national arbitration forum

 

DECISION

 

Church of Compassionate Service Intellectual Property Trust Kevin Hartshorn and Slavi Kozhuharov Trustees v. Vibrant Life

Claim Number: FA0907001275289

 

PARTIES

Complainant is Church of Compassionate Service Intellectual Property Trust Kevin Hartshorn and Slavi Kozhuharov Trustees (“Complainant”), represented by John Markham, Massachusetts, USA.  Respondent is Vibrant Life (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <churchofcompassionateservice.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2009.

 

On July 24, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <churchofcompassionateservice.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 July 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 2009
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@churchofcompassionateservice.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 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <churchofcompassionateservice.com> domain name is identical to Complainant’s CHURCH OF COMPASSIONATE SERVICE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <churchofcompassionateservice.com> domain name.

 

3.      Respondent registered and used the <churchofcompassionateservice.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant registered the CHURCH OF COMPASSIONATE SERVICE mark with the United States Patent and Trademark Office (“USPTO”) on July 8, 2008 (Reg. No. 3,464,601; filed September 6, 2006).  Complainant asserts, without providing supporting evidence,   that it has been in existence since 1938, and has been known since that time by the CHURCH OF COMPASSIONATE SERVICE mark.

 

Respondent registered the <churchofcompassionateservice.com> domain name on April 10, 2004.  There is no affirmative evidence in the record of the use of the disputed domain name.

 

DISCUSSION

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 draw such inferences it considers 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 that 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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the CHURCH OF COMPASSIONATE SERVICE mark through its service mark registration with the USPTO (Reg. No., 3,464,601, filed September 6, 2006, issued July 8, 2008).  The Panel also finds that Complainant rights in the CHURCH OF COMPASSIONATE SERVICE mark date back to the filing date of September 6, 2006.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Complainant contends that the <churchofcompassionateservice.com> domain name is identical to its CHURCH OF COMPASSIONATE SERVICE mark.  The <churchofcompassionateservice.com> domain name differs from Complainant’s CHURCH OF COMPASSIONATE SERVICE mark in two ways: (1) the spaces between the terms of the mark have been removed; and (2) the generic top-level domain (gTLD) “.com” has been added to the end of the mark.  The Panel agrees with previous panels that have found that none of these alterations sufficiently distinguish a disputed domain name.  The first change does not distinguish a domain name from a mark because domain names cannot contain spaces.  See Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).  Similarly, the addition of the gTLD “.com” fails to distinguish a domain name from a mark because all domain names must contain TLDs.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).  Therefore, the Panel finds that, despite the changes made, the disputed domain name remains identical to Complainant CHURCH OF COMPASSIONATE SERVICE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(iii), the Panel declines to analyze Policy ¶ 4(a)(ii).  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).

 

Registration and Use in Bad Faith

 

Complainant makes no claim to common law rights in the CHURCH OF COMPASSIONATE SERVICE mark, and Complainant’s rights in the CHURCH OF COMPASSIONATE SERVICE mark through its registration with the USPTO, which date back to the filing date of September 6, 2006, do not predate Respondent’s registration of the <churchofcompassionateservice.com> domain name on April 10, 2004.  Therefore, the Panel finds that because none of Complainant’s rights in the CHURCH OF COMPASSIONATE SERVICE mark predate Respondent’s rights in the disputed domain name, Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Alberto-Culver Co. v. Pritpal Singh Channa, D2002-0757 (WIPO Oct. 7, 2002) (finding that the complainant “ha[d] provided no evidence that its mark [was] so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that the Respondent registered with male fides”); see also Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith).

 

In addition, Complainant claims that Respondent has registered and used the disputed domain name in bad faith to promote the Church of Scientology.  However, Complainant has provided no evidence demonstrating the use of the disputed domain name.  Thus, the Panel cannot make a finding of bad faith on the merits of the case.  As such, the Panel is unable to make a finding regarding bad faith registration and use, and will therefore not make such a finding under Policy ¶ 4(a)(iii).  See Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

 

Accordingly, it is Ordered that the <churchofcompassionateservice.com> domain name remain with Respondent.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  September 8, 2009

 

 

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