Complainant is The American Association of the Order of St. Lazarus, Inc. of San Diego, California, United States of America, represented by Solomon Ward Seidenwurm & Smith, LLP, United States of America.
Respondent is Howard Browne / Order of St Lazarus of Williamsburg, Virginia, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed 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 May 6, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 2014, providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 15, 2014.
The Center verified that the Complaint, together with the amended 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 May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. The Response was filed with the Center on May 21, 2014.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on May 28, 2014. 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
Complainant is The American Association of the Order of St. Lazarus, Inc., and goes by the name The Military and Hospitaller Order of Saint Lazarus of Jerusalem. Complainant is located in San Diego, California.
Complainant is a charity that focuses on providing care to the poor and sick, with attention to organ donation awareness and Hansen's disease. Complainant has trademark registrations for several marks that use the terms "Saint Lazarus" and "Lazarus," including:
THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM (U.S. Reg. No. 1,775,577); registered on June 8, 1993, for Class 42 "charitable and religious services; namely, the promotion of humanitarian causes";
THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM and design (U.S. Reg. No. 1,776,862); registered on June 15, 1993, for Class 42 "charitable and religious services; namely, the promotion of humanitarian causes";
LAZARUS and design (U.S. Reg. No. 2110942); registered on November 4, 1997, for Class 16 "newsletters for promoting public awareness of humanitarian causes," Class 36 "charitable fund raising services for promoting public awareness of humanitarian causes," and Class 42 "promoting public awareness of humanitarian causes"; no claim is made to the standard characters;
LAZARUS and design (Benelux/WIPO Reg. No. 595311); registered on March 12, 1992, in Class 36, 41, and 42; Madrid Protocol protection refused in Germany.
Respondent is Howard Browne, the secretary and webmaster for the Order of St. Lazarus, located in Williamsburg, Virginia. Respondent is a retired doctor, who has been an active member of certain "orders" of the Order of Saint Lazarus for decades.
On May 4, 2010, Respondent obtained the domain name , which Complainant now contests.
In 2006 Complainant and Respondent settled a trademark infringement suit (hereinafter the "2006 Agreement"). The settlement was between Complainant and Respondent Browne, not the organization that Respondent Browne represented. The 2006 Agreement required Respondent in part to transfer the domain name and refrain from registering certain other domain names. 5. Parties' Contentions A. Complainant
Complainant submits that it has exclusive rights in various "Saint Lazarus" marks, which are infringed by Respondent's registration and use of the disputed domain name. In general, Complainant claims common law rights "as the only legitimate organization utilizing the name 'The Military and Hospitaller Order of Saint Lazarus of Jerusalem' since the crusades . . . in connection with providing charitable services throughout the world." Complaint at VI(A).
Complainant asserts that the disputed domain name is confusingly similar to its registered marks because the disputed domain name includes "Saint Lazarus" and the reference to "USA" does little to distinguish the parties, both of which reside in the United States.
Complainant asserts that Respondent has no rights or legitimate interest in the dispute domain because Respondent has not established any rights to the "Saint Lazarus" name, has never been known by that name, and has only adopted the domain name to create confusion. Complainant also points to prior litigation between the parties, involving another "Saint Lazarus" domain name. In the 2006 Agreement, the parties agreed in part that Respondent would "forever refrain from registering a domain name that includes the terms 'stlazarus' or st-lazarus,' or any domain name that includes ALL of the words 'order,' 'saint,' and 'lazarus' in any domain." Complaint, Annex 4 at 1(g).
Complainant asserts that Respondent's registration and use of the disputed domain name were in bad faith because the website is designed to mislead visitors by directing them to , a group that is not affiliated with Complainant. Complainant notes the similarities between Complainant's site and the site Respondent has created at the disputed domain name, which suggest that Respondent is merely trying to take advantage of the good will of Complainant. B. Respondent
Respondent first addresses the history of the Order of Saint Lazarus, noting the fragmented nature of the organization since its inception one thousand years ago.
Respondent initially argues that Complainant illegitimately asserts rights in the term "Saint Lazarus" which should be public domain, and that the "words, colors, mottos, [and] names [associated with the Order of Saint Lazarus] should be in the public domain were it not for the unbelievable naiveté of the U.S. Patent Office." Response at 3.
Respondent simply asserts that there is no confusion between and .
Respondent argues that he does have rights in the term "Saint Lazarus" as a member of the Order of Saint Lazarus using the iconography of the religious order. In support of this contention, Respondent points to seventeen third-party users who make use of "Saint Lazarus," or some variation thereof, in domain names and related iconography on those websites.
Respondent states that he has not registered and used the disputed domain in bad faith, because the site is a "factual site designed to answer questions about the Order." Id.
Finally, Respondent notes he was not contacted by Complainant prior to the filing of the Complaint, in violation of the 2006 Agreement section 3(g), which requires "that in the event of a perceived violation of this agreement, the party claiming the alleged violation shall contact the other party by telephone, mail, email or in person, to try to resolve the alleged violation and to try to work out the dispute prior to filing an action or seeking relief from a court." 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent's disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent's disputed domain name has been registered and is being used in bad faith.
The Panel considers each element in order. A. 2006 Agreement
At the outset, the Panel will dispel either parties' reliance on the 2006 Agreement which was reached as a settlement to a prior dispute involving the transfer of from Respondent to Complainant. Three paragraphs seem most pertinent to the present dispute.
First, in paragraph 1(g) of the 2006 Agreement, Respondent agrees "forever refrain from registering a domain name that includes the terms 'stlazarus' or st-lazarus,' or any domain name that includes ALL of the words 'order,' 'saint,' and 'lazarus' in any domain." This commitment is not controlling of the present dispute for two reasons. First, the disputed domain, , does not include "stlazarus" or "st-lazarus," but rather uses "saintlazarus." Second, the disputed domain does not use all three words ("order," "saint," and "lazarus") in the domain name. Respondent has not violated this section of the 2006 Agreement, so Complainant cannot rely on it to assert Respondent's registration and use in bad faith.
Next, in paragraph 3(g) of the 2006 Agreement, the parties agree "that in the event of a perceived violation of this agreement, the party claiming the alleged violation shall contact the other party by telephone, mail, email or in person, to try to resolve the alleged violation and to try to work out the dispute prior to filing an action or seeking relief from a court." Respondent points to Complainant's failure to comply with this portion of the agreement as justification that Complainant is merely harassing him. However, this Panel notes the interpretation of this obligation is outside the scope of the Panel's review.
Finally, the Panel notes paragraph 1(e) of the 2006 Agreement, which reads:
"to forever refrain from using a trade name or mark including the term 'Saint Lazarus' or 'St. Lazarus' along with the words 'order' or 'military' in connection with charitable or religious services or as an indication of organizational membership with the exception of the trade names or marks HOSPITALLERS OF SAINT LAZARUS and HOSPITALLERS OF ST. LAZARUS, or other similar names or marks, and to include a prominent disclaimer of any association or affiliation with The Military and Hospitaller Order of Saint Lazarus of Jerusalem with any use of such trade names and marks." (emphasis added).
Although this section limits Respondent's rights in the "Saint Lazarus" terms, it carves out an important exception. Per the 2006 Agreement, Respondent is restricted from using "Saint Lazarus" in connection with "order" or "military" but not "hospitallers." Although Respondent is required to distinguish his "Saint Lazarus" from Complainant's "Saint Lazarus," the 2006 Agreement appears to still allow Respondent to use the central term: "Saint Lazarus." B. Identical or Confusingly Similar
Complainant has demonstrated rights in a number of trademarks that are related by the terms "Saint Lazarus" and "Lazarus." Notably, however, Complainant's registrations are for phrases that include "Saint Lazarus" as two of ten words, or for design marks that use the word "Lazarus" but do not claim the standard character elements of the mark. Despite these distinctions, the central argument remains the same: Complainant has certain rights in the phrase "Saint Lazarus" and the disputed domain name includes "saintlazarus."
"Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is 'confusingly similar' to the mark." Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743.
This Panel finds that although the disputed domain name does not include the entirety of Complainant's mark, it does utilize the dominant portion of the mark in a manner that could cause confusion among Internet users. Based on this confusing similarity, the Panel finds that Complainant has satisfied the threshold requirement. C. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, the complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the disputed domain name. After the complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Respondent can demonstrate rights and legitimate interests in several ways, including (1) using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services, (2) being commonly known by the disputed domain name, or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy paragraphs 4(c)(i)-(iii).
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name because Respondent has not established any rights to the "Saint Lazarus" name, has never been known by that name, and has only adopted the disputed domain name to create confusion.
Respondent argues that he is making a legitimate fair use of the disputed domain name. Respondent contends that he has rights in the term "Saint Lazarus" as a member of The Independent Commandery of the USA, of the Military and Hospitaller Order of Saint Lazarus of Jerusalem. Respondent argues that the 2006 Agreement does not bind the organization's use of "Saint Lazarus" and that his operation of the disputed domain name is only out of necessity for his role as webmaster of The Independent Commandery. Finally, Respondent asserts that the Complainant cannot have rights in the iconography of the Order of Saint Lazarus because it is public domain material.
The disputed domain name is used by the so-called Independent Commandery of the USA, of the Military and Hospitaller Order of Saint Lazarus of Jerusalem and operated by Respondent as webmaster of that organization. The Independent Commandery cannot accurately describe itself without using the term "Saint Lazarus." Although Complainant has rights in certain terms that include the phrase "Saint Lazarus," it does not appear to have a monopoly over the term "Saint Lazarus," which is used to identify a number of religious organizations around the world. Among these are The United Grand Priories of the Order of Saint Lazarus of Jerusalem, operating at , the Hospitaller Order of Saint Lazarus of Jerusalem Grand Priory of the United States, operating at , and the Union Corps Saint Lazarus International, operating at . All three of these organizations are distinct entities that make use of "Saint Lazarus" and use either "Lazarus" or "Saint Lazarus" in their domain names.
Respondent's use of the website is to provide factual information regarding the Order of Saint Lazarus and what seems to be his particular branch of that order. It appears that Respondent has a legitimate interest in using the name "Saint Lazarus," is associated with that name, and is using the name to provide bona fide information about its organization.
In total, the Panel concludes that Complainant has failed to carry its burden of proof that Respondent lacks rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy recognizes certain circumstances as evidence of registration and use of a domain name in bad faith.
There is no indication that Respondent has acquired the disputed domain name primarily to sell or transfer to Complainant, but rather it has actively used the disputed domain name for a legitimate purpose. Despite Complainant's arguments, it is not evident that Respondent has registered the disputed domain name to disrupt the business of Complainant. Respondent's website does not redirect to a competitor's site, , as Complainant averred. Nor does it mimic Complainant's site, as the two webpages are visually distinct. Thus, it is not evident that Respondent has used the disputed domain name to intentionally attract web traffic. If there were only a single entity representing the Order of Saint Lazarus, then Complainant's argument might carry more weight. However, the Internet user attempting to find Complainant's site through a web search will be presented with several options relating to the Order of Saint Lazarus, only one of which is Respondent's site.
The most likely argument Complainant could have made was that Respondent's registration was intended to prevent Complainant from reflecting its mark in the domain name space. However, Complainant does not raise this argument and the variety of domain names using some combination of "Saint" and "Lazarus" would dispel the notion that Respondent's registration was meant to block Complainant out of the domain name space.
In total, Complainant has failed to show that Respondent registered and used the disputed domain name in bad faith. On the balance, it appears that Respondent's registration of the disputed domain name was done to provide information on its particular Order of Saint Lazarus, and was not necessarily a bad faith attempt to obtain commercial gain from confusion with Complainant's name or mark.
Whether Respondent's use and registration violates the parties' 2006 Agreement is not for this Panel to decide, although for reasons stated above, it appears that the Agreement did not directly address the disputed domain name.
The Panel notes that there are aspects of the dispute that would appear to favor Complainant's case, such as the use by Respondent of Complainant's mark on the banner of the website linked to the disputed domain name, as well as an approximation of its logo. On the other hand, there are aspects of the dispute that would appear to favor Respondent's case, such as the unclear nature of Complainant's "corporate structure", the nature of Complainant's various trademarks (including those with design elements and disclaimers), the seeming wide range of third party "Saint Lazarus" uses and chapters, and the past proceedings between the parties. Taking all of these factors together, and based on the limited record before it, the Panel notes that the instant decision is without prejudice to the parties dispute resolution options which may include a court of competent jurisdiction. 7. Decision
For the foregoing reasons, the Complaint is denied.
Mark V.B. Partridge
Sole Panelist
Date: June 23, 2014
Full & Egal Universal Law Academy