WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Judah Smith v. Whois Privacy Services Pty. Ltd. / URDMC LLC
Case No. D2011-0397
1. The Parties
1. The Parties
The Complainant is Judah Smith of Kirkland, Washington, United States of America, represented by Stokes Lawrence, P.S., United States of America.
The Respondent is Whois Privacy Services Pty. Ltd. / URDMC LLC of Fortitude Valley, Queensland, Australia and Dallas, Texas, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <judahsmith.com> (“the Domain Name”) is registered with Fabulous.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 3 and March 4, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on March 8, 2011.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2011. No response was submitted. On March 30, 2011, the Center informed the parties that it would proceed to appoint the Panel.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 1, 2011. 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.
The Registrar and the Center have both received correspondence from a third party concerning pending litigation in Texas and requesting the suspension or termination of the administrative proceeding, as discussed further below.
4. Factual Background
Judah Smith, now 31, has been preaching to evangelical Christian congregations since childhood. Since 2009, Mr. Smith has served as lead pastor of The City Church, a church founded by his father Wendell Smith and organized as a Washington non-profit corporation. The City Church has over 6000 members and conducts services at several locations in the greater Seattle area, as described in the Complaint and on the church’s website at “www.thecity.org”. As a youth minister for the affiliated Generation Church, Mr. Smith reached 4,000 - 20,000 young people monthly in the period 2005 - 2009 through Generation Church TV video podcasts delivered online and through the Apple iTunes Store. He has also cultivated a following of tens of thousands of fans on the Facebook and Twitter social media networks. Mr. Smith speaks at national and international religious conferences and has written three books. One of these, Dating Delilah: Purity from a New Perspective, has sold nearly 15,000 copies since it was published in 2007.
Mr. Smith has not obtained a trademark registration based on his name. It does not appear from the Complaint or from a perusal of the website operated by The City Church that either Mr. Smith or the Church have made a practice of asserting common law trademark protection for the name “Judah Smith”.
The Domain Name was registered in the name of the first Respondent, a domain privacy service, on February 4, 2006. Following notice of the Complaint in this proceeding, the Registrar identified the registrant as the second Respondent, URDMC LLC of Dallas, Texas, which shall be referred to henceforth in this Decision as “the Respondent”. According to the online database of taxable entities maintained by the Texas Secretary of State, the Respondent is registered as a Texas limited liability company, with the same postal address shown for the Domain Name registration. Mr. J. L. Harbin, a certified public accountant at the same address, is listed as the registered agent of the company, but no information is available on the state database concerning the company’s officers and directors.
The Respondent appears to be a “domainer”, in the business of buying and selling domain names. These are evidently not, however, limited to generic words and phrases. The Respondent was ordered to transfer domain names in three other recent UDRP proceedings where the domain names appeared to be based on distinctive marks: Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC, WIPO Case No. D2010-2144 (<amicains.com>); Ariens Company v. URDMC LLC, WIPO Case No. D2010-2216 (<gravelymowers.com>); and HBI Branded Apparel Enterprises, LLC and HBI Branded Apparel Limited, Inc. v. URDMC LLC, NAF Claim No. FA1361369 (where the panel found that the domain name <legshanesbali.com> targeted the L’EGGS, HANES, and BALI clothing marks).
The Domain Name resolves to an advertising portal headed, “Welcome to judahsmith.com”. There is a link near the top of the landing page with the message, “For inquiries on this domain, click here”, followed by “Sponsored Listings for PRAYER MINISTRY”. The term “sponsored listings” normally refers to a pay-per-click (“PPC”) or similar paid advertising program. The first link under this heading on the website associated with the Domain Name resolves to the website operated by the Christian Prayer Center, a “group prayer network” headed by Pastor John Carlson in Seattle, Washington. The website solicits cash donations for the Christian Prayer Center and advertises the availability of its Seattle-area church for services including weddings and funerals. That website also includes at least one “Ads by Google” link to a commercial website that offers “Online Pastor Degrees” and other online diploma programs. Other links on the website associated with the Domain Name resolve to commercial as well as noncommercial websites, most with a Christian connection, such as Christian bookstores and “Christian singles” dating websites. Many of these websites offer some free content or social networking capabilities but also sell certain goods or services or display links to purely commercial websites.
Mr. Smith’s father-in-law inquired in October 2010 about purchasing the Domain Name, using the contact link on the website associated with the Domain Name. He received an email in response from Ondova Limited Company in Dallas (a marketing firm) saying that his inquiry would be forwarded to “the appropriate parties” and explaining, “This domain name is part of a large investor portfolio that is in the process of changing resistrars [sic] and management.” The correspondence apparently did not lead to a concrete offer, and this proceeding followed.
5. Parties’ Contentions
The Complainant argues that his name has acquired a secondary meaning as a mark and that the Domain Name is identical or confusingly similar to that mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent registered and used the Domain Name in bad faith, in an attempt to profit from misleading Internet users to visit a PPC advertising website and ultimately to sell the Domain Name for an amount in excess of the Respondent’s out-of pocket costs.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall 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.”
A. Suspension or Termination
The Registrar and the Center have received communications from a Texas attorney named J.Cox concerning pending litigation in the United States District Court for the Northern District of Texas, Dallas Division and attaching two orders from that court. The proceeding has been variously styled In re Ondava Limited Company and Netsphere, Inc., Manila Industries, Inc., and Munish Krishan v. Jeffrey Baron and Ondava Limited Company, both shown as docket number Civ. No. 3:09-CV-0988. Mr. Cox did not identify his client or role in that proceeding. Mr. Cox furnished a copy of an Order Appointing Receiver for the assets of the debtor Ondava Limited Company and a subsequent order clarifying that order with respect to Novo Point, LLC and Quantec, LLC, two of the companies over which the appointed receiver was given exclusive control. Mr. Cox stated that Quantec, LLC is the registrant of the Domain Name, but that is not confirmed by the Registrar.
The Order Appointing Receiver, which was issued on November 24, 2010, includes the following provision:
“The Court hereby enjoins any person from taking any action based upon any presently existing directive from any person other than the Receiver with regard to the affairs and business of the Receiving Parties, including but not limited to proceeding with the transfer of a portfolio of Internet domain names for which Ondava Limited Company (“Ondava”) acted as registrar. Specifically, but without limitation, VeriSign Inc and the Internet Corporation for Assigned Names and Numbers (“ICANN”), and any other entity connected to the transfer of the Domain Names, shall immediately cease such efforts and terminate any movement of the Domain Names.”
The Order does not specify the grounds for asserting jurisdiction over any and all non-parties with respect to the transfer of the (unidentified) domain names. In any event, the Respondent in the current UDRP administrative proceeding is not one of the “Receiving Parties” listed in the court’s order, and the Domain Name in this proceeding is not identified as one of the assets under the control of the Receiver appointed by the court. Moreover, the court appears to be confused about the meaning of “registrar” in the domain name context. Ondava Limited Company is not an ICANN-accredited registrar (see “www.icann.org/en/registrars/accredited-list.html”). The Registrar of the Domain Name at issue in the current proceeding is Fabulous.com, an Australian company. In short, there is nothing in the text of the two orders or in the correspondence from Mr. Cox that establishes that the Domain Name at issue here is in fact the subject of pending litigation; therefore, there is no persuasive argument that the current administrative proceeding should be suspended or terminated in favor of the judicial proceeding. It is noteworthy that the UDRP panel in Amica Mutual Insurance Company, supra, reached the same conclusion following correspondence from Mr. Cox concerning the domain name at issue in that proceeding.
Paragraph 18(a) of the Rules (“Effect of Court Proceedings”) provides as follows:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Thus, under the Rules, the Panel could exercise its discretion to continue to a decision on the merits even if the Domain Name were demonstrably implicated in pending litigation. In the Panel’s view, that is the appropriate course of action here. The Complaint alleges that the current registrant of the Domain Name, the Respondent URDMC LLC, registered and used the Domain Name in bad faith, targeting the Complainant’s mark. Nothing in the materials submitted by Mr. Cox indicates that those issues are likely to be addressed in the ongoing Texas litigation, even assuming the Domain Name is an asset subject to disposition in that proceeding. Thus, there is no compelling reason to defer to that proceeding in the interests of judicial economy or to avoid imposing unnecessary burdens on the parties.
Accordingly, the Panel denies the third-party request to suspend or terminate this proceeding.
B. Identical or Confusingly Similar
The Domain Name is identical or confusingly similar to Mr. Smith’s first and last name, disregarding the space between the two names (which cannot be included in a URL address in the Domain Name System for technical reasons) and the generic “.com” suffix.
The question arises, however, whether the personal name “Judah Smith”, which has not been registered as a trademark, has acquired a secondary meaning associated with goods and services in commerce, subject to common law protection, thus giving Mr. Smith standing to pursue this UDRP Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview”), sections 1.6 and 1.7 (and cases cited therein). It is not disputed that Mr. Smith earns income from his ministerial, speaking, and training services and from sales of his books and recordings. However, he acknowledges that he has never applied to register his personal name as a trademark, and there is no indication on the church’s website that Mr. Smith or The City Church has previously claimed common law trademark protection for his name.
Nevertheless, it does appear from the available record that Mr. Smith’s books, sermons, conference speaking and training services, video podcasts, audio CDs, video DVD recordings, and social media sites have effectively been branded or co-branded with his name, and not solely with the registered and unregistered marks owned by The City Church. Mr. Smith’s audio and video podcasts are sold through the Apple iTunes Store, for example, under the title “The City Church with Judah Smith”. As reflected in media articles and search engine results furnished with the Complaint, Mr. Smith’s books, videos, and publicity for his speaking engagements prominently feature his name, with or without reference to The City Church.
The panel in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn , Prolife.net, and God.info, WIPO Case No. D2002-0184, concluded that the nationally famous minister and televangelist Dr. Jerry Falwell had not established common law trademark rights in his name. The panel noted that Dr. Falwell and his organization emphasized the noncommercial nature of his activities and failed to provide evidence of commercial marketing or advertising using his name.
The Complainant here is less reticent in referring to his well-advertised books, recordings, and speaking engagements. It appears from the record that some of these materials and activities are provided without charge, while others are clearly remunerative. The Complainant’s church has obtained registered trademarks covering some of the same products and services, presumably on the ground that they have a commercial aspect and compete with goods and services offered by others. Like other authors, the Complainant seeks to associate his name with particular books and recordings that are sold in commerce, and he actively promotes his availability for speaking engagements and ministerial training sessions. See, e.g., Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 (a complainant who sold more than 5000 copies of her book and attracted media attention established sufficient “goodwill” in her name in literary circles to warrant the finding that her name was used as a common law mark).
Doubtless, the Complainant’s activities have moral and religious objectives, but they also earn revenues and represent the promotion of goods and services in commerce. His name has been associated with those goods and services in the minds of a substantial following over a period of several years. Mr. Smith has made out a prima facie case that his name would be protected as a mark under common law, and that the Domain Name is confusingly similar to such mark. The Panel concludes, therefore, that the first element of the Complaint has been established.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to use his name as a domain name. The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The PPC advertising website associated with the Domain Name is clearly commercial, and there is no indication on the website that the Respondent or its business has ever been known by the name “Judah Smith”. The Panel considers that PPC advertising may constitute a legitimate commercial use of a domain name based, for example, on dictionary words, generic phrases, or geographic or personal names. In such cases, the key to establishing that the Domain Name is used “in connection with a bona fide offering of goods or services” is to determine whether the evidence points to the selection of the name for its generic value rather than for its potential to exploit a trademark. See the WIPO Overview, sections 2.2 and 2.6.
While the family name “Smith” is probably the most common in the English language, when combined with the relatively rare given name “Judah” the full name is distinctive. The Complainant has demonstrated that search engine queries using that name prominently produce results relating to the Complainant himself. Moreover, the content of the PPC website associated with the Domain Name is not devoted to any generic value of the name, such as information concerning genealogy or persons with the same name, but instead features organizations and businesses offering books, recordings, and religious and training services similar to those offered by the Complainant and in some respects competing with his products and services.
The Panel finds, accordingly, that the Domain Name was more probably selected for its trademark value than for the generic value of the name “Judah Smith”. As such, the Respondent, which has not come forward in this proceeding, has no evident rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances indicative of bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant refers to the website notice and email correspondence indicating that the Respondent was interested in selling the Domain Name, but there is no evidence that the Respondent approached the Complainant or stated a price in excess of reasonable out-of-pocket costs.
As noted above, however, the name “Judah Smith” is unusual, and the Complainant had attained a certain fame by 2006 which resulted in the name regularly drawing a large number of visitors to religious Internet websites, the Apple iTunes Store, and social media sites. This would make the Domain Name potentially valuable for relevant PPC advertising. On the available record, and in the absence of a reply from the Respondent, the Panel finds that there is no other plausible explanation for the Respondent’s registration of the Domain Name and subsequent use of it for a PPC advertising website promoting relevant, and in many instances competing, goods and services.
The fact that this Respondent has also registered other distinctive marks as domain names, as discussed above, also suggests that the Respondent’s choice of this Domain Name was an opportunistic attempt to exploit the recent fame of Mr. Smith’s name.
Accordingly, the Panel finds that the Respondent more likely than not registered and used the Domain Name in bad faith, to mislead Internet users as to source or affiliation for commercial gain.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <judahsmith.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: April 18, 2011