The Complainants are Dr. Arlen Lyle Salte, Canada, and Break Forth Ministries Society, Canada, self-represented.
The Respondent is Power to Change, Canada, represented by Miller Thomson, LLP, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2019, 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 the Complainant on August 6, 2019, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 6, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. Upon request of the Respondent the due date for Response was extended to September 5, 2019, in accordance with the Rules, paragraph 5(b). The due date for Response was further extended to September 13, 2019, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on September 13, 2019.
On September 13, 2019, the Complainant submitted a supplemental filing in reply to the Response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 26, 2019. 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
The Complainant, Dr. Arlen Lyle Salte is the founder and executive director of the Complainant, Breakforth Ministries Society since its inception on May 1, 1977.
The Complainants allegedly own a United States of America (“U.S.”) Trademark registration for BREAK FORTH MINISTRIES under Registration No. 2,856,412 dated June 22, 2004, and a Canadian Trademark registration for BREAK FORTH under Registration No. TMA 959,207 dated January 4, 2017 (“the BREAK FORTH Trademarks”).1
The Complainants have used the BREAK FORTH Trademarks in association with hosting workshops, concerts, trips, conferences, and services, and selling songbooks, recordings, podcasts, educational CDs and DVDS all in connection with the Christian religion and faith.
The disputed domain name was registered on September 6, 2002 by the Complainants. At the time the Complaint was filed, the Respondent was using the disputed domain name in association with educational services, including conferences, workshops, and retreats with respect to the Christian religion. 5. Parties’ Contentions A. Complainants
The Complainant, Dr. Arlen Salte, owns two trademark registrations listed in paragraph 4 of this Decision for BREAK FORTH MINISTRIES (U.S. Registration No. 2,856,412) and BREAK FORTH (Canadian Registration No. TMA 959,207). The Complainant, Break Forth Ministries Society is the exclusive licensee to use the BREAK FORTH Trademarks. The disputed domain name incorporates the Complainants’ BREAK FORTH Trademark in its entirety. The Complainants’ contend that the addition of the geographical term “Canada” does not distinguish the disputed domain name from the Complainants’ registered BREAK FORTH Trademarks, and is therefore confusingly similar.
The Complainants submit that the Respondent is hijacking the disputed domain name and is redirecting it to its own religious education conferences website. This redirection is misleading thousands of Internet users seeking the Complainants’ website. The redirection of the disputed domain name by the Respondent is not a bona fide offering of goods and services and therefore not evidence of a legitimate right or interest in the disputed domain name.
The Respondent has acquired and is using the disputed domain name in bad faith. The Complainants contend that the Respondent has hijacked the disputed domain name and has redirected the disputed domain name to the Respondent’s website for purposes of trading on the goodwill of the Complainants for monetary gain. B. Respondents
The Respondent denies the allegations in the Complaint. The Respondent claims that the Complainants do not lawfully own the two BREAK FORTH Trademarks listed in paragraph 4 of this Decision. Pursuant to an Agreement dated April 20, 2015 (the “Agreement”) between the parties, the Complainants were required to convey their rights to the BREAK FORTH Trademarks, the “Break Forth” trade name, and disputed domain name to the Respondent. The Complainants are said to be in breach of the obligations under that Agreement for failure to transfer the BREAK FORTH Trademarks to the Respondent.
The Respondent contends that it has rights and legitimate interests to the disputed domain name pursuant to the Agreement. In fact, the Complainants facilitated and consented to the transfer of the disputed domain name in April 2015 to the Respondent.
The Respondent further submits that no decision should be issued in this proceeding because the ownership of the BREAK FORTH Trademarks and the disputed domain name are subject of litigation before the Court of Queen’s Bench of Alberta under Court File No. 1803 06528. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As a preliminary matter, the Panel notes that the registrant details of the disputed domain name list a “Tom Lademann, Second Nature Solutions Ltd”. However, the Panel notes the facts of the case and the Parties’ own submissions indicate that the party “Power to Change” is the underlying holder of the disputed domain name. Accordingly, the Panel finds that the Respondent in the present proceeding is Power to Change.
The Panel further notes that the Complainant has submitted an unsolicited supplemental filing in this proceeding. Unsolicited supplemental filings by either party are admissible at the Panel’s discretion. WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. While the filing of unsolicited material is generally discouraged, the Panel has considered it useful to also take into account the supplemental filing in its decision below. A. Identical or Confusingly Similar
The basic facts in this matter are plainly in dispute between the Parties, including the critical foundational fact as to whether it is the Complainants or the Respondent who actually own the underlying trademarks in question. The Complainants are singularly unhelpful in this regard because they failed to disclose the fact that the Parties were in a complex relationship which involved joint activities, branding, and promotions, all of which were governed by a detailed agreement entered into in April 2015 (“the Agreement”). The absence of any reference to this relationship is compounded by a second equally important omission in the Complaint: the fact that there is active litigation in the Alberta Court of Queen’s Bench between the Parties which is focused on the alleged breach of the Agreement by the Respondent. In its supplemental filing, the Complainants belatedly provide information about the litigation and confirm that one of the principal issues before the Court in Alberta is the ownership of the BREAK FORTH trademarks, as between the Parties.
As the record now stands, there is divided ownership between the BREAK FORTH trademarks and the disputed domain name. Pursuant to the Agreement, it appears that the Complainants authorized the transfer of the disputed domain name to the Respondent shortly after the Agreement was signed in 2015. However, in March 2016, the Complainant, Dr. Arlen Salte, initiated the steps to register the BREAK FORTH mark in Canada in his own name. That mark eventually issued to registration, unbeknownst to the Respondent. When the relationship between the Parties devolved, that divided ownership became a significant issue between them.
The evidentiary record on the ownership issues (which the Panel has briefly sketched out above) is strenuously contested by the Parties in many particulars. One critical issue for trial in the Alberta Queen’s Bench is whether the Respondent is in fact entitled to ownership of the BREAK FORTH trademarks by virtue of certain transfer provisions in the Agreement or whether the Complainants are entitled to retain ownership because the Respondent is in breach of the Agreement.
In these circumstances, it is impossible and indeed inappropriate for the Panel to attempt to reach a reasoned conclusion with respect to the ownership of the underlying trademarks at issue. The evidentiary record in this proceeding is too sparse and incomplete. Credibility of the Parties may well be in issue on crucial points, which lies beyond the ability of a Panel restricted to a written record in a summary process. The Complainants have chosen to commence legal proceedings, and given the broad nature of the dispute, that is the appropriate forum to fully explore the complexities of fact and law that must be investigated and determined.
Within the limited context of this proceeding, the Panel concludes that the Complainants have not established that they hold the necessary trademark rights to support this Complaint, on the basis of the evidentiary record as filed. The Panel therefore finds that the Complaint must be denied, without prejudice to the Complainants instituting a new complaint upon the conclusion of the litigation in Alberta. It is important to note that this decision ought not to be understood as representing a finding in favour of any putative ownership rights in the BREAK FORTH trademarks on the part of the Respondent. Those ownership issues remain to be determined in a forum where all the relevant evidence and witnesses can be brought forward, and where the relationship, agreement and obligations between the parties can be fully investigated. B. Rights or Legitimate Interests
In view of the findings in Paragraph 6(A) with respect to identical and confusingly similar, the Panel will not make a finding with respect to rights and legitimate interests. C. Registered and Used in Bad Faith
In view of the findings in Paragraph 6(A) with respect to identical and confusingly similar, the Panel will not make a finding with respect to bad faith. D. Reverse Domain Name Hijacking
The Respondent asks the Panel to declare Reverse Domain Name Hijacking (“RDNH”) here. Paragraph 15(e) of the UDRP Rules provides that, 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”. See WIPO Overview 3.0, section 4.16.
The Panel notes the Complainants were not forthcoming with details regarding the Parties’ complex relationship or ongoing litigation in the Complaint. However, noting the contested nature of the ownership of the BREAK FORTH trademarks and relationship between the Parties, it is not inconceivable that the Complaint may have been brought without an understanding of the impact of these matters on the proceeding, rather than intentionally in bad faith. The Panel also notes that the Complaint was apparently submitted without the assistance of counsel.
On balance, the Panel declines to make a finding of RDNH based on the record in the present proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: October 10, 2019
1 The Panel notes that the U.S. trademark was originally registered by a “New Creation Ministries Society of Alberta”, while the Canadian trademark is held in the name of Dr. Arlen Salte .
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