United Church of Christ Board v. John VanDerLaan
Claim Number: FA2211002019856
Complainant is United Church of Christ Board (“Complainant”), represented by Donna M. Klett of Wentsler LLC, Ohio, US. Respondent is John VanDerLaan (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ucciaconf.org>, registered with GoDaddy.com, LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 10, 2022; Forum received payment on November 10, 2022.
On November 11, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <ucciaconf.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2022 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@ucciaconf.org. Also on November 15, 2022, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant made the following contentions.
Complainant,
United Church of Christ Board, is a Christian church and is also engaged in
related business and services. Complainant asserts rights in the UCC mark based
upon registration of the mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. no. 3,934,297, registered June 5, 2018). See
Compl. Ex. B. Respondent’s <ucciaconf.org>
domain name is
confusingly similar to Complainant’s UCC trademark because the domain name incorporates the mark in its entirety
and adds the descriptive words “IA” and CONF” and the generic top-level domain
name (“gTLD”) “.org”.
Respondent does not have rights or legitimate interests
in the <ucciaconf.org> domain name. Respondent is not licensed or
authorized to use Complainant’s UCC
mark and is not commonly known by the
disputed domain name.
Respondent registered and uses the <ucciaconf.org>
domain name in bad faith. Respondent
registered and uses the disputed domain name as attraction for commercial gain
by creating a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent, however, wrote to the Forum on November 15, 2022 stating in effect that he was not sure what the Complaint was about, that he had purchased the domain name through a GoDaddy auction and asking how the claim could be resolved.
1. Complainant is a Christian Church that also undertakes various business and related services.
2. Complainant has established its rights in the UCC mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 3,934,297, registered June 5, 2018).
3. Respondent registered the <ucciaconf.org> domain name on March 22, 2001.
4. The evidence shows that Respondent has no rights or legitimate interests in the domain name and that it registered and has used the domain name in bad faith.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the UCC mark based upon registration of the mark with the USPTO (e.g., Reg. no. 3,934,297, registered June 5, 2018). See Compl. Ex. B. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Since Complainant has provided evidence of registration of the UCC mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UCC mark. Complainant argues that the <ucciaconf.org> domain name is confusingly similar to Complainant’s UCC trademark because it incorporates the mark in its entirety and adds the descriptive words or expressions “IA” and CONF”. “IA” is a well-known abbreviation for the state of Iowa, and “CONF” is a well-known abbreviation for the word “conference.” The domain name also includes the gTLD “.org”. Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Therefore, the panel finds the disputed domain name is confusingly similar to Complainant’s UCC mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UCC mark and to use it in its domain name adding only the words “IA” and “CONF” to the mark. “IA” is a well-known abbreviation for the state of Iowa, and “CONF” is a well-known abbreviation for the word “conference.”
(b) Respondent registered the domain name on March 22, 2001;
(c) No evidence has been adduced to show that Respondent has a right or legitimate interest in the domain name. Moreover, the domain name has been used to promote the interests of the United Christian Citizens.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <ucciaconf.org> domain name because Respondent is not licensed or authorized to use Complainant’s UCC mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information for the disputed domain name lists the registrant as “John VanDerLaan.” See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, which he could have done had he been so minded, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant argues Respondent registered and uses the disputed domain for commercial gain by creating a likelihood of confusion between, on the one hand, Complainant’s mark, which clearly invokes an organization in Iowa which is or conducts a conference, and on the other hand the offerings on the website to which the disputed domain name resolves. In other words, is Respondent using the domain name to promote his offerings by confusing them with the offerings made by Complainant under its trademark?
This is difficult to assess, but on the balance of probabilities the Panel finds that the domain name and its contents of the corresponding website have given rise to that conclusion and that that situation has come about intentionally. Why else would anyone buy, retain and use the domain name? If there is another explanation, Respondent could have given it, but he has not done so. The Panel therefore, has to draw its conclusion from the evidence.
As part of the evidence, Complainant provides screenshots of the website to which the domain name resolves, in other words the website that has been set up by those who control the domain name that is in dispute. This website is clearly designed to promote the beliefs and policies, not of the Complainant, United Church of Christ Board, but an organization named United Christian Citizens. It is fairly clear that the domain name has been registered and used because of the similarity between the initials of Complainant and those of the United Christian Citizens, to the extent that anyone coming to Respondent’s resolving webpage may well be confused whether they have arrived at the official website of the United Church of Christ Board. That view would be re-enforced if the visitor went into the detail of what was found on the website. Thus, the visitor would find that the website contains numerous statements of faith linked with current issues such as the pandemic, immigration, freedom, the Constitution, the role of government and others. That view would be strengthened even more when the visitor saw that the website contained a trademark in the form of a stylized comma that is registered in the name of the Complainant. Thus, the United Christian Citizens is using this trademark of the United Church of Christ Board as well as its UCC trademark, clearly without permission.
There are other indications that the Respondent’s website has been designed to encourage users to think that they have arrived at the website of the United Church of Christ Board. The Complainant has summarized this evidence in the following way:
“Significantly, the domain name at issue is used with a website that prominently displays social media profiles and trademarks associated with the Complainant, thereby increasing the likelihood that visitors to the site will be confused as to its connection with the Complainant. Enclosed as Exhibit I is a copy of the ucciaconf.org website. The website includes links to Facebook and YouTube pages either owned by or associated with the Complainant. A video published by the Complainant is also embedded on the front page of the site. Enclosed as Exhibit J is a printout of the Facebook page linked on the domain, while a screenshot of the linked YouTube page is enclosed as Exhibit K. Finally, the embedded video image prominently displays a design mark owned by the Complainant. Copies of the U.S. Patent and Trademark Office registrations for that design mark are enclosed as Exhibit L.”
The Panel has examined this evidence several times. It finds that the Complainant’s conclusions are justified and accurate. The Respondent’s website is in effect trading on the name and activities of the Complainant. The result is that the internet user would almost certainly think that the website was the website of the United Church of Christ Board, or that it was connected with or approved by that body in some way. It was clearly misleading and deceptive to allow that impression to take hold and the Panel therefore finds that by reason of its conduct, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, an element of Policy ¶ 4(b)(iv) is that the improper use of the domain name, which has now been made out, was embarked on to produce commercial gain. There is no clear evidence on that issue, although it may have been an indirect result. But even if that were not the case, the facts show registration and use in bad faith in general, quite apart from the specific criteria set out in Policy ¶ 4(b)(iv).Thus, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the UCC mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ucciaconf.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: December 13, 2022
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