Come and See Foundation, Inc. v. Nanci Nette
Claim Number: FA2304002040469
Complainant is Come and See Foundation, Inc. (“Complainant”), represented by Anthony J. Biller of Envisage Law, North Carolina, USA. Respondent is Nanci Nette (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thechosentv.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on April 18, 2023; Forum received payment on April 18, 2023.
On April 18, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thechosentv.com> 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 April 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2023 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@thechosentv.com. Also on April 18, 2023, 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 May 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it markets THE CHOSEN, an American religious historical drama series that focuses on the life and ministry of Jesus of Nazareth. The series premiered on December 24, 2017, via Internet streaming. On April 21, 2019, Easter Sunday, Complainant’s predecessor in interest released season one of the series on a dedicated THE CHOSEN app, websites, and TV networks and streaming platforms including VidAngel, Amazon Prime Video, Peacock, BYUtv, and Netflix. As of January 3, 2023, Complainant has 1.86 million subscribers to THE CHOSEN YouTube Channel. THE CHOSEN Season 3 Official Trailer has been viewed 2,966,995 times. Each episode has hundreds of thousands of views within weeks of the episode posting. THE CHOSEN is also on Facebook with 2,682,961 followers. Approximately 2.7 million people watch THE CHOSEN via Facebook and approximately 25 million people access THE CHOSEN content via Facebook each month. THE CHOSEN also has a presence on Twitter with 52,900 followers, TikTok with 221,800 followers, and Instagram with 956,0000 followers. THE CHOSEN app is offered in the Apple App Store, and on the Android Google Play store with over 100K+ downloads. The app has been downloaded on every continent and the episodes are available in 62 languages. The app is available on Roku, Apple TV, or Amazon Fire streaming devices. Statistics change daily, but THE CHOSEN has approximately 405 million views. Complainant incorporates its mark THE CHOSEN in the domain name <thechosen.tv>. Complainant asserts rights in THE CHOSEN mark through its registration in the United States, filing date April 21, 2020; registration date September 7, 2021; first use in commerce date December 1, 2017.
Complainant alleges that the disputed domain name is virtually identical and confusingly similar to its THE CHOSEN mark because it incorporates the THE CHOSEN mark in its entirety and merely adds the generic/descriptive term “tv” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the THE CHOSEN mark. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked page with various third-party pay-per-click advertising hyperlinks. Specifically, based on a search in the Internet Archive, during 2018, the disputed domain name resolved to <http://arisepictures.com>, a page that has not changed since 2014 and offers nothing for sale. By July 4, 2019, the disputed domain name resolved to a parking page. Currently the disputed domain name resolves to a monetized parking page.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to offer it for sale to Complainant for a price in excess of out-of-pocket costs. The resolving website displays third party pay-per-click advertising hyperlinks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark THE CHOSEN and uses it to market a historical drama series.
Complainant’s first use in commerce of its mark was in 2017.
The disputed domain name was registered in 2011.
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”).
Since the Panel finds that there has not been bad faith registration, it will not rule on this element of the Policy See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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).
Since the Panel finds that there has not been bad faith registration, it will not rule on this element of the Policy.
Complainant states that it started its business in 2017. The disputed domain name was registered in 2011.
As stated in 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. Indeed, the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Section 3.8.2 of the cited WIPO Jurisprudential Overview 3.0 lists situation where bad faith may be found even though a disputed domain name was registered before trademark rights accrued, for example when the domain name was registered in anticipation of trademark rights.
Complainant does allege that such is the case here, stating (emphasis added) “The Respondent has registered the disputed Domain Name for the purpose of selling it to the Complainant who is the owner of the trademark THE CHOSEN or to a competitor of the Complainant for valuable consideration in excess of the respondent’s out of pocket costs directly related to the domain name. When contacted about selling the Domain Name, Respondent offered it for sale for $25,000.”
However, Complainant does not explain how Respondent could possibly have anticipated, in 2011, that Complainant would produce a TV series in 2017. Nor does it present any evidence to show that Respondent registered the disputed domain name in order to sell it to Complainant. As noted above, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.
According to paragraph 4.8 of the cited WIPO Jurisprudential Overview 3.0, a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
The Panel has searched the Internet Archive but did not find any relevant entries other than those set forth in the Complaint. The Panel has searched the Internet to see if there was a novel or an item for the year 2011, and it has found two relevant web pages:
·
A novel
published in 1967:
https://en.wikipedia.org/wiki/The_Chosen_(Potok_novel)
·
A short film
was made in 2011:
https://www.imdb.com/title/tt1829037/
The Panel is of the view that it may be the case that that the disputed domain name was registered in 2011 to promote the cited short film.
According to 3.9 of the cited WIPO Jurisprudential Overview 3.0, “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.”
Here, Complainant does not allege – much less provide evidence to show – that the disputed domain name was transferred from the original registrant to some other entity.
Thus the Panel must assume that the original registrant is the current registrant. Consequently, it must find that the disputed domain name was registered by the current registrant well before Complainant acquired its trademark rights. Thus there was no intent to target Complainant and the disputed domain name was registered in bad faith.
Complainant points out that Respondent, in response to a query from Complainant, offered to sell the disputed domain name for a price in excess of out-of-pocket costs. This does not evince, in and of itself, bad faith registration and use under the Policy. As the Panel explained in Broadcom Corporation v. Michael Becker, FA0108000098819 (Forum Oct. 22, 2001), citing other cases:
· selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible);
· registering a character string as a domain name in order to sell it does constitute a legitimate use, so long as there is no bad faith intent to cybersquat a trademark;
· the mere act of selling the disputed domain name does not, of itself, constitute evidence of bad faith behavior.
Here, there is no evidence to show that Respondent registered the disputed domain name with the intent of selling it to Complainant. Thus the Panel cannot find bad faith use under the Policy.
For all the above reasons, the Panel finds that Complainant has failed to satisfy its burden of proof for this element of the Policy.
Reverse Domain Name Hijacking
Complainant, or its counsel, should have known that its Complaint, as presented, could not succeed, for the reasons set forth above. However, there is nothing in the record to indicate that Complainant harassed Respondent or that it acted with malice aforethought – as opposed to mere lack of knowledge of the Policy. Since Respondent did not reply, Respondent did not incur any costs in the instant proceedings. Thus the Panel declines to find Reverse Domain Name Hijacking. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, Oct. 18, 2000) (“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”).
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 <thechosentv.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: May 22, 2023
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