WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KSBJ v. John Michael Holland
WIPO Case D2001-0481
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 John Michael Holland, whose contact information is P.O. Box 712, Hitchcock, Texas, 77563, USA.
2. The Domain Name and Registrar
The domain names at issue are , registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA, and which is registered with R, Domain Register, 575 8th Ave., 11th Floor, New York, NY, 10018, 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. An Amended Complaint was received via e-mail on April 9, 2001 and in hardcopy on April 11, 2001, by the WIPO Center.
On April 6, 2001 and April 9, 2001, Verification Responses were received from R and Network Solutions, Inc., respectively, which served to: (1) confirm that each was in receipt of the notification of the domain name dispute; (2) confirm that Network Solutions, Inc., is the registrar of the domain name and that R is the registrar of the domain name ; (3) confirm that John Michael Holland is the current Registrant of the domain names; 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 names, 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 12, 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 fee for a single member Panel was paid by the Complainant on time and in the required amount. The Notification also set a deadline of May 1, 2001, by which the Respondent could make a Response to the Complaint. Respondent submitted a Response on April 30, 2001.
Both parties have submitted several supplemental materials, all of which the panel has considered in its discretion under Rule 12.
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 its 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
Complainant first notified Respondent of its asserted rights in the domain name on March 20, 2000. Respondent was not explicitly notified of Complainant�s assertions with respect to the domain name until commencement of these proceedings.
Respondent, John Michael Holland, is the registrant, either directly or through an alias, of the domain names and . Respondent registered on May 6, 1997 and on January 1, 2000. Before March 2000, there was no substantive content on either website beyond, at most, a secure log-in pop-up window that Respondent says appeared on the home page or the interior page corresponding to . Respondent has registered the assumed business names "" and with the County Clerk of Harris County, Texas, on May 8, 1997 and March 29, 2000 respectively.
5. Parties Contentions
A. Complainant
Complainant contends that Respondent�s domain names are confusingly similar to a trademark in which Complainant has rights. Complainant asserts that the domain names are identical to Complainant�s mark because they incorporate the trademark in its entirety and merely add the top-level domain extensions or .
Complainant argues that because Respondent�s domain names are identical or confusingly similar to its trademark people seeking Complainant�s website with its trademarked slogan are being misdirected to respondent�s linked website by either domain name. Complainant contends that Internet users may be confused as to KSBJ�s affiliation, sponsorship or endorsement of the Respondent�s website, or they may believe that KSBJ is the source of the information provided therein.
Complainant claims that Respondent does not have any rights or legitimate interests in the domain names. Complainant alleges that Respondent did not post any material on websites linked to either domain name until after he was contacted regarding the present dispute. Additionally, Complainant alleges that Respondent has never been commonly known by the domain names, or that Respondent has not made any legitimate or fair use of the domain names.
Complainant asserts that Respondent�s registration and use of the domain names was in bad faith, alleging that Respondent is attempting to profit directly or indirectly from the goodwill Complainant has build on its trademark by trying to sell the website pertaining to and for $25,000.
B. Respondent
Respondent asserts, on his own behalf, that he has legitimate rights and interests in the domain names. Specifically, Respondent argues that his use is a non-infringing fair use because his website corresponds to commercial enterprises, under the assumed business names and , intended to provide services to "fund a movement to stop the terrible abuses of children."
Respondent argues that the phrase "God listens" is commonly used in all major world religions and that he therefore has a right to use it as a domain name and in furtherance of his goals because such uses do not infringe on Complainant�s trademark.
Respondent asserts that his offer for sale of the domain names in July and August of 2000 was precipitated by concern for the welfare of his children and should not be used to indicate bad faith registration and use.
Respondent contends that he is under extreme hardship due to personal difficulties relating to employment, health, and the welfare of his children, and that this hardship materially affects his ability to respond to the Complaint. He has thus requested a 90-day extension to permit him to secure funding for legal counsel.
6. Discussion and Findings
A. Respondent�s Request for an Extension
Rule 10(c) of the Rules instructs that the Panel must ensure that the administrative proceeding "takes place with due expedition." It provides, however, that the Panel may "at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
Respondent has requested a 90-day extension to permit him to acquire funds to hire legal counsel and fund appointment of a three-member WIPO Panel. Respondent claims that current threats to his health and welfare have left him unable to secure funding for the above-mentioned needs.
The Panel sympathizes with the unfortunate personal circumstances described by Respondent. There is no indication, however, that Respondent would be able to gather any additional information over the next 90 days that was not already presented in the voluminous materials currently before the Panel. Respondent has provided ample documentation in multiple submissions to fully inform the Panel of his positions. Therefore, the Panel finds that no extension should be granted.
B. 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 names registered by the Respondent are 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 names; and,
(iii) that the domain names have been registered and used in bad faith.
C. 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 names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has trademark rights to GOD LISTENS and that Respondent�s domain names and incorporate Complainant�s mark in its entirety with the mere addition of the and gTLD. The Panel finds, therefore, that Respondent�s domain names are identical to Complainant�s mark.
Respondent�s rights and legitimate interests in the domain names
To succeed in its request for transfer, Complainant is required to prove that Respondent does not have any rights or legitimate interests in the contested domain names.
Complainant asserts that because Respondent cannot show any use of the domain name in connection with a bona fide offering of goods or services prior to notification of this dispute, Respondent has no legitimate interests in the name. Complainant alleges that nothing was on the website prior to notification of the dispute. Complainant�s sole proof on this score is the sworn statement by its general manager, dated March, 2001, that there was nothing posted on the websites pertaining to or . No supporting documentation, for instance, screen shots of blank web pages or DNS errors to show lack of content, were provided, which would have been helpful to the Panel. Although not relied upon by Complainant to make the assertion, Complainant�s Exhibit E showing Respondent�s many other assumed business names, several with extensions, provides some evidence that the domain names in dispute were not connected with any bona fide offering of goods or services.
Respondent asserts that the website had content, namely a hyperlink, posted since the time of its inception. Respondent claims that this link, which launched a login pop-up window, permitted password holders access to information detailing the website�s user history, among other things. However, Respondent has provided no documentation to support this allegation. On balance, the evidence before the Panel supports a conclusion that the site was not connected to a bona fide offering of goods or services prior to notification of this dispute.
Respondent appears to assert that his alias is evidence that he was commonly known by this name to demonstrate his right and legitimate interest in the name under Rule 4(c)(iii). The evidence shows that Respondent registered the assumed business name with the Harris County, Texas, County Clerk, on May 8, 1997. But there is nothing to indicate that Respondent has been commonly known by that domain name. To the contrary, the Panel notes that Respondent has registered dozens of business aliases. Thus the mere registration of as an assumed business name cannot support an inference that Respondent was commonly known by the domain name.
The Panel therefore finds that Complainant has met its burden, albeit marginally, of proving that Respondent does not have any rights or legitimate interests in the domain name and that Respondent has failed to rebut this.
Respondent notes that Complainant made no mention of the domain name in its initial letter, which served to give Respondent notice of the dispute over the domain name. In fact, it appears that Complainant made no mention of any dispute over the registration of until filing its complaint with WIPO. Nevertheless, the Panel finds that the letter shows Respondent was on notice of a dispute surrounding the second-level domain name and Complainant�s interest in protecting its registered trademark GOD LISTENS.
Respondent�s rebuttal, as with , are the registration of an assumed business name corresponding to the domain name and his assertions that the business name and domain name represent attempts to combat child abuse. Again, however, Respondent provides no probative evidence to demonstrate that the business name registration was anything more than an attempt to shore up rights in the domain names. The registration of the assumed name occurred on March 29, 2000, just nine days after Respondent was notified of the dispute over . This tends to show Respondent was aware of the dispute and its direct connection to the domain name, and may have sought the alias in response.
The Panel therefore determines that the Complainant has met its initial burden of proving that Respondent does not have any rights or legitimate interests in the domain name and that Respondent has failed to rebut this.
Registration and use in bad faith
The Policy requires that Complainant prove that Respondent registered and used the domain names 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, permits a finding of bad faith use under Paragraph 4(b)(i) of the Policy.
Complainant�s evidence of Respondent�s offer is Exhibit D, a written offer for sale of the website on August 1, 2000. Complainant�s Exhibit V provides copies of two web pages downloaded July 31, 2000, corresponding to the and domain names that show the websites are for sale for $25,000 and that interested parties should contact Respondent. Complainant further alleges that, on August 1, 2000, Respondent verbally communicated to Complainant�s counsel his interest in transferring the domain names to a third party for $25,000, if the third party were permitted to donate the names to Complainant in exchange for a tax deduction and airtime credit on the radio station.
Respondent does not dispute the posting of the offering of the domain names for sale. Instead, Respondent contends that circumstances regarding his children�s well-being necessitated his offers for sale of the websites, and that he never intended to register or use 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� for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name." See Paragraph 4(b)(i) of the Rules. However, Respondent�s argument falls short.
While the Panel does not doubt Respondent�s sincere desire to seek financial assistance to alleviate the problems facing his children, his posting did not seek donations for this purpose, but was an explicit offer of the website for sale. Given Respondent�s awareness of Complainant�s interest in the website, the Panel the offer is proof of Respondent�s bad faith use.
The Complainant must also prove that the Respondent registered the names in bad faith. Although not used by Counsel for this purpose, Respondent�s registration of aliases corresponding to other Internet domain names, taken in light of the complete absence of coherent evidence of legitimate interests in the websites, as described above, leads to a conclusion that the registration of the names was in bad faith within the meaning of the Rules.
7. Decision
The Panel concludes that the Complainant has shown that the domain names are identical to its trademark, that the Respondent does not have rights or legitimate interests in the domain names, and that Respondent registered and used the domain names in bad faith. Because Complainant has met the requirements of the UDRP, the Panel orders that the registration of the domain names and be transferred to Complainant.
Roderick M. Thompson
Sole Panelist
June 28, 2001
Full & Egal Universal Law Academy