CRISTA Ministries v. Texas
International Property Associates, Inc.
Claim Number: FA0705000985154
PARTIES
Complainant is CRISTA Ministries (“Complainant”), represented by David
Chen, of DWC Law Firm, P.S.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intercristo.net>, registered with Compana, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 14, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 16, 2007.
On May 25, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <intercristo.net> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On June 1, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 21, 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,
A timely Response was received and determined to be complete on June 21, 2007.
On June 27, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, CRISTA Ministries (“CRISTA”), is one of the
largest Christian non-profit organizations in the
Respondent has registered a domain name identical to
CRISTA’s federally registered trademark, INTERCRISTO, and is parking the domain
name with a third party to host sponsored links that compete directly with CRISTA services. CRISTA has never provided permission to
Respondent, or otherwise authorized Respondent, to register a domain name containing
CRISTA’s trademark, and has not provided Respondent with any permission to use
or display CRISTA’s trademark INTERCRISTO.
CRISTA has owned its federal trademark registration for the mark
INTERCRISTO and its domain name <intercristo.com>, since prior to the
creation of Respondent’s offending domain name.
The domain name <intercristo.net> is identical to CRISTA’s trademark INTERCRISTO
(other than the generic top level domain identifier .net). CRISTA is the owner of U.S. Trademark Registration
No. 1,106,824
(the “Registration”) for the mark INTERCRISTO.
CRISTA acquired the mark, including the Registration, in February of
1985 through an assignment and transfer to CRISTA of all right, title and
interest in and to the mark and Registration.
Respondent has not, before any notice to Respondent of this dispute, engaged in 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. Instead, Respondent has used the domain name <intercristo.net> incorporating Complainant’s inherently distinctive trademark, INTERCRISTO, to earn revenue from sponsored links (discussed further, infra) that advertise services that compete directly with Complainant’s job information services.
Respondent (as an individual, business, or other organization) has not been commonly known by the domain name.
Respondent is not making a noncommercial or fair use. Respondent’s use is purely commercial as demonstrated by the revenue it earns from knowingly partnering with Hitfarm to provide the competing sponsored links.
Respondent’s sponsored links from Hitfarm include advertisements for directly competing services, as evidenced by the statements at Respondent’s website, “Welcome to intercristo.net… For resources and information on Christian job and Christian jobs ministry [sic].” Furthermore, the sponsored links on Respondent’s website include, for example, the following: <churchjobs.net>, <christianjobs.com>, <christianteachingjobs.com>.
B. Respondent
Respondent asserts that it unilaterally consents to having the <intercristo.net> domain name transferred to Complainant. Respondent does not contest any of Complainant’s allegations regarding the <intercristo.net> domain name and requests an “immediate order for transfer without consideration of the paragraph 4(a) elements.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the Complainant must 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that in a
circumstance such as this, where Respondent has admitted that it does not have
an interest in retaining the disputed domain name registration, the Panel shall
forego the traditional UDRP analysis and order the immediate transfer of the
domain name. See Mattel, Inc. v. Yoon, FA 967843 (Nat.
Arb. Forum June 4, 2007) (deciding not to analyze the elements of the Policy
where the respondent did not contest the complainant’s remedy for transfer of
the disputed domain name); see also
DECISION
Accordingly, the Panel concludes that relief shall be GRANTED.
It is Ordered that the <intercristo.net> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: July 11, 2007
National
Arbitration Forum