DECISION

 

Thru the Bible, Inc. v. Danny Edwards

Claim Number: FA2404002093399

PARTIES

Complainant is Thru the Bible, Inc. ("Complainant"), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Danny Edwards ("Respondent"), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <journeythruthebible.com>, registered with Dynadot Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 16, 2024; Forum received payment on April 16, 2024.

 

On April 16, 2024, Dynadot Inc confirmed by e-mail to Forum that the <journeythruthebible.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 April 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2024 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@journeythruthebible.com. Also on April 17, 2024, 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 May 6, 2024.

 

On May 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Thru The Bible, Inc., a California nonprofit, has used the THRU THE BIBLE trademark throughout the U.S. since its founding in 1967. Complainant's bible study programs offered under the THRU THE BIBLE mark have been aired on radio stations in the U.S. since its founding, and are now produced in over 130 languages and dialects around the world. Complainant owns a trademark registration at the United States Patent and Trademark Office ("USPTO") for THRU THE BIBLE (i.e., Reg. No. 6939105, registered on January 3, 2023) and it promotes its programs, goods and services from its official website at TTb.org.

 

The <journeythruthebible.com> domain name, registered on March 19, 2024, is confusingly similar to Complainant's THRU THE BIBLE mark as it incorporates the mark in its entirety and adds only the descriptive term "journey" plus the ".com" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where he is not commonly known thereby and he hosts a pay-per-click page with links to competing religious services.

 

The disputed domain name was registered and is used in bad faith where Respondent had prior knowledge of Complainant's mark and it hosts the above-mentioned pay-per-click site.

 

B. Respondent

The Response states as follows in its entirety: I purchased the domain name <journeythruthebible.com> a few months ago as part of a portfolio. I had no interest in taking anyone's trademark or brand. Being a Sunday school teacher and church deacon myself I thought it might be a good name to use for a future bible study. After receiving a complaint by Thru the Bible Inc. I did some research and found Dr. J. Vernon McGee's site. Afterwards on the slim chance I decided to use the site, it would just have links back to ttb.org for their brand, or more than likely just offer to trade or sell it back to the company. All I would ask is the registration fee I paid of $10.99.

 

No intentions to ever copy or make money off someone's brand were made. I just found a good domain name, did a search and it was available for registration. I've listened to Dr. McGees messages for many years and am a big fan of his ministry.

 

FINDINGS

-       Complainant owns trademark rights to the THRU THE BIBLE mark and the <journeythruthebible.com> domain name is confusingly similar to such mark;

-       Respondent does not have rights or legitimate interests in the disputed domain name where he is not commonly known by the domain name and he hosts a website that displays pay-per-click links to third-party services that compete with Complainant; and

-       The disputed domain name was registered and is used in bad faith where its website passes itself off as Complainant, for commercial gain, based on a likelihood of confusion with Complainant's mark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the THRU THE BIBLE mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) ("It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights"). Complainant provides a copy of its USPTO registration certificate for the THRU THE BIBLE mark. Thus, the Panel finds that Complainant has rights in its asserted mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <journeythruthebible.com> domain name is confusingly similar to the THRU THE BIBLE mark because it fully incorporates the mark and adds the descriptive term "journey" as well as the ".com" TLD. The addition of generic or descriptive terms to a mark typically does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.") As Complainant's THRU THE BIBLE mark is plainly discernable within the <journeythruthebible.com> domain name, the Panel finds that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

Complainant contends that Respondent lacks rights or legitimate interests in the <journeythruthebible.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the THRU THE BIBLE mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name lists the registrant as "Danny Edwards" and there is no evidence to suggest that Respondent is known otherwise. Further, Complainant specifically states that it "has never given express permission for Respondent to use the THRU THE BIBLE mark in the Domain Name, and Respondent is not a licensee authorized to use Complainant's THRU THE BIBLE mark". Respondent has not claimed otherwise and so the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or in a manner that is legitimate noncommercial or fair as it has resolved to a pay-per-click website with links to competing services. Where the Respondent uses a domain to display a pay-per-click page with links to third-party products or services that are competitive to a complainant, Panels often find that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business). Complainant provides screenshots of the website to which the disputed domain name resolves and these display pay-per-click links titled "Journey Church", "Church", and "Bible Study". It is clear that these links refer to Complainant's field of religious study. Although the nature of these links may be due, in part, to the appearance of the word "bible" in the disputed domain name, as noted further below, the Panel finds that Complainant's mark is sufficiently distinctive such that the resulting links for religious services cannot be discounted as only being spawned based on a single word.

 

For its part, Respondent states that he registered the disputed domain name "as part of a portfolio" and that he "thought it might be a good name to use for a future bible study". Where a respondent claims a bona fide, legitimate, or fair use based on a possible future plan for a disputed domain name, some measure of detail or supporting evidence is typically required by Panels and bare assertions are, alone, insufficient. See Carrefour SA v. Redacted for Privacy, Domains By Proxy, LLC, and Waleed

Ahmad, D2024-0053 (WIPO Mar. 17, 2024) ("where a respondent seeks to rely on demonstrable preparations for use, a bare assertion of intention is not usually sufficient. Some form of corroborating evidence is usually required.") Here, Respondent makes a rather open-ended assertion regarding a possible future bible study endeavor but provides no further detail or evidence to allow this Panel to conclude that he has made demonstrable preparations for using the disputed domain name under Policy ¶ 4(c)(i).

 

Finally, Respondent does not contest Complainant's trademark rights in the phrase THRU THE BIBLE nor does he assert that the phrase is a descriptive term. In contrast, he states that he has "listened to Dr. McGees messages for many years and am a big fan of his ministry" indicating that he is likely familiar with and acknowledges Complainant's trademark. Finally, the Panel notes that Complainant's trademark registration subsists on the Principal Register, contains no disclaimer of terms, and was not filed under Section 2(d) of the US Trademark Act claiming acquired distinctiveness. Considering all of these facts, the Panel is not in a position to second-guess the judgement of the USPTO in determining the validity or distinctiveness of Complainant's mark.

 

As the Complainant has set out a prima facie claim which has not been adequately rebutted by the Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does he make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).

 

Considering all of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent had constructive knowledge of Complainant's rights in the THUR THE BIBLE mark at the time of registering the <journeythruthebible.com> domain name. Although constructive knowledge is generally disfavored under the Policy, a respondent's actual knowledge of a complainant's rights in an asserted mark prior to registering a disputed domain name can form a foundation upon which to base an argument for bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.") Also see AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field.") Complainant claims that its "THRU THE BIBLE mark has acquired valuable goodwill and reputation, and is widely recognized by the consuming public … throughout the world". Submitted into evidence is its USPTO registration certificate and a single screenshot from Complainant's own website at www.ttb.org which promotes some of its offerings. The Panel does not view this very limited submission as supporting Complainant's assertion that its mark has gained some reputation as it does not speak to the effect of its promotional efforts on the public.¹  However, Respondent has noted his longstanding familiarity with Complainant and its services and this demonstrates his actual knowledge of the THRU THE BIBLE mark at the time that he registered the disputed domain name. This, combined with the fact that the <journeythruthebible.com> domain name uses the term "thru", as used in Complainant's mark, rather than the proper spelling "through", leads the Panel to find it more likely than not that Respondent did have actual knowledge of Complainant's rights in its mark at the time that he registered the disputed domain name.

 

Complainant next argues that Respondent registered and uses the disputed domain name in bad faith because Respondent resolves it to a pay-per-click website with links to other websites offering services that compete with Complainant's line of business. Use of a disputed domain name to redirect consumers to third-party goods or services has been upheld as evidence of bad faith disruption of a complainant's business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) ("Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.") Complainant provides a screenshot of the disputed domain name's resolving pay-per-click page with links to other religious services as noted in the previous section of this decision.

 

Further, as noted above, Respondent chose to use the term "thru", as used in Complainant's mark, rather than the proper spelling "through", and this suggests that he had Complainant's mark in mind when registering the disputed domain name. In a recent decision, a Panel reached the conclusion that "even if Complainant's registered and incontestable trademark for NATIONWIDE OVERSPRAY is arguably weak, as Respondent claims, such does not provide a competitor a right to use the exact mark in a domain name for purposes of offering competing services. Respondent knew better and should have stayed away from Complainant's NATIONWIDE OVERSPRAY mark when registering the disputed domain name to promote its services." J.G., Inc. v. Jon Goodhart / Just Like New Overspray Removal, FA 2087257 (Forum May 5, 2024). Here, Respondent states that he is a "Sunday school teacher and church deacon" and that he has followed Complainant's work for many years. Although this claimed position is not supported by any submitted evidence, if the Panel accepts Respondent at his word this leads to the conclusion that he should have known that any planned religious services would run afoul of Complainant's trademark rights. This is not to imply that Respondent acted to target Complainant's mark with malice, but that he targeted the mark in bad faith nevertheless.

 

While there may be some room for debate and further development of the facts, based on a preponderance of the presented evidence and legal arguments, the Panel finds it more likely than not that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <journeythruthebible.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: May 10, 2024