Complainant is Culture of Life Foundation of Washington, DC, United States of America, represented by Faegre Baker Daniels, LLP, United States of America.
Respondent is James Nolan, Crossroads, Inc. of Columbia, Maryland, United States of America / C-FAM Catholic Family & Human Rights Institute of Washington, DC, United States of America, represented by Greenberg & Lieberman, LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2013, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2013. On September 3, 2013, the Center received an e-mail communication from Mr. A. Ruse, the “President of the Catholic Family and Human Rights Institute”, stating that “the domain in question belongs not to James Nolan but to the Catholic Family and Human Rights Institute”. Complainant replied on September 5, 2013. The formal Response was filed with the Center on September 20, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 1, 2013. 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.
On October 7, 2013, Complainant submitted an unsolicited Supplemental Complaint with three additional annexes. In its discretion, the Panel has decided to consider the supplemental filing because it addresses points made in Respondent’s Response which could not necessarily have been reasonably foreseen. The Panel also issued Procedural Order No. 1 on October 14, 2013 which permitted Respondent to submit a response to Complainant’s Supplemental Filing on or before October 18, 2013. Respondent submitted no such response. 4. Factual Background
Complainant, located in Washington, D.C., United States of America, is a not-for-profit corporation that offers association and educational services concerning various social policy issues, including pro-life, pro-family, bioethics, euthanasia, and stem cell research. Complainant has provided such services since March 1997 under the mark CULTURE OF LIFE FOUNDATION. The CULTURE OF LIFE FOUNDATION service mark was registered with the United States Patent and Trademark Office (USPTO) in July 2007. This USPTO registration bears a disclaimer confirming that Complainant has no claim to “the exclusive right to use ‘foundation’, apart from the mark as shown.”
Complainant also registered the domain name in 1998 and has used that domain name to host a website offering Complainant’s services under the CULTURE OF LIFE FOUNDATION mark. A screenshot of Complainant’s website reveals that Complainant has posted various articles in recent months, including: “The Morality of Using Combat Drones,” “Coping When the Politics of Life Issues Touch Your Family: Pray Silently, Love Openly,” “The Selfless and the Selfish: Who is Really Happy?,” “Human-Pig Chimeras & Liver ‘Buds’: Ethical Reflections on Two Recent Biotechnologies,” and “Modesty: Who’s Responsible?” This website also invites visitors to make donations to Complainant.
The Domain Name was first registered on March 20, 2000. It appears from the record that Respondent acquired the Domain Name registration from a prior registrant in April 2011.
On August 23, 2013 screenshot of the website to which the Domain Name resolves contains various information about Religious Orders. An earlier iteration of the website, from December 2011, prominently displays the words “C-FAM” and “Catholic Family and Human Rights Institute.” The home page features articles on pro-life issues and AIDS prevention programs. Complainant alleges that Respondent altered the website currently appearing at the Domain Name in response to communications from Complainant. These communications are not part of the record.
Complainant also asserts that the president of C-FAM and the Catholic Family and Human Rights Institute is Mr. Ruse, who was Complainant’s president and executive director from 2003 to July 2006.
In an affidavit, Mr. Ruse states that C-FAM acquired the Domain Name from Crossroads, Inc. in May 2011, but the WhoIs information was not changed to reflect the new registrant. Mr. Ruse also states that C-FAM is a non-profit organization that accepts charitable donations. As respects the Domain Name, Mr. Ruse states that C-FAM uses the term “culture of life” in its generic sense as “respect for human life from the first moment of conception until it [sic] natural end.”
In its Supplemental Complaint, Complainant attaches several e-mails from 2006 and 2007 either composed by or sent to Mr. Ruse (while he was Complainant’s president). In one such email exchange in January 2006, a Mr. J. Buck advises Mr. Ruse that he has founded Culture of Life, Inc. In response, Mr. Ruse wrote to Mr. Buck: “[t]he fact is that as far as pro-life and pro-family groups are concerned the Culture of Life Foundation and Institute legally owns the Culture of Life name. No one else can use that as the name of their own pro-life group.”
In late July 2007, a few days after Complainant obtained its USPTO registration of the mark CULTURE OF LIFE FOUNDATION, Mr. Ruse sent an internal email (captioned “Trademark, suggestions…”) to his former colleague Mr. J. Whelan, who is currently chairman of Complainant, which stated: “[n]ow that you have it, [J.], you should move right away to protect it. You should get the mark on the website and you should have the lawyers write a letter to [Mr.] Buck and get him to stop using your trademarked name.” Mr. Ruse followed up later that day and advised Mr. Whelan that there was another group in Florida, using the domain name , that “you will have to approach.” 5. Parties’ Contentions A. Complainant
Complainant alleges that Respondent registered the Domain Name with full knowledge of Complainant’s trademark rights and has permitted C-FAM, whose president used to be Complainant’s president, to operate a website where confusingly similar services and content are featured. Complainant also alleges that Respondent is using the website to which the Domain Name resolves for commercial gain by misleadingly diverting consumers. Complainant seeks a transfer of the Domain Name. B. Respondent
Respondent’s main point is that the term “culture of life” is a generic term and Respondent is using it in that sense. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in the registered service mark CULTURE OF LIFE FOUNDATION. The Domain Name incorporates this mark in its entirety except for the non-distinctive word “foundation.” The non-distinctive nature of that word is confirmed by the fact that Complainant’s USPTO registration expressly disclaims any exclusive right to that word. The Panel finds that the Domain Name is confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent claims to be using the Domain Name in a generic or descriptive sense, because Respondent promotes the Catholic concept of “culture of life,” and hence asserts that it has a legitimate interest in the Domain Name by virtue of Policy paragraph 4(c)(iii). The Panel disagrees. The Panel finds that Respondent is not using the Domain Name in primarily a descriptive sense, but rather mainly as a source identifier. The 2006 and 2007 email exchanges by Mr. Ruse, while he served as Complainant’s president, belie Respondent’s current contention that “culture of life” is not being used as a source identifier.
As soon as Complainant secured its USPTO registration for the CULTURE OF LIFE FOUNDATION service mark in 2007, Mr. Ruse was eager to pursue legal recourse against other parties who were using a company name or domain name that included the term “culture of life.” It bears noting that Mr. Ruse took this approach even though his company’s (i.e., Complainant’s) mark was CULTURE OF LIFE FOUNDATION, with the additional word “foundation.” In his own words, Mr. Ruse stated that “no one else [besides Complainant] can use that [‘culture of life’] as the name of their own pro-life group.” As noted above, these emails were presented in Complainant’s Supplemental Complaint, but Respondent made no response to them and hence gave no explanation why Respondent, as opposed to the other pro-life parties against whom Mr. Ruse felt entitled to assert legal rights, should have a valid claim to a right or legitimate interest in respect of the Domain Name.
On this record, the Panel concludes that Respondent is in fact using the Domain Name as a source identifier to misleadingly divert Internet users, and is not making a fair or nominal use of the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For much the same reason as was discussed in the previous section, the Panel concludes that the emails written by Mr. Ruse are dispositive of this case. These emails show that Mr. Ruse, while he was Complainant’s president, knew perfectly well the value of Complainant’s CULTURE OF LIFE FOUNDATION trademark rights, and he pressed his colleagues to enforce such rights vis-à-vis other parties who were using the words “culture of life” (without the word “foundation”) in their company name or in a domain name. It is unknown whether Mr. Ruse experienced some type of epiphany between his comments in 2007 and his use of the Domain Name from 2011 forward, but in any event Respondent’s current position is decidedly at odds with Mr. Ruse’s previous posture. Put another way, the Mr. Ruse who served as Complainant’s president in 2007 almost certainly would have taken legal action against the registrant of the Domain Name if he were still Complainant’s president today.
The record on this score is fairly threadbare, but the Panel also detects a hint of a turf war or some bad blood between Mr. Ruse and his former organization, Complainant, despite the fact that both entities appear to be advocating the same fundamental viewpoint on certain moral issues.
Respondent does not deny the allegation that it has derived financial gain from the website to which the Domain Name resolves. The Panel concludes that Respondent has registered and is using the bad faith within the meaning of Policy paragraphs 4(b)(iii) and 4(b)(iv).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: October 23, 2013
Full & Egal Universal Law Academy