Congregation Shuvah Yisrael, Inc. a/k/a Shuvah Yisrael Messianic Synagogues v. [Registrant] c/o Jeff Neckonoff
Claim Number: FA0707001043126
Complainant is Congregation Shuvah Yisrael, Inc. a/k/a Shuvah
Yisrael Messianic Synagogues (“Complainant”), represented by Frank L. Amoroso,
50 Jericho Quadrangle,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shuvahyisrael.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 20, 2007; the National Arbitration Forum received a hard copy of the Complaint July 20, 2007.
On July 20, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shuvahyisrael.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@shuvahyisrael.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <shuvahyisrael.com>, is identical to Complainant’s SHUVAH YISRAEL mark.
2. Respondent has no rights to or legitimate interests in the <shuvahyisrael.com> domain name.
3. Respondent registered and used the <shuvahyisrael.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Congregation Shuvah Yisrael, Inc., also known
as Shuvah Yisrael Messianic Synagogues of East Williston and
Respondent registered the <shuvahyisrael.com> domain name on January 12, 2000. Respondent was a devoted member of Complainant’s congregation for nearly ten years, but subsequently changed his beliefs and left the congregation. Respondent’s disputed domain name resolves to a complaint website seeking to persuade visitors that Messianic Judaism is wrong and should be rejected as contrary to traditional Judaism. In addition, Respondent solicits money from visitors to the website, evidently to support his work in discrediting Messianic Judaism.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers to be appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is not required to own a trademark application to establish rights in the SHUVAH YISRAEL mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The Panel finds that Complainant established common law rights in the SHUVAH YISRAEL mark through continuous and extensive use of the mark in connection with its Messianic Jewish congregation for almost eighteen years. Complainant is well known in the Messianic Jewish community and has spent significant time and effort developing its ministry. In addition, Complainant previously held the registration for the <shuvahyisrael.com> domain name. Therefore, Complainant’s SHUVAH YISRAEL mark has acquired secondary meaning sufficient to establish common law rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark).
Furthermore, the disputed domain name, <shuvahyisrael.com>, is identical to Complainant’s SHUVAH
YISRAEL mark, as it incorporates the mark in its entirety, simply omitting the
space between the two words in the mark.
The disputed domain name differs from the mark only in that it adds the
generic top-level domain (“gTLD”) “.com” onto the end of the mark. However, as a top-level domain is required of
all domain names, the addition of a gTLD to Complainant’s mark is irrelevant
under the Policy. Thus, the Panel finds
that the <shuvahyisrael.com> domain
name is identical to Complainant’s SHUVAH YISRAEL mark, pursuant to Policy ¶
4(a)(i). See Wembley Nat’l Stadium Ltd.
v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain
name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant alleges that Respondent lacks rights and legitimate interests in the <shuvahyisrale.com> domain name. Once Complainant makes a prima facie case in support of this allegation, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that, in the present case, Complainant made a prima facie case under the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights and legitimate interests in the <shuvahyisrael.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will now examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate, and nothing in the record suggests, that Respondent is commonly known by the <shuvahyisrael.com> domain name. In addition, Complainant has not given Respondent permission to use the SHUVAH YISRAEL mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the <shuvahyisrael.com> domain name, which is identical to Complainant’s SHUVAH YISRAEL mark, to operate a complaint website seeking to discredit Messianic Judaism and to dissuade visitors to the site from joining Complainant’s congregation. Although Respondent has the right to operate a complaint website, it does not have the right to infringe on another’s mark in doing so. Respondent’s use of the disputed domain name thus does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent lacks rights and legitimate interests in the <shuvahyisrael.com> domain name under Policy ¶ 4(a)(ii). See Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Furthermore, Complainant previously held a registration for
the <shuvahyisrael.com> domain
name but inadvertently allowed its registration to lapse. Respondent’s subsequent registration of the
disputed domain name also indicates that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi Servs.,
FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of
the domain name, coupled with Respondent’s failure to respond to this dispute,
is evidence that Respondent has no rights or legitimate interests in the domain
name pursuant to Policy 4(a)(ii).”); see
also Zappos.com, Inc. v. Turvill
Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact
that Complainant had previously held the <wwwzappos.com> domain name
registration and has mistakenly allowed it to expire is further evidence that
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant further alleges that Respondent registered and is using the <shuvahyisrael.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees. First of all, as Respondent was previously a member of Complainant’s congregation, Respondent clearly had notice of Complainant’s rights in the SHUVAH YISRAEL mark. Respondent’s registration of the <shuvahyisrael.com> domain name, with knowledge of Complainant’s identical mark, indicates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Next, Respondent’s use of the disputed domain name to operate a complaint website seeking to discredit Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”).
As mentioned previously, Respondent is using the <shuvahyisrael.com> domain name to redirect Internet users to a complaint website seeking to discredit Complainant’s teachings. In addition, Respondent solicits money from visitors to the site, purportedly to support this goal. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s congregation, will be confused as to Complainant’s affiliation with the disputed domain name. This is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Lastly, Respondent registered the <shuvahyisrael.com> domain name after Complainant inadvertently allowed its registration of the disputed domain name to lapse. This also indicates that Respondent registered and is using the disputed domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shuvahyisrael.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 07, 2007
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