Complainant is The American Association of the Order of St. Lazarus, Inc. of San Diego, California, United States of America ("US"), represented by Solomon Ward Seidenwurm & Smith, LLP,US.
Respondent is Thierry Villejust of Sunnyvale, California, US, represented by Venable, LLP, US. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd ("Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on May 7, 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 8, 2014, the Registrar transmitted by email to the Center its response confirming that the Respondent is listed as the registrant and providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("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 15, 2014 with the due date for the Response on June 4, 2014, in accordance with the Rules, paragraph 5(a). On May 15 and 18, 2014, the Center received email communications from Respondent requesting a simplified version of the Complaint and indicating that Respondent was contacting Complainant. On May 19, 2014, the Center responded, restating the due date for the Response and indicating that the communication would be forwarded to the Panel. Respondent's counsel subsequently contacted the Center requesting a two-week extension of time in which to submit a Response. Complainant stipulated to the requested extension, which the Center approved, and on June 10, 2014, in accordance with the Rules, paragraph 5(d), the Center notified the parties that the Response would be due on June 18, 2014. The Response was filed with the Center on June 19, 2014.1
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 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
This dispute involves two organizations, each of which claim their origins with the Military and Hospitaller Order of Saint Lazarus of Jerusalem, an order of chivalry founded by crusaders in the 11th century.
Complainant owns United States federal trademark registrations for: THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM, one as a word mark and the other a design mark that includes a Maltese cross, each for charitable and religious services. These marks were registered in 1993. Complainant also owns a United States federal trademark registration for a LAZARUS and design mark for charitable fund raising services, registered in 1997.
In 2011, Respondent registered the domain name . Visitors to the site are presented with a page bearing the title "Military and Hospitaller Order of Saint Lazarus of Jerusalem" and "Grand Baliwick [sic] of the USA." The page includes links to other pages that provide information about "The Military and Hospitaller Order of Saint Lazarus of Jerusalem" and its activities in the United States through the "Grand Bailiwick of the USA" organization, whose Grand Bailiff is Respondent. 5. Parties' Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant owns several United States trademark registrations that reference "Saint Lazarus," including THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM and multiple international trademarks that reference "Lazarus," including an international registration for a LAZARUS design mark.
Complainant is the only legitimate organization utilizing the name, "The Military and Hospitaller Order of Saint Lazarus of Jerusalem" since the crusades, and has established common law rights in the name in connection with providing charitable services throughout the world.
The disputed domain name is confusingly similar to Complainant's trademarks and is "essentially the same" as Complainant's domain name, spelling out the word "saint" rather than using the abbreviation "st" and adding "usa" in an apparent reference to Respondent's location. These differences do not eliminate confusion between the domain names.
Complainant has repeatedly received complaints from individuals who were confused about Complainant's relationship to the "www." website. 2. Rights or Legitimate Interests
Complainant has not authorized Respondent to register the disputed domain name or to use any of Complainant's marks.
Respondent has not established that it possesses any rights to the "Saint Lazarus" name in his domain name. Respondent has never been known by the domain name, nor is there any reason to believe that Respondent has utilized the name "Military and Hospitaller Order of Saint Lazarus of Jerusalem" for any purpose beyond creating confusion.
Finally, Respondent does not appear to be making a fair use of Complainant's mark. 3. Registered and Used in Bad Faith
It appears that the disputed domain name and the content on the website is designed to confuse visitors into believing that Respondent represents "The Military and Hospitaller Order of Saint Lazarus of Jerusalem," which Complainant has represented for centuries and as to which it possesses trademark rights in the US and internationally. The website displays a similar coat of arms and sets forth a similar mission statement, apparently in an effort to "fraudulently mislead its visitors to the detriment of Complainant".
The use of a domain name that can easily be confused with Complainant's own provides compelling evidence that the purpose of the website is to create confusion. These similarities are not coincidental and strongly suggest that the domain name was purchased to take advantage of the good will Complainant has established in its own registered trademarks. B. Respondent
Respondent submits that this is a global, historical and complicated trademark dispute among obediences of the same Order of Chivalry, The Military and Hospitaller Order of Saint Lazarus of Jerusalem. This is not a dispute involving abusive registration of a domain name or cybersquatting. 1. Identical or Confusingly Similar
Complainant does not have rights to trademarks that may be asserted against Respondent. Respondent and Complainant represent two obediences of the ancient "Military and Hospitaller Order of Saint Lazarus of Jerusalem" and each have used the names and symbols of the Order for centuries, beginning in the 11th century.
Respondent's organization has roots in one faction of the Order. That faction has at times operated under the auspices of the Royal House of France, initially through the 1800s, after which time it operated without that protection. In 2004, when the Royal House of France resumed its protection, the Order split, resulting in more than one obedience. Respondent represents the US arm of an obedience that operates under the auspices of the French royal house known as the "Orleans obedience," while Complainant apparently represents another branch of the order known as the "international Malta obedience." Complainant's assertion that it is "the only legitimate organization to use the name" is unfounded and in fact there are numerous other entities using similar domain names.
Complainant's rights in its marks are not superior to those of Respondent and Respondent reserves the right to seek their cancellation.
The disputed domain name is not the same as, or confusingly similar to Complainant's US registered marks THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM, and the LAZARUS design mark, or its claimed international registration for the mark LAZURUS.
The disputed domain name is not identical to, or the principle feature of, the mark THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM. The phrase "saint lazarus usa" is not part of the mark. In addition, the phrase "Saint Lazarus" alone is merely a short portion of the full mark, and not a dominant portion that can be separated from the mark. Complainant's registration for the LAZARUS design mark does not give Complainant exclusive rights to use of the term "Lazarus" separately from the shield design of the mark. Complainant's international registration for LAZARUS does not give Complainant rights in the phrase "saintlazarususa." Complainant's assertion that its trademarks "make reference to Saint Lazarus" is not a basis for a finding that its registered marks are confusingly similar to the disputed domain name. 2. Rights or Legitimate Interests
Respondent is a member of the governing council of the Orleans obedience and serves as the Grand Bailiff of the Grand Bailiwick of the USA which engages in charitable activities in the United States through a nonprofit organization, Saint Lazare USA, Inc. Respondent registered the disputed domain name in 2011 his capacity as Grand Bailiff of the organization.
Respondent's organization, Saint Lazare USA, Inc., and the Orleans obedience of the Order, began using the domain name in connection with bona fide services in 2011, nearly three years before receiving notice of this dispute in May 2014.
The domain name is a representation of the name of Respondent's organization, "Saint Lazare USA, Inc.". 3. Registered and Used in Bad Faith
In light of Respondent's legitimate rights to use the disputed domain name, the third factor is moot. However, even if it were not, Complainant's claim would fail on this factor.
There is no evidence that Respondent registered the domain name to prevent Complainant from using it. Both parties are obediences to the same Order of Saint Lazarus. Both have been using and are known by the same name, "The Military and Hospitaller Order of Saint Lazarus of Jerusalem." The name has been used by the obediences globally for centuries, and in the US for decades. Others use the same or a similar name.
The parties do not compete. Both derive from the Order, which originated in the 11th century; thus Respondent has the same, if not more legitimate right to use terms associated with "The Military and Hospitaller Order of Saint Lazarus of Jerusalem."
There is no evidence that Respondent intended to disrupt Complainant's business. Respondent's organization uses the "www." website to present information about its charitable work in the US and includes links to the website for the international Order.
There is no evidence that Respondent registered the name to attract Internet users by trading on Complainant's alleged reputation or to cause confusion. This matter involves a world-wide, complicated dispute over the right to use an ancient name, "The Military and Hospitaller Order of Saint Lazarus of Jerusalem," and the symbols associated with the Order. Any confusion likely results the existence of more than one obedience of the same Order in the US.
This dispute does not involve abusive registration of a domain name or an intentional attempt to disrupt a commercial entity that could be resolved by the Center in this forum. 4. Reverse Domain Name Hijacking
Respondent submits that Complainant has engaged in reverse domain name hijacking. Complainant and Respondent each have a long history as an obedience of the same Order that have co-existed for an extended period of time. Respondent registered the disputed domain name and began use of the website in 2011 to promote his organization's obedience of the Order and its activities in the US.
Complainant is seeking to prevent Respondent's obedience from using the disputed domain name and attempting to restrict Respondent's obedience unfairly. The Complaint contains numerous irresponsible and erroneous assertions given Complainant's knowledge of the history of the Order, the coexisting obediences, and rights to use the Order's name and symbols, including:
Complainant is the only "legitimate organization utilizing the name, 'The Military and Hospitaller Order of Saint Lazarus of Jerusalem' since the crusades",
There is no reason to believe that "Respondent has utilized the name Military and Hospitaller Order of Saint Lazarus of Jerusalem for any purpose beyond creating confusion".
Complainant provides no actual proof of any bad faith. 6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect to it; and
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its marks. For purposes of considering identity or confusing similarity in this case, neither the ".com" generic Top-Level Domain nor the spacing are relevant.
Complainant has established that it has rights in the mark THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM and a mark that consists of LAZARUS and a design, as evidenced by its US federal registrations. Complainant has not established that it has rights in any other marks. Despite the assertion that Complainant "owns multiple international registrations which reference 'Lazarus'", the information relating to an international registration for the mark LAZARUS does not identify Complainant as the owner. Further, Complainant has not provided any evidence that it has acquired unregistered or common law rights in a mark that corresponds to its domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0", paragraph 1.7) (describing what a complainant should show to successfully assert common law or unregistered trademark rights). Accordingly, the Panel limits the remainder of its analysis on this element to the marks that are the subject of the three US registrations only.
Complainant does not argue that the disputed domain name is identical to its marks. Thus, Complainant must establish that the disputed domain name is confusingly similar to Complainant's marks, determined with reference to the degree of resemblance between the disputed domain name and mark at issue as to appearance, sound, and meaning. See, e.g., WIPO Overview 2.0, paragraph 1.2 (generally, test for confusing similarity involves straightforward comparison of trademark and alphanumeric string making up the domain name).
As a general matter, a domain name is likely to be deemed to be confusingly similar to a mark if it incorporates the mark or a variation or dominant portion of the mark; however, such a finding is not automatic. Here, the domain name does not incorporate the THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM mark in its entirety, but only the title and name "Saint Lazarus." The domain name does, however, incorporate the textual component of the LAZARUS and design mark in its entirety. For purposes of this analysis, the Panel generally follows the consensus view, and disregards stylized or design elements in assessing identity or confusing similarity. See WIPO Overview 20, paragraph 1.11.
Complainant's sole argument is that: "… by maintaining a domain name that references 'Saint Lazarus' within the domain "www.," Respondent has selected a domain name that is confusingly similar to multiple trademarks owned by Complainant bearing that name." However, it is the marks in their entirety that are to be compared for purposes of determining confusing similarity.
With respect to the mark THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM, the Panel notes that only a small portion of the mark-"Saint Lazarus"-is incorporated into the domain name. The Panel finds that the additional phrases surrounding that portion, namely, "the military and hospitaller order of" at the beginning and "of Jerusalem" at the end, result in significant differences in appearance, pronunciation, and meaning.4
Whether or not the is confusingly similar to Complainant's LAZARUS mark presents a slightly closer question. It is often the case that the addition of merely generic, descriptive, or geographic wording is not sufficient to distinguish a domain name from a mark. See WIPO Overview 2.0, paragraph 1.9. However, here, the addition of the term "saint" at the beginning of the domain name and the geographic reference to "USA" at the end do, in the Panel's view, result in meaningful differences in appearance, pronunciation, and meaning that distinguish the disputed domain name from Complainant's mark.
The Panel finds that the disputed domain name is not identical to or confusingly similar to a mark in which Complainant has rights.
In light of the conclusion that Complainant failed to establish the first element, it is not necessary to address the issue of Respondent's rights or legitimate interests in, or bad faith in registering and using, the disputed domain name. However, in the interests of completeness, and because Respondent argues that Complainant has engaged in reverse domain name hijacking, the Panel includes its findings on the second and third two elements. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Question 2.1(once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you 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 (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 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.
Complainant's sole argument on this element consists of conclusory assertions that make no reference to supporting facts, evidence, or argument. The Panel is mindful that establishing that a respondent has no rights or legitimate interest in a domain name-proving a negative-can be difficult. For this reason, however, a complainant's burden is comparatively light.
In any case, the Panel need not determine whether Complainant has made a prima facie showing because Respondent has established rights or legitimate interests in the disputed domain name. Respondent's declaration attests that he registered and began using the domain name for the charitable work performed by his organization well before learning of Complainant's objection. Further, the declaration clarified that Respondent registered the domain name on behalf of the organization, Saint Lazare USA, Inc. While the disputed domain name is not identical to the name of the organization, the Panel finds that it is sufficiently similar for these purposes.
The Panel credits Respondent's declaration and finds that Respondent has established rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under the Policy, Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
Complainant does not argue that Respondent's conduct falls within any of the above categories. Instead, it continues its conclusory claims that Respondent's domain name and its website were created to "fraudulently mislead" visitors and "take advantage of the good will Complainant has established in its own registered trademarks."
In contrast, Respondent's declaration attests to specific facts related to the origins of Complainant and Respondent's organization, each of which constitute a separate obedience of the Order, each of whom use the name and various symbols of the Order.
The Panel credits Respondent's declaration and finds that Complainant has not established the Respondent registered and is using the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
Respondent asserts that Complainant is engaged in reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The Rules, paragraph 15, provide:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Panel finds that the Complainant attempted to engage in Reverse Domain Name Hijacking and that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The reasons for this finding include the following:
- Although Complainant did establish ownership of US federal trademark registrations containing terms used in the disputed domain name, it did not provide any support for its claim of unregistered or common law rights in its domain name or ownership of an international registration for LAZARUS and did not persuade the Panel that either of the marks that it did own was confusingly similar to the domain name.
- Complainant either knew or should have known, at the time of filing the Complaint, that it was not the "only legitimate organization" to use the name "The Military and Hospitaller Order of Saint Lazarus of Jerusalem" since the crusades.
- Complainant either knew or should have known, at the time of filing the Complaint that Respondent was affiliated with an organization that had rights to use the name "The Military and Hospitaller Order of Saint Lazarus of Jerusalem" and other indicia related to the Order.5
- The allegations of the Complaint were largely unsupported by facts, evidence, or argument and omitted material information regarding the history of the Order, and other pertinent facts that were, or should have been known to Complainant. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel finds that Complainant attempted to engage in Reverse Domain Name Hijacking.
Debra J. Stanek
Sole Panelist
Date: August 11, 2014
1 The Response was received by the Center in the early morning hours of June 19, but would have been submitted on June 18 in the US, where Respondent and its counsel are located.
2 The registrant is shown as "Stichting Custodians of the Treasury of the Military and Hospitaller Order of Saint Lazarus of Jerusalem" in the Netherlands.
3 Complainant provided two USfederal registrations for the mark THE MILITARY AND HOSPITALLER ORDER OF SAINT LAZARUS OF JERUSALEM.
4 The Panel is aware that another panel faced with somewhat similar facts recently reached a different conclusion in a case involving Complainant and a different respondent, finding that "Saint Lazarus" was the dominant portion of Complainant's mark. See The American Association of the Order of St. Lazarus, Inc. v. Howard Browne/Order of St. Lazarus,WIPO Case No. D2014-0738.
5 The Panel reaches this conclusion despite the fact that the domain name registration did not specifically identify "Saint Lazare USA, Inc."
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