trademarks. The Complainant states that the “Joyce Meyer” and “Joyce Meyer Ministries” names have acquired secondary meaning among religious evangelicals and thus qualify for common law trademark status, but again, does not address the issue of identity or confusing similarity with the domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name because:

- It is not commonly known by the domain name;

- It has not been given permission to use the name;

- It is not making legitimate non-commercial or fair use of the name;

- It is using the name to redirect Internet users to an unconnected commercial site, namely, “www.usseek.com”.

The Complainant goes on to argue that the Respondent has acted in bad faith because it:

- Has not responded to the Complainant’s petitions for voluntary transfer of the name

- Has intentionally attempted to attract Internet users for commercial gain to a website by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply.

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

Although the Complainant has not expressly argued the point, the Panel has no hesitation in finding that the disputed domain name is identical to a registered trademark in which the Complainant has rights. The gTLD, .com, can be ignored for the purpose of this comparison. With this finding, it becomes unnecessary to consider the Complainant’s evidence that the mark has acquired a common law significance and connotes only the Complainant. Since the Complainant holds a registration it is also unnecessary to consider the question of unregistered rights in a personal name which has exercised earlier panels.

The Panel notes that the Complainant’s earliest registration of the exact same trademark, US Registration Number 3014700 referred to above, postdates the registration date of the domain name by more than 4 years. The consensus view of earlier panels applying the Policy has been that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The Policy makes no specific reference to the date of which the owner of the trade or service mark acquired rights. Nevertheless, it can be difficult to prove that the domain name was registered in bad faith if it was registered long before the trademark rights came into existence (see: Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-Madrid Man Websites, WIPO Case No. D2003-0598). The Panel has therefore chosen to consider this question in further detail under the bad faith discussion below.

The Panel finds that the Complainant has established the first element it is required to prove under the Policy.

B. Rights or Legitimate Interests

Whilst the overall burden of proof rests with the Complainant, it is required to make out only a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the Complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy (see: Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Respondent has not filed a Response. Clearly, the Respondent is not called “Joyce Meyer Ministries”, and there is no evidence that the Respondent is known by the domain name. In those circumstances there are few ways in which the Respondent could legitimately use the disputed domain name or prove its own right to the name. As stated by this Panel in prior UDRP decisions, any such use would require the utmost bona fide character (see for example: Emirates Corporation v. 2220 Internet Coordinator, WIPO Case No. D2005-1311).

Reverting to the Policy, paragraph 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Although concerned with the activities of an authorized reseller, respected UDRP decision in this regard is that of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be bona fide within paragraph 4(c)(i), the offering must meet several minimum requirements, being that:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site; and

- the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The factors developed in the Oki Data case have been adopted by a number of subsequent UDRP panels. Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; and have also been applied in cases, such as this one, where there was no contractual relationship between the Complainant and the Respondent. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

Here the disputed domain name, which is confusingly similar to the Complainant’s mark, is being used to provide sponsored links and to promote the sale of commercial products and services apparently unconnected with the Complainant in any way, or at the least, drive Internet traffic through the site attaching to the disputed domain name.

Accordingly, the Panel observes a failure on the part of the Respondent to show bona fide use, nor is such use consistent with a legitimate non-commercial or fair use of the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established this element of its case.

C. Registered and Used in Bad Faith

As a general proposition, when a domain name is registered before trademark rights are established, the registration of the domain name can not be in bad faith simply because the registrant could not have contemplated the complainant’s then non-existent right. Nevertheless, there will be certain situations where the respondent is likely to be aware of the complainant, and it is clear that the aim of the registration is to take advantage of the confusion between the domain name and any potential complainant rights (see: ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; Madrid 2012, S.A. v. Scott Martin-Madrid Man Websites, WIPO Case No. D2003-0598).

In this case registration of the domain name predated the earliest relevant trademark registration by more than 4 years. The Panel notes however that US Registration Number 3014700 carries the usual additional information about the date of first use in commerce of the mark. That date is August 1, 1989. The Panel is reminded that this date is consistent with the August 14, 1989, date when the Complainant registered the business name, “Joyce Meyer Ministries” with the Missouri Secretary of State. The first use of the Complainant’s mark was therefore 2 years before the domain name was registered.

The question therefore arises as to whether knowledge of the Complainant’s mark can be properly imputed to the Respondent in September 2001, when it registered the domain name.

The evidence shows that the Complainant was incorporated in 1985. In 2005, it spent $US84 million on various religious outreaches. Therefore in the space of just 20 years, the Complainant was in a position to distribute a vast amount of money. Although there is no direct evidence of the Complainant’s reputation in 2001, it can be rightfully assumed that on the basis of these figures, the Complainant enjoyed popular recognition even after 6 years of operation. The Complainant has satellite offices in India and Sri Lanka. It has performed relief work in Pakistan. The Respondent’s given address is in Karachi.

These facts, combined with the failure to respond to the Complainant’s demand letters and the unlikely independent adoption of the domain name by the Respondent leads the Panel to a finding that the Respondent registered the domain name in bad faith with knowledge of the Complainant and its use of the mark, notwithstanding that the actual registration of the mark by the Complainant did not occur until some years later.

Paragraph 4(b) of the Policy sets out the following circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

(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 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 your website or location or of a product or service on your website or location.

It follows from what has been said that the Panel is satisfied that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site. Pursuant to Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii) of the Policy.

The Panel therefore finds that the Complainant has also established this third limb of its case.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <joycemeyerministries.com>, be transferred to the Complainant.

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Debrett G Lyons
Sole Panelist

Dated: January 31, 2007