The Complainant is Hillsong Church, Inc., Australia, represented by Timothy Whincop, Australia.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Ravil Kazybaev, Kazakhstan. 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 disputed domain name. On July 29, 2020, 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 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 4, 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 the Respondent of the Complaint, and the proceedings commenced on August 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2020. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 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 The Complainant is a Christian church founded in 1983 with churches in 28 countries around the world and an average global weekly attendance of over 150,000 people. The Complainant won a Recording Academy Grammy Award in 2018 for “Best Contemporary Christian Song/Performance”. The Complainant runs annual conferences around the world in the United States of America (“USA”), the United Kingdom (“UK”), Ukraine and South Africa. Its social media channels reach 30 million people and its songs are sung by an estimated 50 million people per week across the world. The Complainant broadcasts a 24 hour, 7 days per week television station named “The Hillsong Channel” directly into 15 countries and indirectly to others. The Complainant states that it was the registrant of the disputed domain name between about November 25, 2015 and November 25, 2019. Over this period, the Complainant used the disputed domain name to publish a website containing leadership materials encouraging people to lead and influence in all spheres of life. Said website was connected with various seminars, conferences, and events in Australia, the USA, and the UK branded “Spheres” and “Spheres.life”. This activity, and the associated public recognition, is demonstrated by the Complainant’s “@Spheres.life” branded Instagram page with 2,533 followers, its “Spheres” branded YouTube channel with 830 subscribers which directly references the disputed domain name, its “Spheres” branded digital downloads of conference recordings, and independent media coverage of its “Spheres” branded event in Australia at which various celebrities appeared. According to the corresponding WhoIs records, the disputed domain name was created on December 24, 2019. Little is known about the Respondent. The website associated with the disputed domain name contains adult content and links to websites at which pornographic material is being offered. The “Contact Us” section of said website provides a name, address, telephone number, and email address in Schenectady, New York, USA. It is unclear how this name and address is connected to the Respondent, which initially used a privacy service on the WhoIs record. The underlying address for the Respondent supplied by the Registrar is in Almaty, Kazakhstan. On July 17, 2020, the Complainant’s counsel wrote to the email address provided on the website associated with the disputed domain name advising of the Complainant’s rights and requesting the transfer of the disputed domain name. Said email was returned undelivered with an Error 550 message: “no such user here”. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or Confusingly Similar The Complainant’s common law marks SPHERES and SPHERES.LIFE have become distinctive identifiers which consumers associate with its goods and services. The Complainant has used both such marks for a period of six years in connection with various events in multiple jurisdictions and continues to sell recordings from these events. The degree of public recognition of such marks can be determined by the extent of popularity on social media and independent media coverage (evidence provided). Rights or Legitimate Interests The Respondent is making an illegitimate commercial use of the disputed domain name with the intent of misleading and diverting consumers, and of tarnishing the Complainant’s mark. The Complainant’s demonstrable use of such mark is in conflict with the current use of the disputed domain name. Even if the Respondent was engaging in legitimate business activities relating to the promotion of lawful adult content, there is no legitimate or apparent reason for its selection of the disputed domain name as this has no connection with the content of the website. There is no affiliation between the Parties and the Respondent was not authorised by the Complainant to register or use the disputed domain name. The Respondent is not commonly known by the disputed domain name and the top ten search results relate to the Complainant’s activities only. The Respondent’s opportunistic registration of the disputed domain name after the Complainant inadvertently allowed its registration to expire is evidence of its lack of rights or legitimate interests. Registered and Used in Bad Faith The use of the disputed domain name for a pornographic website constitutes a strong indication of bad faith registration and use, demonstrates a likelihood of confusion among Internet users, and shows the Respondent’s intent to tarnish the Complainant’s mark. The contact details provided on the Respondent’s website were clearly false or incorrect. An email sent to the given address was undeliverable. The Panel should consider the concealment of the registrant’s identity and false contact details when looking into the totality of the circumstances. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied for the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant claims common law rights in the marks SPHERES and SPHERES.LIFE. To establish this, the Complainant must show that the marks have become distinctive identifiers which consumers associate with its goods and services. Relevant evidence of such may include a range of factors, such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the present case, the Panel is satisfied that the Complainant has demonstrated common law rights in the marks concerned based upon the evidence of their use over a six year period in connection with substantial public events in various jurisdictions, together with the sale and broadcast of related media. The Complainant’s activities in this regard have attracted independent press coverage. Several thousand consumers continue to follow the Complainant’s various SPHERES.LIFE and SPHERES branded social media channels. The Panel notes that the Complainant’s SPHERES.LIFE mark is identical to the second level and top level of the disputed domain name taken together (see the discussion on evaluating identity or confusing similarity in these circumstances in TruGreen Limited Partnership v. Somsak Jinaphan,WIPO Case No. D2017-2190). Accordingly, the Panel finds that the Complainant’s said mark is identical to the disputed domain name. The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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”. The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to bring forward appropriate allegations and/or evidence demonstrating its rights or legitimate interests in the domain name concerned. In the present case, the Complainant submits that there is no affiliation between the Parties, that the Respondent was not authorized by the Complainant to use its SPHERES.LIFE mark, that the Respondent is not commonly known by the disputed domain name, that there appears to be no logical connection between the disputed domain name and the Respondent’s website, and that the disputed domain name is an opportunistic registration intended to mislead consumers, capture traffic intended for the Complainant’s site, and tarnish the Complainant’s mark. The Panel is satisfied that these submissions establish the requisite prima facie case. No Response has been filed by the Respondent and it has therefore put forward no submissions or evidence demonstrating any rights or legitimate interests in the disputed domain name. It appears to the Panel that the Respondent registered the disputed domain name upon its accidental abandonment by the Complainant and that the disputed domain name has been put to a commercial use involving pornographic content. The Panel must ask itself, on the facts and circumstances of this case, whether there is any possibility that the Respondent might be making a bona fide offering of goods and services thereby or whether, as the Complainant contends, the registration was opportunistic and intended to capture the Complainant’s Internet traffic and/or to tarnish its mark. It has not escaped the Panel’s notice that the disputed domain name consists of the dictionary word “spheres” in its second level. While this might appear to hold out the prospect that the Respondent registered the disputed domain name entirely independently of the Complainant or its rights, on the balance of probabilities, the Panel does not consider that such a case is made out on the present record. Generally speaking, where a respondent seeks to rely upon the fact that the domain name concerned consists of a dictionary word, it must also be able to show that this was registered for use in connection with the dictionary meaning. As the Complainant points out, there is no obvious connection between the word “spheres” in the second level of the disputed domain name (or, for that matter, in the word “life” comprising the Top-Level Domain, or both words together) and the pornographic content which the associated website displays. Such content does not even use or refer to these words in any context which could reasonably be regarded as meaningful. In the absence of any light which could be shed on this matter by the Respondent, there seems to the Panel to be much greater logic in the Complainant’s proposition that the Respondent knew of the Complainant’s mark and the previous use of the disputed domain name, either through its notoriety in various jurisdictions or, as the Complainant demonstrates, via the publicly available entries on the Internet Archive “Wayback Machine”. It seems reasonable to infer that, having become aware of this, the Respondent intended to take commercial advantage of the residual traffic intended for the Complainant and/or to tarnish the Complainant’s mark by associating it with pornographic content. In the absence of any Response in this case, which might have put forward an alternative explanation, the Panel considers that there is a real possibility that tarnishment was the Respondent’s intent, due to the fact that the disputed domain name was previously used by a religious institution and was actively promoted by it through various online channels. Registration or use of the disputed domain name in this context, which seeks to take advantage of the goodwill generated by the Complainant in its SPHERES.LIFE mark, cannot be described as a bona fide offering of goods or services, nor does it otherwise confer rights or legitimate interests upon the Respondent. In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have 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) you have 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. It is important to note at the outset of this topic that the fact that a website points to pornography is not usually sufficient in itself to support a finding of bad faith under the Policy. A degree of targeting of the Complainant’s rights must also be present. In The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743, the panel noted: “[…] the Panel is satisfied that the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy, and can only support a finding of bad faith for the purposes of paragraph 4(b)(iv) of the Policy if it is shown to the satisfaction of the Panel that the Respondent had the Complainant or its trademark in mind when selecting the domain name for that purpose”. In the present case, the Complainant asserts that it has engaged in substantial promotion of its SPHERES.LIFE common law mark and provides evidence of its use on social media channels and recognition by way of independent press coverage. There is reason to believe that the Respondent could have been aware of this when it registered the disputed domain name and thus had the Complainant’s mark in mind. Even if the Respondent was not directly aware of the mark itself prior to identifying the disputed domain name at its expiration, the Complainant’s evidence that its prior use can be readily identified from the Internet Archive provides another plausible route whereby the Respondent was potentially aware of the Complainant’s mark. The context of the Respondent’s subsequent use is important here, and as noted in the preceding section, the Panel cannot identify any obvious logic between the nature of the disputed domain name and the Respondent’s website content. In these circumstances, it does not seem to the Panel that the disputed domain name is likely to have been an independent or entirely random selection (see the discussion in Club Monaco Corporation v. C. Gindi,WIPO Case No. D2000-0936, a case also involving the pointing of a domain name to a pornographic website). It is notable that, although faced with the Complainant’s allegations of bad faith conduct, the Respondent has failed to offer any explanation of an alleged good faith motivation in its registration and use of the disputed domain name. In addition to the Respondent’s silence on this point, the Panel also regards it as significant that despite having contact details listed on its website, the Respondent’s email address returned a “no such user here” message when the Complainant attempted to communicate with it. The disputed domain name itself made use of a privacy service on the WhoIs record, and the underlying registrant details bear no relation whatsoever to the website contact details. All these matters, in the absence of any reasonable alternative explanation, suggest that the website contact details may be false and that the Respondent is attempting to avoid or frustrate remedial action being brought against it, possibly with a view to prolonging the period over which it receives the Complainant’s Internet traffic. In the circumstances of the present case, therefore, the Panel considers that the manner in which the Respondent has arranged its contact details is also indicative of registration and use in bad faith. The Panel concludes on the balance of probabilities that the Respondent registered the disputed domain name with knowledge of the Complainant’s SPHERES.LIFE mark and with intent to target this. It arranged a privacy service and posted contact details on the associated website which shielded it from the Complainant’s attempts to reach it. It displayed pornographic content on the associated website to benefit commercially from the Internet traffic generated by the Complainant’s promotion of the disputed domain name through its various channels. The Panel finds that this constitutes registration and use in bad faith and accordingly that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Andrew D. S. Lothian
Sole Panelist
Date: October 28, 2020
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