Eagle Mountain International, Inc. d/b/a Kenneth Copeland Ministries v. James Vermillion
Claim Number: FA1110001410420
Complainant is Eagle Mountain International, Inc. d/b/a Kenneth Copeland Ministries (“Complainant”), represented by Steven D. Goodspeed of Anthony & Middlebrook, P.C., Texas, USA. Respondent is James Vermillion (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kennethcopelandblog.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2011; the National Arbitration Forum received payment on October 5, 2011.
On October 7, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kennethcopelandblog.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kennethcopelandblog.com. Also on October 11, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 28, 2011.
Complainant's timely Additional Submission to the National Arbitration Forum was received on November 1, 2011.
Respondent's timely Additional Submission to the National Arbitration Forum was received on November 4, 2011.
On November 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed dr. Katalin Szamosi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <kennethcopelandblog.com> domain name is identical or confusingly similar to Complainant’s mark. In support of this Complainant asserts that:
· it has rights in the KENNETH COPELAND mark and other related marks because it has registered the following marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Date Filed; Registered
KENNETH COPELAND MINISTRIES 2,431,819 April 26, 2000; Feb. 27, 2001; &
KENNETH COPELAND 3,514,842 June 12, 2007; Oct. 14, 2008; &
KCM 3,571,604 Feb. 25, 2008; Feb. 10, 2009.
· Respondent’s is not Kenneth Copeland, yet its domain name makes full use of the Complainant's mark and name in the domain name.
· The average consumer/viewer will be confused by the use of Complainant's name in the domain name when Complainant is not the sponsor of the site under the domain.
· The phrase “kennethcopelandblog” clearly intends to suggest, and does suggest, that the site reflects Kenneth Copeland's personal thoughts.
· The blog attacks Kenneth Copeland, misrepresents his thoughts, motives and activities, and seeks to win the support of those who currently participate in or support Kenneth Copeland's ministries.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· Respondent does not appear to do anything other than buy and sell domain names.
· Respondent does not make use of the domain name to provide any particular goods or services.
· Respondent has never been known by the domain name and has no registered or unregistered trademark rights.
· Respondent is not making a legitimate noncommercial or fair market use of the domain name.
· The domain name exploited by Respondent consists of the mark KENNETH COPELAND and the word “BLOG,” indicating that this is a site where Copeland records his thoughts for public consideration. At a minimum, the general appearance of this domain name would cause the average viewer or consumer to wrongly believe that the domain name is intended to be a blog site sponsored by or including Complainant Kenneth Copeland Ministries.
· The “addition of a generic word” does not “detract from or weaken the clear confusing similarity that comes when the entirety of a mark is included in a domain name.” Citing American Laser Centers v. Kresch Legal Services c/o Steele, FA 1317314 (Nat. Arb. Forum May 26, 2010).
· Courts and other tribunals of competent jurisdiction have found such use to be an abusive domain name registration in strikingly similar circumstances. Citing, e.g., Monty and Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 13, 2000).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. In support of this Complainant contends that:
· The only and obvious purpose for use of the domain name is to disrupt Complainant's operations and business activities and to tarnish the marks.
· Complainant attempts to divert Complainant’s consumers to Respondent’s own services and the resolving website contains many links to Respondent’s personal website, including those relating to Respondent’s “personal alternative theology of ‘organic economics.’”
· Complainant contends that Respondent’s FAQ page also specifically discourages readers from contributing to Complainant’s ministries.
· Respondent disrupts Complainant’s business not only by promoting its own competing services and website but also by discouraging consumers from financially contributing to Complainant.
· A dispute as to the worth of one man's ministries by another's does not override the right of the mark holder to control its use, or the right of the public to avoid deceptive domain name practices. Citing Brahma Kumaris World Spiritual Org. v. Allan, FA 1075486 (Nat. Arb. Forum Nov. 19, 2007)
· Respondnet stands to gain, and probably has gained, an increase in the scope of his various ministries, the propagation of his “organic economics” theology, contributions to his ministries‟ finances, and an increase in his own name recognition, all by the confusion caused by misappropriation of Copeland's name.
· Respondent registered the <kennethcopelandblog.com> domain name to attract Internet users seeking Complainant as the use of Complainant’s KENNETH COPELAND mark suggests sponsorship and the generic term “blog” seems to indicate that Respondent’s website is a place where KENNETH COPELAND “records his thoughts for public consideration.” Respondent registered the disputed domain name precisely because of this suggestion of sponsorship, intentionally intending to create confusion and misleadingly divert consumers.
B. Respondent
Respondent argues in the Response that
· The Complainant is self‐refuted first claiming that the Respondent does not make commercial use of the name, they then state that the Respondent lets “Rich Vermillion” use the site to “divert consumers” (which is intended to imply a commercial activity).
· Complainant offers no substantiation to support their subsequent claim for commercial use.
· All the other websites mentioned within the Complaint are currently noncommercial.
· There is nothing currently “sold” on any of these websites mentioned, and their content is offered freely to the public.
· Complainant has shown no proof or evidence of any commercial activity at the resolving website.
· Trademark KENNETH COPELAND is the primary trademark upon which Complainant based their dispute. The documentation provided by Complainant dates that trademark to October 14, 2008.
· Respondent argues that its <kennethcopelandblog.com> domain name was registered prior to Complainant’s registration of its KENNETH COPELAND mark.
· The “secondary” trademark “KCM” is so dissimilar to the domain name
“KennethCopelandBlog.com” that it is utterly irrelevant to the registration of the domain or its use.
· The last “secondary” trademark “Kenneth Copeland Ministries,” therefore, is the only antecedent trademark remotely similar to the domain name in question. However, “KennethCopelandBlog.com” does not contain the word “ministry” or “ministries.”
· Complainant failed to prominently display the trademarks.
· It is commonly understood in applied trademark law that trademarks must be prominently displayed, or else the defendant is entitled to an “innocent infringement” defense which applies to the Respondent in regards to this Complaint.
· The <kennethcopelandblog.com> is a “whistle blower” website.
· Annex 10 substantiates that the domain is noncommercial and cites page 7 of the "Notices and Licensing Information” of <kennethcopelandblog.com>.
· The “whistle blower” nature of the content within the website, coupled with the references to both “Rich Vermillion” and <kennethcopelandblog.com> by the Senate demonstrates that the domain is being used for noncommercial purposes, which are protected under the First Amendment.
· Its informational link to its personal biography, contrary to Complainant’s assertion, is also noncommercial, denies that it uses the resolving website to misleadingly divert consumers and persuade Complainant’s followers to abandon Complainant and asserts that there is no proof supporting these allegations by Complainant.
· The Complainant allegation that, Respondent has never been known by the domain name which is false. Respondent as “Rich Vermillion” is widely known on the Internet and within the public at large for the “whistle blowing” content of <kennethcopelandblog.com>, and therefore Respondent is able to demonstrate that it has legitimate interests in the domain name in accordance with Paragraph 4(c)(ii) of the UDRP.
· The <kennethcopelandblog.com> appearance is not remotely similar to the web sites of the Complainant (citing Annex 1 and 3).
· The tag line on every page makes it clear for visitors that <kennethcopelandblog.com> is not sponsored by Complainant.
· The foundation of its rights and legitimate interests is the use of the disputed domain name to maintain a “whistle blower” website, which is a legitimate noncommercial use.
· Asserts that noncommercial speech is entitled to First Amendment protection and that criticism of a commercial entity, such as Complainant, is also protected noncommercial speech.
C. Additional Submissions
Complainant
In the additional submission the Complainant argues that:
· Respondent’s resolving website at the <kennethcopelandblog.com> domain name attempts to divert Internet users to Respondent’s own website promoting the “personal alternative theology of ‘organic economics’” and to other advertised third-party websites through pay-per-click links and other statements.
· Respondent encourage users to switch their financial support from Complainant to Respondent.
· Respondent likely receives commercial gain, resulting from an increase in its name recognition, greater contributions to its ministries’ finances, and kickback incentives from the advertised links.
· Respondent’s own website, are commercial in nature. In support of its argument that Respondent’s own website at the <richvermillion.com> domain name is commercial.
· Respondent’s website engages in commercial internet referral marketing.
· Respondent’s services appear to be both ministerial and financial and that Respondent explicitly identifies these services as being in competition with Complainant.
· Complainant provides various quotations from the linked third-party websites, including disclosure statements that acknowledge and admit that the third-party websites offer links to commercial products and services and that the authors of the third-party websites might have financial incentives to recommend specific sources.
Respondent
In the additional submission the Respondent argues that:
· The internet based referral network marketing is an unrelated “side business” and there are no links between that website and blog therefore it is irrelevant.
The
Panel finds it appropriate to consider Respondent’s Response as well as Complainant’s
and Respondent's Additional Submissions in resolving this case.
Complainant is the owner of the "KENNETH COPELAND MINISTRIES", "KENNETH COPELAND" and "KCM" trademarks which are registered with the United States Patent and Trademark Office.
The website under the domain <kennethcopelandblog.com> is a criticizing website.
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."
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.
The Panel notes that ownership of a federally registered trademark is strong evidence of a Complainant’s rights in that mark under Policy ¶ 4(a)(i). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005).
In the present case, Complainant owns three federally registered trademarks: KENNETH COPELAND MINISTRIES mark registered on Feb. 27, 2001, KENNETH COPELAND mark filed on June 12, 2007 and registered on Oct. 14, 2008 and the KCM mark filed on Feb. 25, 2008 and registered on Feb. 10, 2009.
The Panel finds that the KCM mark of the Complainant is not confusingly similar to the disputed domain name.
Respondent contends that the registration of the domain name predates the KENNETH COPELAND mark.
The Panel finds that besides the KENNETH COPELAND MINISTRIES mark, which was registered on February 27, 2001, Complainant’s rights in the KENNETH COPELAND mark date back to the filing date of June 12, 2007. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate respondent’s registration”).
Respondent contends that Complainant failed to prominently display the trademarks therefore Respondent is entitled to an “innocent infringement” defense.
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable”.
The Panel agrees with the view of several UDRP decisions that issues arising under the Policy should not be decided on the basis of national law if the relevant provision does not import or refer to national law. Issues should, whenever possible, be determined having regard to general and globally accepted principles of law. See, e.g., Fundación Calvin Ayre Found. v. Deutsch, D2007-1947 (WIPO Feb. 25, 2008). Therefore the Panel finds that "innocent infringement" defense is not applicable under the Policy.
Since the only differences between the KENNETH COPELAND mark and the disputed domain name are the deleted space between the terms, the addition of the generic term “blog,” and the attachment of the generic top-level domain (“gTLD”) “.com.” the Panel finds that Respondent’s <kennethcopelandblog.com> domain name is confusingly similar to to Complainant’s KENNETH COPELAND mark for the purposes of Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (where the panel held that the addition of a single generic term to complainant’s mark does not differentiate the disputed domain name from the complainant’s mark).
The Panel notes that the KENNETH COPELAND MINISTRIES mark is also confusingly similar to the disputed domain name.
As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
The Respondents may establish a right or legitimate interest in the Disputed Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(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 Panel finds that the WHOIS information for the disputed domain name identifies the registrant as “James Vermillion,” and determines that the WHOIS record suggests no nominal connection between Respondent and the disputed domain name. Further, the Panel finds that the evidence submitted by Respondent does not support the fact that he is known by the domain name or that his name and the disputed domain name are mutually identified with each other. Respondent alleges that it is widely known on the Internet and within the public at large for the “whistle blowing” content of the <kennethcopelandblog.com> domain name. Respondent also contends that numerous websites clearly indicate that Respondent and the disputed domain name are mutually identified with each other. Respondent argues that it has advertised the connection between itself and the disputed domain name extensively throughout the media. The Panel finds that, on the basis of the numerous websites and media exposure of the blog, the internet users might identify Respondent as the author of the blog, but the content and the name of disputed domain makes it clear that KENNETH COPELAND and KENNETH COPELAND MINISTRIES are identified with the domain due to its confusing similarity with the trademarks of the Complainant and the natural person KENNETH COPELAND. The Panel therefore holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <kennethcopelandblog.com> domain name to host a website criticizing and attacking Complainant, attempting to divert Complainant’s consumers to Respondent’s own services and discourages readers from contributing to Complainant’s ministries. Complainant also asserts that many of the websites linked to and advertised at the disputed domain name are also commercial websites as is the website of the Respondent. The Panel finds that the evidence filed by the Complainant in support of his allegation that the disputed domain name is commercial was insufficient; since some of the quotations were not substantiated by evidencing their source and others were not relevant in relation to the disputed domain name.
Further, Respondent asserts that it does have rights and legitimate interests in the <kennethcopelandblog.com> domain name because it is using the disputed domain name for the noncommercial purpose of “whistle blowing” in reference to Complainant’s activities. Respondent argues that the foundation of its rights and legitimate interests is the use of the disputed domain name to maintain a “whistle blower” website, which is a legitimate noncommercial use. Previous panels have held that irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name if the use is fair and non-commercial. See Howard Jarvis Taxpayers Assoc. v. McCauley, D2004-0014 (WIPO April 22, 2004).
Under Paragraph 4 (c)(iii) of the Policy, noncommercial fair use is expressly made a defense. Although free speech is not listed as one of the Policy's examples of a right or legitimate interest in a domain name, it is the panel's view that the list is not exclusive, therefore concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corp. v. Myers, D2000-0190 (WIPO August 5, 2000).
Since Complainant failed to prove the commercial nature of the website and Respondent has legitimate fair use and free speech rights and interests in respect of the Domain Name, the Panel finds that the Respondent has established under paragraph 4(c)(iii) of the Policy that its registration and use of the disputed domain name in respect of a website critical of the Complainant amounts to a legitimate non-commercial or fair use of the domain name. See Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name).
The Panel notes that Respondent’s fair use of the disputed domain name is supported by the fact that although the domain name is confusingly similar to the trademarks of the Complainant, the criticizing content and nature of the website is clear and therefore it is not misleading the visitors, accordingly, due to the Panel's view, they cannot come to the conclusion that website is sponsored or authored by Complainant.
The Panel concludes that Respondent’s registration and use of the disputed domain amounts to a legitimate non-commercial or fair use of the domain name pursuant to Policy ¶ 4(a)(ii), therefore Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kennethcopelandblog.com> domain name REMAIN with Respondent.
Dr. Katalin Szamosi, Panelist
Dated: 18 November 2011
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