Peymon Mottahedeh v. AbdulBasit Makrani
Claim Number: FA2010001918379
Complainant is Peymon Mottahedeh (“Complainant”), represented by Peymon Mottahedeh, Florida, USA. Respondent is AbdulBasit Makrani (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freedomchurch.org>, registered with GoDaddy Online Services Cayman Islands Ltd.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Darryl C. Wilson, David E. Sorkin and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 26, 2020; the Forum received payment on October 26, 2020.
On November 3, 2020, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the <freedomchurch.org> domain name is registered with GoDaddy Online Services Cayman Islands Ltd., and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. 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”) and Rules (the “Rules”).
On November 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2020 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@freedomchurch.org. Also on November 4, 2020, 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 November 30, 2020.
On December 7, 2020, an Additional Submission from Complainant was received. The Panel finds that such Additional Submission complies with the Forum’s Supplemental Rule 7 and was considered in the Panel's decision. On December 8, 2020, an Additional Submission from Respondent was received. The Panel finds that that Additional Submission complies with the Forum’s Supplemental Rule 7 and was considered in the Panel's decision.
On December 8, 2020, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Darryl C. Wilson, David E. Sorkin and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is a speaker and founder of “Freedom Church,” which was formed to “communicate with and inform members and other interested truth seekers, and to help new members join the church.”
- Complainant has used the FREEDOM CHURCH service mark in rendering services since 1997. Complainant registered that mark with the state of Florida.
- Complainant also registered and used the disputed domain name, <freedomchurch.org>, since 1997. Complainant mistakenly allowed his registration of that name to expire in 2020. Respondent then registered the name.
- The disputed domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and merely adds the “.org” generic top-level domain.
- The Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not using the disputed domain name to organize a church for the purposes of freedom. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
- Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale at a much higher price than that for which it was purchased. Respondent registered the disputed domain name in opportunistic bad faith after Complainant accidentally allowed its registration of the name to expire.
B. Respondent
- Respondent is a buyer and reseller of generic domain names, a legitimate business.
- Complainant fails to demonstrate rights in the FREEDOM CHURCH service mark. Complainant’s registration of that mark in the state of Florida took place after Respondent lawfully bought the disputed domain name. Furthermore, registration with a state authority does not establish rights in a mark.
- Complainant has failed to demonstrate common law rights in the FREEDOM CHURCH service mark. Many other entities throughout the United States make use of that and very similar marks. None, including Complainant, can claim a secondary meaning with respect to said mark.
- Further investigation reveals the extent to which any “Freedom Church” run by Complainant is a thinly veiled criminal conspiracy to promote tax evasion and outlandish theories.
- Respondent’s purchase and general offer to resell the disputed domain name is a bona fide offering of goods or services, as Respondent is a reseller of generic domain names. The disputed domain name is comprised of generic terms to which Complainant does not have a monopoly. Additionally, the registration with the Florida authority explicitly notes that the terms of Complainant's claimed mark are generic
- Respondent did not register and does not use the disputed domain name in bad faith. Respondent’s business as a reseller of generic domain names is not a bad faith use. There is no way Respondent could have known of Complainant at all, given the generic nature of the terms in the disputed domain name, and Complainant did not register his claimed service mark with Florida until after Respondent purchased the disputed domain name.
C. Complainant's Additional Submission
- Complainant does not dispute the general legitimacy of Respondent's business model, which is to profit handsomely from buying and selling recently expired domain name registrations that consist of generic terms.
- Complainant's Florida registration for the FREEDOM CHURCH service mark should be deemed evidence of Complainant's valid ownership of the mark. Respondent has misconstrued UDRP cases that question service mark registrations issued by individual states. In any case, Complainant has valid common law rights in its service mark, due to continuous use since 1996 and the lack of challenge of those rights by any other church that incorporates that mark in its name.
- Respondent is not commonly known as the disputed domain name, as well as neither using the name in connection with a bona fide offering of goods or services nor using it for legitimate noncommercial or fair use purposes.
- Respondent's offer to sell the disputed domain name to Complainant, or its competitors, for nearly US$30,000 is evidence of Respondent's bad faith conduct.
D. Respondent's Additional Submission
- Complainant has misinterpreted prior UDRP cases that involve mere state service mark registrations. Those cases do not confirm those registrations as conclusive evidence of service mark ownership for Policy ¶ 4(a)(i) purposes.
- Complainant has not shown the distinctiveness and secondary meaning necessary to achieve common law rights in the FREEDOM CHURCH service mark. Simply possessing an unchanged web page at the disputed domain name for a number of years is insufficient evidence. Complainant offers no hard evidence of advertising expenditures, customer volume or public recognition regarding its use of the mark. Moreover, Complainant acknowledges that use of the mark, or variations thereof, is neither exclusive to nor distinctive of Complainant.
- Respondent's offer to sell the disputed domain name is not evidence of bad faith, but instead falls within Respondent's good faith business actions.
Complainant is a speaker and founder of the Freedom Church, through which he has rendered spiritual and taxation-related advice since 1996. In furtherance of his efforts, Complainant registered the disputed domain name, <freedomchurch.org>, on Feb. 28, 1997, but allowed that registration to lapse as of Feb. 28, 2020. He registered the FREEDOM CHURCH service mark with the state of Florida on Oct. 16, 2020 (Reg. No. T20000001168).
Respondent is the current owner of the disputed domain name, which he acquired on March 1, 2020. Respondent is currently offering the disputed domain name for sale at a price of approximately US$30,000.
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.
As Complainant had owned and rendered services under the disputed domain name, <freedomchurch.org>, for 23 years prior to Respondent's registration of that name, the Panel can see clearly that the name is identical to the Complainant's claimed FREEDOM CHURCH service mark.
However, under Policy ¶ 4(a)(i), Complainant must also establish that he owns rights to a FREEDOM CHURCH service mark. To that end, Complainant has submitted a mark registration document issued by the state of Florida. But, because such registrations are not subjected to the rigorous examinations required under the United States Patent and Trademark Office, or other national or regional trademark authorities throughout the world, prior Policy panels have not generally recognized state issued mark registrations as probative of mark ownership. The Panel agrees with that reasoning and determines that Complainant's Florida registration is insufficient to sustain Complainant's claim to rights in a FREEDOM CHURCH service mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.2 (“When considering UDRP standing, panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations (as opposed to US federal registrations); these are not accorded the same deference and may not on their own satisfy the UDRP’s “rights in a mark” standing test.”); see also Elan, LLC v. Al Perkins, FA 1731999 (Forum June 26, 2017) (“...registration of a trade name with a State is insufficient to establish trademark rights.”); see also PK Information Systems v. Kevin Kurpe, FA 1835258 (Forum May 13, 2019) (“As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds. In particular [...] the Florida Department of State [...] will typically issue the registration as long as there are no identical registrations on the State registry.”).
Failing to sustain a finding of service mark rights by virtue of sufficient registration, Complainant might successfully assert that he possesses common law rights in the FREEDOM CHURCH service mark. However, to do so, Complainant would have to provide the Panel with evidence that the mark has become a distinctive identifier of his services, so that the mark takes on a “secondary meaning” relative to Complainant. Beyond the duration and nature of use regarding the service mark, other pertinent evidence supplied by Complainant might convincingly address: volume of sales; spending on and extent of advertising; actual public recognition; and perhaps consumer surveys. See WIPO Overview 3.0, section 1.3.
With respect to the burden placed on Complainant to establish common law rights in the FREEDOM CHURCH service mark, the Panel finds that the Complaint and Complainant's Additional Submission furnish scant evidence on which to base those rights. The Panel notes relatively long use, 23 years, in the form of Complainant's continuous registration of the disputed domain name, but little else. Complainant has provided only a simple display of a webpage attached to the name, without mention of connected revenues, advertising expenditure, consumer or media recognition or any kind of published surveys. In analyzing this lack of evidence, the Panel also recognizes that, because the claimed service mark is composed of two generic terms, “freedom" and "church," said complementary evidence is all the more important. See WIPO Overview 3.0, section 1.3 (“In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”).
Therefore, given the generic nature of the claimed FREEDOM CHURCH mark, the Panel must determine that Complainant's submission of evidence, which only confirms the duration of its use within a domain name connected to a simple webpage, is insufficient to sustain a finding of common law rights in that mark. See Thermo Holdings, LLC v. Park KyeongSook, FA 1608001690428 (Forum Sept. 25, 2016) (finding that evidence of a date of first use of a mark is insufficient to establish rights therein).
Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
As Complainant has failed with respect to the first element required under the Policy, the Panel need not consider the second and third elements a Complainant must prove under the Policy.
Reverse Domain Name Hijacking
The Respondent has asked that the Panel find that the Complainant has engaged in Reverse Domain Name Hijacking because the Respondent should have known that he had no trademark rights in the disputed domain name <freedomchurch.org>. However, the Panel majority finds that since the Complainant owned the disputed domain from 1997 until 2020, it was by no means obvious that the Complainant would not have been able to create trademark rights in the domain name during that lengthy time period. In addition, as the Complainant lost the domain name through inadvertent nonpayment, it is not unreasonable, in bad faith or for harassment (per Rule 15e) if the Complainant attempts to regain ownership of the domain name through a UDRP proceeding.
Panelist Sorkin would find that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding. Complainant knew or should have known that he could not demonstrate the requisite trademark rights, his prior ownership of the corresponding domain name notwithstanding. While Complainant is self-represented in this proceeding, he is an experienced pro se litigant and the president of an unaccredited law school, and he holds himself out as an expert on tax law and ethical matters. His pro se state trademark application was filed in October 2020, apparently in preparation for this proceeding, and it does not appear that Complainant ever asserted any trademark rights whatsoever prior to Respondent’s acquisition of the disputed domain name.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <freedomchurch.org> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
David E. Sorkin, Panelist
Dennis A. Foster, Chair
Dated: December 21, 2020
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