Complainant is East-West Worship and Conference Center, Inc., United States of America (“United States”), represented by Solace Law, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / John Hawkins, Hawkins Consulting, United States, represented by Lee & Hayes, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2021, 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 notified a Complaint deficiency on October 29, 2021. The Center received four emails from Respondent and three emails from Complainant on October 29, 2021. Complainant filed an amended Complaint on October 30, 2021. The Center sent an email to Complainant on November 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Response was filed with the Center on December 7, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 15, 2021. 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 BackgroundComplainant is a church founded in 2006 in Marietta, Georgia, a suburb of Atlanta. Complainant describes itself as “an interdenominational family from many cultures and ethnicities from around the world.” Complainant operates a physical church and a conference center on its 23-acre property. Complainant operates a website at “www.eastwestchurch.org”.
Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the word mark EAST-WEST CHURCH, registered on August 24, 2021 under USPTO Reg. No. 6460748 in connection with, among other things, “ministerial services” and “providing a website featuring information about ministerial services” in Class 45. The USPTO application, dated November 16, 2020, indicates a date of first use in commerce of July 27, 2007.
The Domain Name was first registered on February 8, 2008. According to Complainant, the original registrant of the Domain Name was the Church in Anaheim, and that church had promised to notify Complainant in the event the Domain Name registration was set to expire. Due to “human error,” however, the Domain Name expired on February 8, 2019, and Respondent registered the Domain Name sometime thereafter.
The website to which the Domain Name resolves bears the following announcement at the top:
“The purpose of this website is to help you examine the past of the leadership at East West Church. These are sparknotes to make you question and lead you to other more detailed articles.”
The website then features a series of media articles concerning an alleged sex scandal at Complainant’s church, with headlines such as “Atlanta congregation ripped by sex scandal allegations,” “Once prestigious church divided by sex scandal,” and “Paternity case may bring down megachurch leader.” The website also provides a hyperlink to a site called “Satan Unmasked,” which site contains additional articles and commentary about the sex scandals reported in the aforementioned news articles. It appears that the sex scandal implicated the Reverend of the Cathedral of the Holy Spirit (“CHS”) in Atlanta, as well as a number of members of the Reverend’s family. The scandal appears to have become public news in the early 1990s.
According to Complainant, the sex scandal reported at Respondent’s website pertains to “a completely separate and unrelated church” namely, CHS. Complainant states that the CHS leadership “was never associated with Complainant.” Further, Complainant states that its Pastor “was never a part of their [CHS’s] staff.”
According to Respondent, the “senior pastor” at Complainant East-West Church (“Alan”) is the nephew of the “infamous” head of CHS, and that Alan had been accused by one woman of seduction. Respondent also states that he derives no income from his use of the Domain Name, and that he is legitimately using the Domain Name in the exercise of his free speech rights.
5. Parties’ Contentions A. ComplainantComplainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent claims that he has a legitimate free-speech interest in respect of the Domain Name, and that he did not register or use it in bad faith.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the trademark EAST-WEST CHURCH through registration demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark. Respondent concedes this point.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name comprised of an exact reproduction of Complainant’s mark. There is no evidence of record of any communication between the Parties. Nor is there any evidence that Respondent derives, or has sought to derive, any commercial gain from his use of the Domain Name.
Section 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.” Further, the respondent’s alleged fair use must be “genuine and noncommercial.” Id. at section 2.6.1.
There is no evidence in the record to indicate that Respondent to date has made any commercial use of the Domain Name (but there is no guarantee that such a state of affairs will endure). On the issue of genuineness, the Panel notes that it is undisputed in this record that Respondent acquired the Domain Name sometime after February 8, 2019, when its prior owner let the Domain Name registration lapse. Respondent may well have a genuine grievance about Complainant’s church and its leadership, but one wonders why Respondent apparently waited until 2019 to launch a critical website about Complainant. The alleges sex scandals discussed at Respondent’s website and the sites to which Respondent’s site provides hyperlinks – whether they have any relationship to Complainant – surfaced in the early 1990s. By 2019, Complainant’s church had been in operation for nearly three decades. The record contains no evidence of Respondent criticizing Complainant until 2019, around the time Respondent acquired the Domain Name – which is identical to Complainant’s trademark.
The timing of Respondent’s registration of the Domain Name, and the creation of a website critical of a church already in existence for 12 years based on alleged scandals nearly 30 years old, undermines the claim to an exercise in free speech. Respondent said nothing about having been a longstanding critic of Complainant or its leadership. It strikes the Panel as too much of a coincidence that Respondent’s foray of criticism of Complainant began at or around the time the Domain Name became available in early 2019, i.e., prior to this time Respondent could have easily registered a non-infringing domain name (just for an example, one involving the mark and the term “scandal”) for criticism purposes.
This Panel finds the most persuasive treatment of this issue, namely, whether a respondent may claim a legitimate interest in a domain name that is identical to a complainant’s trademark and may avoid a finding of bad faith in such circumstances, to be found in the prior UDRP decision in The First Baptist Church of Glenarden v. Melvin Jones,WIPO Case No. D2009-0022. In that case, the panel transferred the domain name
“‘Respondent’s selection of Complainant’s name for her criticism site allows her to make use of Complainant’s service mark in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant’s permission to distribute her message. Such use is not legitimate under paragraph 4(a)(ii) of the Policy, and the safe harbor of paragraph 4(c)(iii) is not available because Respondent undeniably intended ‘to misleadingly divert consumers'.’”
The present case illustrates very well why applying [this view – captured in WIPO Overview section 2.6.2] will not interfere in any way with Respondent’s vigorous exercise of his free speech rights on the Internet. This decision will not require Respondent to change one word of the content of his principal site (including his statements about Complainant), and will not require Respondent to move that content to a new web address. Respondent’s current [separate] site will proceed exactly as it does now. Respondent does not post any content at the domain name that incorporates Complainant’s mark; copying Complainant’s mark is not used for free speech, indeed for any speech at all. All commentary may be found at Respondent’s principal website, “www.pulpit-pimps.org”. Rather than using the disputed domain name as a forum for criticism of Complainant or its pastor Respondent uses it only to attract, then immediately divert, individuals searching for Complainant.
Preventing such an appropriation of another’s asset intentionally to mislead is precisely why the Policy was adopted. As the Panel pointed out in Justice for Children v. R neetso / Robert W. O’Steen,WIPO Case No. D2004-0175:
“Decisions under the Policy focus upon a respondent's use of another's mark in a domain name to attract Internet users to respondent's site. This is true in typosquatting cases and in cases where a respondent selected his domain name in anticipation of subsequent sale to the mark owner. The content of Respondent's sites in these two categories of cases in which respondents almost uniformly lose is irrelevant to the harm to the mark owner and to the unwary consumer. That harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant's mark. And that is exactly the harm the Policy was adopted to address. […] By intentionally selecting Complainant's mark to present his views, he has not made a legitimate use of the domain names.”
The Panel finds the reasoning of the panel in First Baptist to be persuasive, and the same essential facts apply in the instant case. See also Puravankara Projects Limited v. Saurabh Singh,WIPO Case No. D2014-2054 (“Respondent has used a domain name which is closely aligned to the Complainant’s trade mark and which is likely to make a misrepresentation to Internet users that any associated website is connected with the Complainant”).
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. In the First Baptist and Puravankara cases discussed in the previous section, the panels’ findings of “bad faith” were based on essentially the same rationale as was employed to support their findings that the respondents lacked rights or legitimate interests in respect of the domain names. Relying on those cases, the Panel in the instant case also concludes bad faith registration and use of the Domain Name for the reasons set forth in the previous section.
Complainant has established Policy paragraph 4(a)(iii).
To be clear, nothing in the instant decision would prevent Respondent from airing its grievances about Complainant via another domain name that was not an identical match to the latter’s mark.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: December 28, 2021