WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Christian Credit Counselors Inc. v. Domain Group LLC

Case No. D2007-1509

 

1. The Parties

The Complainant is Christian Credit Counselors Inc., United States of America, represented by Mandour & Associates, United States of America.

The Respondent is Domain Group LLC, United States of America, represented by Robert Bassolino, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <christiancreditcounseling.org>, is registered with Go Daddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2007. On October 16, 2007, the Center transmitted by email to Go Daddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 16, 2007, Go Daddy.com Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. Further to the Respondent's request for an extension to file a Response received by the Center on November 8, 2007, and taking into account its stated reasons for that request, and considering the objection of the Complainant, the Center granted the extension of time until November 21, 2007. The Response was filed with the Center on November 21, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on December 3, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Located in the state of California, the Complainant is a company that markets debt management and credit counseling services in the United States of America. It owns the service mark CHRISTIAN CREDIT COUNSELORS registered with the United States Patent and Trademark Office (the “USPTO”) (Registration No. 3,034,800; December 27, 2005).

The Respondent registered the disputed domain name, <christiancreditcounseling.org>, on July 31, 2005. The Respondent is located in the state of Florida, United States of America.

Prior to the filing of the Complaint, the parties had been in communication with each other but could not reach an agreement about the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

- The Complainant is the owner of a registered service mark, CHRISTIAN CREDIT COUNSELORS (USPTO Registration No. 3,034,800; December 27, 2005). The Complainant has used its mark in connection with debt management since at least June 1, 1994.

- The Respondent registered the disputed domain name, <christiancreditcounseling.org>, on July 31, 2005, without the knowledge or consent of the Complainant.

- Despite multiple changes in registration information regarding the disputed domain name, the Complainant attempted for more than one year to resolve the matter with the Respondent, including transmission of a cease and desist letter to Respondent on June 14, 2007,

- The Complainant’s original correspondence with the Respondent included Respondent’s offer to sell the disputed domain name to the Complainant for a sum in excess of $50,000 USD. Further communications with the Respondent, after the cease and desist letter, prompted additional offers to sell the disputed domain name for prices in excess of that which the Complainant was willing to pay.

- The disputed domain name is confusingly similar to the Complainant’s service mark, the only difference being the substitution of “counseling” for “counselors” as the third word in the name. This is a minor alteration that does not eliminate the likelihood of confusion between the two.

- The Respondent has no rights or legitimate interests in the disputed domain name. Neither the Respondent nor any company owned by the Respondent is commonly known as the disputed domain name. The website located at the disputed domain name links Internet users to services offered by third parties that compete directly with services offered by the Complainant.

- The disputed domain name was registered and is being used in bad faith. The Respondent’s offers to sell the disputed domain name to the Complainant for sums far in excess of out-of-pocket costs directly related to the name is clear evidence of bad faith. The Respondent has engaged in evasive procedures to hide its identity as the name’s registrant, and such “cyber-flying” tactics evidence bad faith. Finally, the Respondent is intentionally attempting to confuse consumers by his bid to offer services which directly compete with those offered by the Complainant.

B. Respondent

- The disputed domain name, <chritiancreditcounseling.org>, is not identical or confusingly similar to the Complainant’s mark, CHRISTIAN CREDIT COUNSELORS.

- There are thousands of credit counseling service companies throughout the United States of America. Forty-five such companies, in various states of that country, use the name “Christian Credit Counselors.” Therefore, consumers are very unlikely to confuse the disputed domain name specifically with services rendered by the Complainant.

- Though the Respondent has been in the credit counseling industry for over twenty years, he had no knowledge of the Complainant’s service mark prior to registration of the disputed domain name.

- The Respondent is an ordained Christian pastor and applies Christian principles to the financial services companies that the Respondent owns or directs throughout the United States of America and Puerto Rico. When the disputed domain name was registered, the Respondent was a member of the National Association of Christian Credit Counselors.

- The Respondent owned as many as 1,250 English and Spanish domain names at the time he registered the disputed domain name. The Respondent works closely with his registrar to monitor and maintain the domain names he has registered, paring the number to about 700, 446 of which relate to credit or debt.

- The disputed domain name was registered in good faith, six months before the Complainant’s service mark was registered with the USPTO.

- The Respondent believes that the Complainant registered its mark to reverse domain name hijack the disputed domain name. Instead of addressing the other 45 companies with the same name as the Complainant, the Complainant sent the Respondent harassing and threatening emails after said registration. The Complainant was made aware that the disputed domain name generates annual revenue of approximately $85,000 USD as a credit counseling lead generating site.

- After this dispute was filed, the Complainant attempted to extort the sum of $2,500 USD from the Respondent to end the proceedings.

- The Respondent has not engaged in hiding or “cyber-flying,” but has made necessary changes in managing over 2,000 domain names and websites and uses privacy as a means to prevent reverse domain name hijacking. In any event, the Complainant possessed the Respondent’s contact information as early as July 14, 2006.

- The Respondent did not offer to sell the disputed domain name for more than $50,000 USD, but instead noted that the name netted him $50-85,000 USD annually while insisting the name was not for sale. Despite this insistence, the Complainant offered to buy the name for $1,000 USD. Furthermore, after sending the Respondent a cease and desist letter on June 14, 2007, the Complainant increased its purchase offer to $4,000 USD. Both offers were declined by the Respondent.

- The Respondent concedes that it offers services that compete with the Complainant’s services at the disputed domain name for the reason that the Respondent was providing those services long before the Complainant registered its service mark.

- The Respondent never contacted the Complainant with an offer to sell the disputed domain name and has legitimate interests in the same.

 

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i)-(iii), the Complainant may succeed in this administrative proceeding and obtain a transfer of the disputed domain name, <christiancreditcounseling.org>, provided that the Complainant can prove the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant claims service mark rights in a mark that consists of the three common descriptive English language words, “Christian,” “credit” and “counselors.” As primary support for that claim, the Complainant has presented the Panel with good evidence (see Complaint Annex 3) of its registration with the USPTO of the mark CHRISTIAN CREDIT COUNSELORS (Registration No. 3,034,800; December 27, 2005). In line with numerous prior panels operating under the Policy, the Panel finds such evidence sufficient to sustain the Complainant’s rights in that mark. See, for example, Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261; and Ticketweb Inc. v. Domains Ventures, NAF Case No. FA654538 (“Complainant’s registration of its TICKETWEB trademark with the USPTO establishes its rights in the mark pursuant to Policy 4(a)(i).”).

While the disputed domain name, <christiancreditcounseling.org>, contains exactly the first two words, “Christian” and “credit,” found in the Complainant’s service mark, the third word in the name is “counseling” as opposed to “counselors.” Also, the name omits the spaces between the words, presents all of its words without capitalization and adds the gTLD, “.org.” Thus, the disputed domain name is clearly not identical to the Complainant’s service mark. However, the differences noted above are minimal and would not prevent confusion to Internet users as to source or ownership of that domain name. Therefore, the Panel concludes that the name is at least confusingly similar to the mark. See Citigroup Inc., Citicorp v. Phayze, Inc., WIPO Case No. D2003-0430 (where the panel held <citiback.com> to be confusingly similar to the mark CITIBANK.); Referral Experts LLC v. Adaptive Marketing, WIPO Case No. D2007-0436 (finding that the domain name, <lookmybest.com>, is confusingly similar to the mark, LOOKING YOUR BEST.COM.).

As a result, the Panel rules that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a service mark in which it has rights, per the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s possession of rights in a service mark nearly identical to the disputed domain name and its contention that it did not authorize the Respondent to use that mark constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This places the onus on the Respondent to come forward with evidence to rebut that prima facie case and establish such rights or interests. See AOL LLC v. Jordan Gerberg, NAF Case No. FA780200 (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Paragraph 4(c) of the Policy lists three ways through which a respondent might establish his rights or legitimate interests in the disputed domain name. The Respondent seeks to make use of the avenue specified in Paragraph 4(c)(i) to do just that. That paragraph requires that the Respondent establish “before any notice to [the Respondent] of the dispute, [his] 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.” The Respondent contends that he is an ordained Christian pastor who has been active for more than twenty years in marketing credit counseling services. He contends further that the disputed domain name is being put to use in that bona fide offering of services in accordance with the prescriptions of Paragraph 4(c)(i) of the Policy. On the other hand, the Complainant asserts that the disputed domain name serves merely to link Internet users to third party websites, which is not a bona fide offering of services.

The Complainant’s position causes the Panel to note that criteria cited in Paragraph 4(c) are not the exclusive ways in which the Respondent may establish his rights or legitimate interests in the disputed domain name. In this regard, the Panel finds the considerations delineated in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, to be valid and pertinent to this case. In that case, the panel put forth a test involving five conditions that a respondent could meet to satisfy the requirements of Paragraph 4(a)(ii) of the Policy, without invoking any of the three circumstances listed in Paragraph 4(c), namely:

(1) the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

(2) the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

(3) the domain name in question is a “dictionary word” or a generic or descriptive phrase;

(4) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

(5) there is no evidence that the respondent had actual knowledge of the complainant’s mark.

If the Panel accepts the Complainant’s assertion that the Respondent uses the disputed domain name solely for third parties links, then the Respondent has satisfied condition (1) above. Moreover, the Respondent has contended persuasively that it does routinely monitor its multiple domain name listings (including reducing significantly the size of those listings), and there is no evidence that it has been charged previously with holding domain names identical or confusingly similar to other marks, so that the Panel can deem condition (2) to be satisfied. Clearly, as noted in the preceding section, the disputed domain name is composed of a generic descriptive phrase, satisfying condition (3). As for condition (4), the Complainant has furnished the Panel with no evidence as to the fame or distinctiveness of its service mark. Nowhere in the Complaint is there a reference to volume of revenues, scope of sales area or any other indicia of operational success which would lead the Panel to conclude that Complainant’s mark is well-known in the United States of America or anywhere else. Finally, with respect to condition (5), the Complainant (located in California) registered its service mark with the USPTO six months after the disputed domain name was registered, so the contention by the Respondent (located in Florida) that he was unaware of the mark is entirely reasonable and convincing.

Thus, the Panel is left to conclude that the Respondent has established his rights or legitimate interests in the disputed domain name by meeting either: the criteria set forth in Paragraph 4(c)(i) of the Policy, if the Panel accepts the Respondent’s contention regarding his use of the name; or the conditions enumerated in Media General, supra, if the Panel accepts the Complainant’s contentions with respect to such use. (For other prior Policy panels that have approved of and applied the test set forth in Media General, supra, see, for example, Schaum-Chemie Wilhelm Bauer GmbH & Co. KG v. Click Cons. Ltd, WIPO Case No. D2007-1299; and Walsh Bishop Associates, Inc. v. Honggi, Honggi Kim, NAF Case No. FA907521.)

Finally, the Panel dismisses the applicability of the case cited by the Complainant concerning this issue, Solahart Industries Pty Ltd. v. Ciccarelli Luigi, WIPO Case No. D2006-0051, because the mark at issue in that case, SOLAHART, is not a common descriptive word and the respondent certainly knew of the mark due to its prior affiliation with the complainant, facts not present in this case.

Accordingly, the Panel finds that the Complainant has failed to sustain its burden to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Due to the Complainant’s failure to establish the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Panel need not consider whether that name was registered and is being used in bad faith by the Respondent.

 

7. Reverse Domain Name Hijacking

The Respondent has asserted that the Complainant has engaged in an attempt at reverse domain name hijacking in filing the Complaint. The burden to prove such an assertion, which involves bad faith on the part of the Complainant, rests upon the Respondent. See, Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905; and Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.

The Respondent’s main argument in this regard seems to center around what the Respondent believes to be the Complainant’s harassment of the Respondent. However, the Panel cannot conclude that the Complainant’s attempts, prior to its filing in this proceeding, to gain a transfer of the disputed domain name constitute harassment, or that such actions provide a rationale for a finding of reverse domain name hijacking. Moreover, while the Complainant’s registration of its service mark after the Respondent’s registration of the disputed domain name was a factor in the Panel’s denial of the Complaint, the Panel accepts that the Complainant was using the mark prior to registration of the name, and thus this case does not fall into a category where the disputed domain name was registered before establishment of the service mark or trademark at issue. As a result, the Panel declines to issue a finding of reverse domain name hijacking in this case.

 

8. Decision

For all the foregoing reasons, the Complaint is denied.


Dennis A. Foster
Sole Panelist

Dated: December 17, 2007