WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gene Edwards v. David Miller
Case No. D2003-0339
1. The Parties
The Complainant is Gene Edwards of Jacksonville, Florida, United States of America, who is represented by Andrea T. Tullo, Esq. of Shumaker, Loop & Kendrick, LLP of Tampa, Florida, United States of America.
The Respondent is David Miller of Beverly Hills, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with Go Daddy Software of Scottsdale, Arizona, the United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2003. Also on May 2, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the disputed domain name. Still on May 2, 2003, Go Daddy Software 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 this proceeding began on May 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set at May 28, 2003. The Response was filed with the Center on May 27, 2003.
The Center appointed Dennis A. Foster as the sole panelist for this Case on June 5, 2003. 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.
This Decision was due on June 19, 2003, but the Panel requested an extension until July 7, 2003, and subsequently an extension until July 14, 2003.
4. Factual Background
The Complainant is a well-known minister of the Christian faith whose notoriety is enhanced by his frequent appearances on television. The Complainant has authored many books in connection with his religious views.
The Respondent is listed as the registrant of the disputed domain name. The record of registration was created on October 1, 2002. The Respondent is using the disputed domain name to host a web site that comments on and criticizes the Complainant's ministry.
On December 4, 2002, the Complainant sent the Respondent a letter alleging trademark infringement and demanding transfer of the disputed domain name (Complaint Exhibit E). The Respondent replied on December 12, 2002, arguing among other things that he had a right to use the disputed domain name to run a "responsible opinion site" about the Complainant (Response Exhibit A).
5. Parties� Contentions
A. Complainant
- The Complainant heads an international Christian ministry. The Complainant has appeared frequently on television in this capacity, gaining considerable notoriety. The Complainant has also authored approximately thirty Christian books.
- The "Gene Edwards" mark, owned by the Complainant, has achieved fame and become synonymous in the minds of the public with the Christian House Church movement.
- The Complainant owns the domain name, , having registered it prior to the registration of the disputed domain name.
- The disputed domain name is identical or confusingly similar to the Complainant's "Gene Edwards" mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The domain name is connected to a web site that portrays the Complainant in a false and disparaging light. The Respondent's use of the disputed domain name violates the Complainants' rights of privacy and publicity and constitutes unfair competition.
- The Respondent registered and has used the disputed domain name in bad faith. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the "Gene Edwards" mark as to source, sponsorship, affiliation, or endorsement. The Respondent's use of the name dilutes the value of the Complainant's mark. The Complainant's fame and repute in the world make it inconceivable that the Respondent's use of the disputed domain name would not constitute infringement.
- The Respondent's refusal to transfer the disputed domain name after being requested to do so by the Complainant shows that the Respondent's purpose in using the name is to disrupt the Complainant's business.
B. Respondent
- Although the name, "Gene Edwards", has acquired considerable fame and notoriety, the Complainant does not have trademark or service mark rights in that name. The Complainant has provided no evidence showing that name to be used in a commercial way to sell a product or service.
- The Final Report of the Second WIPO Internet Domain Name Process clearly indicates that persons who have gained eminence and respect, but have not profited from their reputation in commerce, may not avail themselves of the Policy for protection.
- The Christian Church Movement for which the Complainant claims to minister is not an institution seeking financial gain. The website at , actually owned by Destiny Ministries, does not sell any products or services, and the company, Christian Books Publishing House, Inc., which sells the Complainant's books, is a non-profit corporation. The Complainant does not use the name, "Gene Edwards", as a mark to sell books.
- The application for a United States trademark registration by a group affiliated with the Complainant for the mark, "Gene Edwards' Ministry", demonstrates that the Complainant did not really believe that he had common law trademark rights in the personal name, "Gene Edwards".
- The Respondent acknowledges the similarity between the disputed domain name and the Complainant's personal name. The Respondent has used this similarity to facilitate dissemination of his opinions about the Complainant and his ministry, a legitimate interest.
- The Respondent has not used the disputed domain name for commercial gain. Respondent's web site contains no solicitation for funds, nor has the Respondent ever received any monetary contributions from anyone because of that web site.
- The Respondent did not register or use the disputed domain name in bad faith. The Respondent has never offered to sell the disputed domain name to the Complainant or anybody else. The Respondent did not register the name to prevent the Complainant from registering it, and is not a competitor of the Complainant.
- The Complaint was brought in bad faith and, combined with the Complainant's threats of legal action, is an attempt to cast a chilling effect upon free speech use of the web site at the disputed domain name. After the Complainant's initial letter to the Respondent, the Complainant has refused to communicate with the Respondent despite the Respondent's requests to do so, an indication of bad faith. The original owner of the disputed domain name transferred it to the Respondent because of intimidating threats by the Complainant.
6. Discussion and Findings
In accordance with paragraph 15(a) of the Rules, the Panel is instructed to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail in this proceeding and be awarded the disputed domain name if the Complainant can prove the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
Complainant has neither contended nor offered evidence in this proceeding that he owns a registered trademark or service mark for the name "Gene Edwards". However, it has been established in prior proceedings under the Policy that a complainant's rights in a name may be protected if it establishes it has common law trademark or service mark rights in the name. See for example United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005 (March 27, 2002) and Cedar Trade Associates, Inc. v. Gregg Ricks, NAF Case No. FA93633 (February 25, 2000).
In this Case, the Complainant emphasizes the degree of fame and notoriety attached to the Complainant's name, and the Panel notes that there have been various cases brought under the Policy by famous singers and actors among others claiming common law rights in their names. In many of those cases the complainants have prevailed. See Helen Folsade Adu known as Sade v. Quantum Computer Services Inc., WIPO Case No. D2000-0794 (September 26, 2000); Mick Jagger v. Denny Hammerton, NAF Case No. FA95261 (September 11, 2000); and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).
A prior case with a fact pattern comparable to the instant Case is The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, P, and G, WIPO Case No. D2002-0184 (June 3, 2002). The principal complainant in that case, Dr. Jerry Falwell, is a United States Christian minister whose notoriety matches and perhaps even exceeds that of the Complainant. There the panel determined that the complainant had not shown that his ministry and use of his name were intended to generate revenues based on the supply of good and services. (The Panel believes that issues related to the Falwell domain names have been the subject of later litigations on a basis other than the UDRP.)
However, in Falwell, supra, there was no contention listed that the complainant had authored books, while in the present case the Complainant has shown that he is credited with tens of religious books. It is well-settled under the Policy that writing and selling books may confer common law trademark rights on the author�s name (see Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, (May 22, 2000) where the disputed domain name was ; and Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209, March 26, 2001, where the disputed domain name was ).
The Panel notes that in both these cases (Jeanette Winterson and Margaret Drabble) the authors endeavored to show they were selling their books on a commercial basis. For authorship alone does not necessarily confer trademark or service mark status on the author's name, especially, as in this case, where it is far from clear whether the books are published on a commercial basis.
For reasons the Panel cannot fathom, the Complainant has made little effort to convince the Panel that it has common law trademark rights in the disputed domain name, . The Complainant�s entire argument on this issue is as follows:
Quote:
Gene Edwards has an international Christian ministry. He has appeared on television and is an author. By all interests Mr. Edwards has earned considerable notoriety and benefit, the attributions of which are recognized through his identity and name. Gene Edwards owns the Domain Name "G," the home page for which is annexed as Exhibit A. Gene Edwards is the author of approximately thirty Christian books. See, /books.html, annexed as Exhibit B.
Through long, extensive, and continuous use, and through extensive work and travel in his ministry, the Gene Edwards Mark has achieved fame, has become synonymous in the minds of the public with the Christian House Church movement, and serves as a symbol of the goodwill and excellent reputation associated with the Christian House Church Movement. The Gene Edwards Mark is famous and entitled to the widest scope of protection afforded by law, including protection against dilution. Moreover, Mr. Edwards has a common law right to publicity in his name.
Gene Edwards secured and utilized the domain name "G" on a date substantially prior to the date on which the Respondent registered the domain name "G."
Unquote
At Annex A, the home page for the domain name , the Complainant has exhibited a picture of Mr. Gene Edwards and his schedule. At Annex B, the Complainant has exhibited books written by Mr. Edwards. There is the notation: "All of the following books can be ordered from SeedSowers Publishing House." However, as the Respondent points out, there are no prices for the books. Ordinarily, the Panel would be quite willing to assume that the Complainant writes and sells his books to make money from them. But the Panel does not believe this is necessarily a fair assumption to make in the context of an evangelical Christian minister.
The lack of proof of the commercial intent is even more detrimental to the Complainant�s contentions regarding his public appearances in various media. Again, in the religious context of the Complainant�s activities, the Panel is not prepared to assume that these are commercial as well as religious undertakings.
In a recent similar case, Chinmoy Kumar Ghose v. ICDS and Maria Sliwa, WIPO Case No. D2003-0248 (May 22, 2003), the Panel found that, though it was a close call, the Complainant had succeeded in establishing that he had trademark rights in his name, Sri Chinmoy. This case was brought by an Indian guru who was well known for his philosophical if not religious teaching and writings. There the Panel stated:
"There is evidence of published works being sold online at under or by reference to the name �Sri Chinmoy�, and some of those works appear to have been on the market since the 1980�s. There is also some (more limited) evidence of the name �Sri Chinmoy� being used as an identifier of a broadcasting service (a radio station), and also to identify a meditation center run by the Complainant (although there is nothing to tell the Panel whether or not the meditation center is operated as a commercial enterprise). It is not strong evidence but on balance the Panel finds that there has been sufficient use of the SRI CHINMOY mark in association with goods or services of the Complainant, for him to have acquired common law rights in the mark."
The Panel wishes to reiterate that it sees nothing wrong with the Complainant as a minister establishing common law trademark rights in his name by using it in commerce like the authors and entertainers cited above. However, the Panel finds the Complainant has not shown that he has used his name in commerce so as to acquire common law trademark rights.
Accordingly, the Panel finds that the Complainant has failed to carry his burden of demonstrating that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (the Policy, paragraph 4(a)(i) .
Since the Complainant must prevail on each of the three criteria listed in paragraph 4(a) of the Policy to obtain transfer of the disputed domain name in this proceeding, the Panel need not consider whether the Complainant has proved the Respondent's lack of rights or legitimate interests in the disputed domain name, or his bad faith registration and use.
Reverse Domain Name Hijacking
The Respondent has requested that the Panel consider whether the Complainant's actions in this case have been brought in bad faith and thus constitute reverse domain name hijacking under the Policy. As noted above, there have been many cases decided under the Policy where famous people, particularly authors, have proved they had common law trademark rights and have ultimately obtained the transfer of disputed domain names. In light of those prior rulings, and taking into account the alleged use of the domain name, the Panel does not find that the Complainant's contentions are so unreasonable as to warrant a finding of reverse domain name hijacking.
7. Decision
The Panel has found that the Complainant failed to demonstrate that the disputed domain name, , is identical or confusingly similar to a trademark or service mark in which the Complainant has rights per paragraph 4(a)(i) of the Policy.
Therefore, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel denies the complaint.
Dennis A. Foster
Sole Panelist
Dated: July 14, 2003
Full & Egal Universal Law Academy