Complainant is Hillsong Church, Inc., Australia, represented internally.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Yuejuan mao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 31, 2020. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 14, 2020. 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, Hillsong Church, Inc., is a Christian church founded in 1983 and has churches in 28 countries around the world with an average global weekly attendance of over 150,000 people. Complainant is known for worship music and conducts annual conferences worldwide including the United States, the United Kingdom, Ukraine and South Africa. Complainant operates a 24 Hour seven day per week Television Station, named “The Hillsong Channel”. The channel is broadcast directly into 15 countries and indirectly to many others. Complainant’s social media channels also reach over 30 million people and with its songs being sung by an estimated 50 million people per week worldwide. Complainant owns international and domestic registrations of the trademark HILLSONG, including the following: - United States trademark registration number 2578165 registered on June 11, 2002; The Hillsong trademarks are utilized for web streaming of video content and publishing of information on the Internet. Respondent registered the Domain Name on December 28, 2019. The Domain Name redirects to a pornographic website. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the HILLSONG marks and has rights in the Domain Name incorporating the HILLSONG mark. Complainant contends that Respondent registered and used the Domain Name, which is a deliberate misspelling of Complainant’s well-known mark, to divert users to Respondent’s pornographic website. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name and related pornographic website, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are 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 Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Under the first element of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights (paragraph 4(a)(i) of the Policy). Complainant provided evidence of its rights in the HILLSONG marks, which have been registered since at least as early as 2002, which predate the registration of the Domain Name on December 28, 2019, by more than 17 years. In particular, Complainant has submitted evidence that it owns national and international trademarks for HILLSONG. Complainant has also submitted evidence which supports that HILLSONG is an internationally well known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the mark HILLSONG. With Complainant’s rights in the HILLSONG marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) or the country code Top-Level Domain (“ccTLD”) in which it is registered (in this case, the gTLD “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms). In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Section 1.7 of the WIPO Overview 3.0. See also (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962). Here, the Domain Name is confusingly similar to Complainant’s HILLSONG trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is strongly imitated in the Domain Name. The omission of the letter “s” in relation to the HILLSONG mark in the Domain Name, Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the HILLSONG trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, Respondent redirected Internet traffic to a pornographic website. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Finally, Complainant must prove that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) the 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 you have engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on your website or location. The historical WhoIs record provided by Complainant shows that Respondent registered the Domain Name on December 28, 2019. The Panel notes that Complainant’s earliest HILLSONG trademark on record has been registered since June 11, 2002. Therefore, the Panel finds that Complainant’s registration and use of the HILLSONG marks predate the registration of the Domain Name by Respondent by more than 17 years. Complainant is also well established and known worldwide. Therefore, Respondent was likely aware of the HILLSONG marks when Respondent registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 33; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Here, the Domain Name is confusingly similar to Complainant’s HILLSONG trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is strongly imitated in the Domain Name. The omission of the letter “s” in relation to the HILLSONG mark in the Domain Name, Moreover, Respondent used the Domain Name to divert Internet users to a pornographic website. Such use and association of the Domain Name featuring pornographic material could result in causing confusion with Complainant’s church business and activities. It may confuse Internet users who are looking for Complainant’s legitimate website, causing confusion to Internet users, misleading Internet users, and tarnishing Complainant’s reputation. The Panel finds that by using the Domain Name – which strongly imitates Complainant’s trademark, in connection with a pornographic website, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Moreover, such use of the Domain Name causes disruption to Complainant’s church and business activities. In addition to the circumstances referred to above, Respondent appears to have provided false or incomplete information in its registration information. Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds in view of the above, that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy. 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 disputed domain name Kimberley Chen Nobles
- United States trademark registration number 4711999 registered on March 31, 2015;
- International trademark registration number 810901, registered on May 29, 2003, designating China, where Respondent resides.
Sole Panelist
Date: September 24, 2020
Full & Egal Universal Law Academy