WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KSBJ Educational Foundation, Inc v. World Scope Press, Inc.
Case No. D2001-0480
1. The Parties
The Complainant in this administrative proceeding is KSBJ Educational Foundation, Inc. whose principal place of business is 327 Wilson Rd., Humble, Texas, 77338, USA. The respondent in this case is World Scope Press, Inc., whose contact information is 1911 Avenue N 1/2, Huntsville, Texas, 77340, USA.
2. The Domain Name and Registrar
The domain name at issue is which is currently registered with BulkR in Baltimore, Maryland, USA.
3 Procedural History
A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on April 2, 2001. A hard copy of the Complaint was received by the WIPO Center on April 4, 2001.
On April 6, 2001, a Verification Response was received from BulkR which served to: (1) confirm that BulkR was in receipt of the notification of the domain name dispute; (2) confirm that BulkR is the registrar of the domain name; (3) confirm that World Press Scope, Inc. is the current Registrant of the domain name; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar�s WHOIS database for the Registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact.
A Notification of Complaint & Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant by email and to the Respondent by FedEx, fax and email dated April 9, 2001. This served to notify the parties that a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount. The Notification also set a deadline of April 28, 2001, by which the Respondent could make a Response to the Complaint. Respondent submitted a Response on April 27, 2001.
On May 2, 2001, Complainant submitted an additional statement. On May 3, 2001, the WIPO Center informed Complainant that the Panel would determine whether to consider Complainant�s additional statement. On May 4, 2001, the Respondent submitted an objection to the Complainant�s additional statement. Rule 12 allows the Panel, in its discretion, to consider such additional statements or documents from either of the Parties. The Panel elected to review Complainant�s additional statement, and, based on the nature of the material contained therein, concluded it was not necessary to request an additional submission from Respondent.
On May 18, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on May 18, 2001, was June 1, 2001.
4. Factual Background
Complainant, KSBJ Educational Foundation, Inc. ("KSBJ"), owns and operates a Christian radio station and uses its mark GOD LISTENS as a brand for its radio station services. It also uses the mark through affiliates, and through television, newspapers, the Internet, bumper stickers, and on billboards. KSBJ first began using the mark in commerce in and around Houston, Texas, in September, 1992.
KSBJ provided evidence that it has a U.S. Trademark registration for the mark GOD LISTENS for "radio broadcasting and radio communication services" in international class 38, as well as for "radio programming; radio entertainment production; distribution of radio programs for others; production of radio and television programs; radio and television show programming; television program syndication; concert booking; development and assimilation of educational materials in the field of Christian living; educational services, namely, conducting seminars, workshops, and conferences in the field of Christian living" in international class 41. KSBJ filed an application for registration of the mark GOD LISTENS on September 30, 1997. The United States Patent and Trademark Office issued the trademark for GOD LISTENS on November 24, 1998
Respondent, World Scope Press, Inc., holds and manages the domain name on behalf of Russell Ministries, which is owned and operated by George Russell. Respondent registered the domain name on August 5, 1999, and posted information at the site some time after April 18, 2000. Respondent uses the domain name to promote the idea that God listens to people of all faiths and that God cares. Respondent�s website provides a forum for spreading his religious and philosophical beliefs. The website includes links to related sites, some of which include links to screens that permit viewers to join Russell Ministries or make a donation.
5. Parties Contentions
A. Complainant
Complainant contends that Respondent�s domain name is confusingly similar to a trademark in which Complainant has rights. Complainant asserts that the domain name is identical to Complainant�s mark because it incorporates the trademark in its entirety and merely adds the top level domain extension .
Complainant argues that because Respondent�s domain name is identical or confusingly similar to its trademark people seeking Complainant�s website with its trademarked slogan are being misdirected to respondent�s website. Complainant contends that Internet users may be confused as to KSBJ�s affiliation, sponsorship or endorsement of the website, or they may believe that KSBJ is the source of the information provided on the website.
Complainant claims that Respondent does not have any rights or legitimate interests in the domain name. Complainant alleges that Respondent did not post any material on his website in connection with a bona fide offering of goods or services until after he was contacted regarding the present dispute. Alternatively, Complainant alleges that Respondent has never been commonly known by the domain name, or that Respondent has not made any legitimate or fair use of the domain name.
Complainant alleges that because Respondent resides within the Houston metropolitan area in a town that is only 50 miles from Complainant�s primary transmitter, which has a 90 mile range, and because Complainant advertises its slogan on billboards, posters and bumper stickers in the Houston metropolitan area Respondent had actual notice of their mark, and by inference, acted in bad faith in registering the domain name.
B. Respondent
Respondent claims that Complainant�s trademark in the phrase "God listens" is for a narrow set of services that does not cover Respondent�s use of the phrase in the domain name. Respondent further claims that the phrase is commonly used in all major world religions and that Respondent�s use is a non-infringing fair use because Respondent is seeking to promote ideas that God listens to people of all faiths. Thus, any similarity between the mark and the domain name is diminished by the differences between the audiences targeted and the messages disseminated by the parties.
Respondent asserts that it has legitimate rights and interests in the domain name. Specifically, it asserts that it is using the phrase to further its mission of disseminating non-denominational faith-based information to Internet users and that this use does not overlap with Complainant�s mission of providing educational services for Christian living. Respondent asserts that Russell Ministries is a registered tax-exempt organization promoting the ideas of living in harmony with all creation and providing related information.
Respondent claims that it did not register and is not using the domain name in bad faith. Respondent asserts, through the Declaration of George Russell, that it was unaware of Complainant�s registered trademark when it registered the domain name and did not become aware of the mark until Complainant first contacted respondent. Respondent further asserts that the domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant.
Respondent claims that it and Complainant are not competitors and that the domain name was not registered by Respondent to disrupt Complainant�s business. Respondent further notes that it did not register the name with the intent to attract users to its website for commercial gain by creating a likelihood of confusion with Complainant�s mark.
Although Respondent apparently did not post any content using the domain name until after it was first contacted by Complainant, Respondent contends that the delay occurred because Russell Ministries is single-handedly operated by Russell in his spare time and without pay.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "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". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
B. Application of Paragraph 4 to the Facts
Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has trademark rights to GOD LISTENS and Respondent�s domain name incorporates Complainant�s mark in its entirety with the mere addition of the gTLD. The Panel finds, therefore, that Respondent�s domain name is identical to Complainant�s mark. The Panel does not address the validity or strength of Complainant�s trademark.
Registration and use in bad faith
The Policy requires that Complainant prove that Respondent registered and used the domain name in bad faith. Complainant has put forth scant evidence that would tend to show that Respondent registered or is using the domain name in bad faith.
Complainant alleges that Respondent has attempted to "profit directly or indirectly from the goodwill that KSBJ has built, and is continuing to build up, in its GOD LISTENS mark, by selling the domain names either to KSBJ or to someone who would transfer the domain names to KSBJ". This allegation, if proven, would permit a finding of bad faith under Paragraph 4(b)(i) of the Policy. Complainant provides no evidence, however, in its complaint or exhibits to support this allegation. The Panel finds no support in the facts for such an allegation. Complainant has failed to establish that Respondent has taken any action whatsoever to attempt to sell the domain name.
Complainant does not directly assert any other evidence of bad faith. Complainant does allege that Internet users may be "misdirected" to Respondent�s site if they enter when seeking information about KSBJ. However, the fact that Internet users may not arrive at the site they are seeking does not, in itself, constitute bad faith.
The only other indirect proof of bad faith Complainant puts forth is the existence of the federally registered trademark prior to Respondent�s registration of the domain name in dispute. But, mere knowledge, constructive or otherwise, of a trademark does not constitute bad faith registration and use. Moreover, Respondent asserts that he was not aware of Complainant�s use of the phrase "God Listens" when he registered the domain name and Complainant does not provide sufficient evidence to negate Respondent�s claim.
Respondent further asserts that he never intended to sell the domain name, does not wish to transfer it, and is using it in a good faith effort to spread his beliefs.
Complainant has put forth insufficient evidence to prove Respondent�s bad faith and for this reason has failed to meet its burden of proof as set out in Paragraph 4(a) of the Policy.
Respondent�s rights and legitimate interests in the domain name
Because Complainant has not shown that Respondent registered and used the domain name in bad faith, it is not necessary for the Panel to determine whether Complainant has demonstrated that Respondent lacks a legitimate interest in the domain name.
7. Decision
The Complainant has not shown bad faith registration and use of the domain name by Respondent. Because the UDRP requires that the Complainant prove bad faith, pursuant to Paragraph 4(i) of the Policy, this Panel orders that the registration of the domain name remain with Respondent.
Roderick M. Thompson
Sole Panelist
June 8, 2001
Full & Egal Universal Law Academy