WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Restored Church of God v. Alexa Properties, LLC
Case No. D2013-0320
1. The Parties
Complainant is The Restored Church of God of Wadsworth, Ohio, United States of America (“US”), represented internally.
Respondent is Alexa Properties, LLC of Las Vegas, Nevada, US, represented by Roger H. Doumanian, US.
2. The Domain Name and Registrar
The disputed domain name <rt.org> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on February 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2013. The Response was filed with the Center on March 12, 2013.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 18, 2013. 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
Complainant claims common law rights in RT (“the alleged RT Mark”) through commercial use in association with “The Real Truth Magazine” (“the Magazine”) that it publishes monthly. Respondent registered the Domain Name <rt.org> on November 25, 1998.
5. Parties’ Contentions
The alleged RT Mark appears on the cover of both the print and Internet editions of the Magazine, and is widely associated with it. The Magazine has been in circulation and has used the alleged RT Mark throughout the US and in other countries for over 10 years. As of February 2013, there are an estimated 2,005 subscribers to the print edition of the Magazine, and 23,893 Internet subscribers. Online access numbers since the Real Truth website was launched in January of 2003 are as follows:
Items Since Launch
World News Desk 1,766,150
RT PDF 263,587
RT Promo Video 63,216
The Domain Name <rt.org> is identical to the alleged RT Mark, and not surprisingly, Respondent’s use of the Domain Name <rt.org> is confusing people who are seeking materials from or information about The Restored Church of God, and who associate the alleged RT Mark with the Magazine.
Before any notice to Respondent of the dispute, there was no evidence of Respondent’s 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. Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Mr. Doumanian registered the Domain Name and has controlled it for more than 14 years through alter egos and business entities, although he is not offering any product or service that is associated with the alleged RT Mark. He is not making a legitimate business, noncommercial, or fair use of the Domain Name, but has registered it in bad faith, in the hope of extracting an exorbitant fee from a nonprofit organization, such as The Restored Church of God, that would one day seek to obtain the Domain Name. Clicking the website homepage for “www.rt.org” brings up a page with a link to buy the Domain Name, as well as a number of miscellaneous links. Respondent is knowingly allowing the Domain Name to resolve to a web site on which there are only links and advertisements. This causes confusion among Internet users and takes an unfair benefit from Internet traffic that associates the Domain Name with Complainant’s business, and specifically the Magazine.
Respondent is a business entity controlled by Mr. Doumanian, who also goes by the alias “Jack Doumanian,” and by “J. Doumanian”. Mr. Doumanian has demonstrated a pattern of cyberpiracy and cybersquatting. Through Alexa Properties LLC, Mr. Doumanian has controlled 8,686 domain names as of January 24, 2013. He has also registered domain names under various aliases, including J D, Jack Doumanian, and Hagop Doumanian. There is no evidence he is engaged in activities that relate to 8,686 domain names. This is not the first time that Mr. Doumanian has engaged in these tactics. At least four other UDRP panels have found that individuals with either the same address or contacts as Mr. Doumanian had engaged in abusive registration of domain names and transferred the domain names away from him.
Circumstances indicate that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to an entity that had or one day would acquire trademark rights to the alleged RT Mark for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. The filing of this Complaint was not Complainant’s first choice in trying to secure the Domain Name. Complainant contacted Respondent by email and offered to purchase the Domain Name for the substantial sum of USD 5,000 (plus escrow fees). Respondent countered with an offer of USD 30,000 and refused to negotiate a lesser sum. Thirty thousand dollars is an exorbitant sum and is greatly in excess of Respondent’s out of pocket costs directly related to the Domain Name. Consequently, Complainant concludes Respondent has registered the Domain Name in bad faith.
Complainant claims common law trademark rights to the Magazine. Complainant has not provided any evidence of a registered mark with the United States Patents and Trademark Office (“USPTO”). Furthermore, Complainant states that it has been conducting business under the name of “The Real Truth Magazine” for over 10 years, meaning that prior to 2002, Complainant did not use The Real Truth Magazine as a trade name. Respondent registered the Domain Name on November 25, 1998, approximately 4 years before Complainant’s use of “The Real Truth Magazine” trade name. Thus, Complainant’s allegation that Respondent is infringing on Complainant’s common law rights is meritless since Complainant did not have such rights when Respondent registered the Domain Name. And there are UDRP decisions supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the Policy, since it is impossible for the domain name to have been registered in bad faith. It follows that an inference can be drawn that the Complaint was brought on bad faith. Thus, Respondent requests that the Panel consider finding reverse domain name hijacking.
The Domain Name is not neither identical nor confusingly similar to the alleged RT Mark. Complainant’s alleged common law trademark is for “The Real Truth Magazine” not the acronym “RT” or the Domain Name <rt.org>. If the alleged common law rights did extend protection to an acronym of the alleged Mark, such protection would be for TRTM, the actual acronym, not RT or RT.org. Respondent conducted research to determine if Complainant’s website (“www.realtruth.org”) is associated with the keyword “rt” on Google, Yahoo, and Bing and found the following:
Google: Complainant’s website (“www.realtruth.org”) does not rank anywhere on the first 10 pages of “www.google.com” for the keyword “rt”;
Yahoo: Complainant’s website (“www.realtruth.org”) does not rank anywhere on the first 10 pages of “www.yahoo.com” for the keyword “rt”
Bing: Complainant’s website (“www.realtruth.org”) does not rank anywhere on the first 10 pages of “www.bing.com” for the keyword “rt”.
To further confirm the accuracy of the above information, Respondent retained the services of a professional search engine optimization agency to use third party software to determine the search engine ranking for Complainant’s domain name <realtruth.org> for the keyword “rt” and the report showed that the Complainant’s website does not rank in the top 10 pages of any major search engine for the keyword “rt”. In short, not one of the three major search engines, which account for the bulk of all web searches, associates the keyword “rt” with the Magazine or “www.realtruth.org”.
6. Discussion and Findings
To succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The requirements of paragraph 4(a) of the Policy are conjunctive, thus Complainant bears the burden of proof on each element. Telestra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If any element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Under paragraph 4(a)(i) of the Policy, complainant must demonstrate rights in the mark that it asserts the disputed domain name is identical or confusingly similar to. In this case Complainant is not relying on a registered mark. Rather, it asserts common law trademark rights in the alleged RT Mark.
To establish common law rights as a trademark in the alleged RT Mark, Complainant must show the Mark acquired secondary meaning, i.e., that the public associates the asserted mark with Complainant's goods or services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, NAF Case No. FA 506772; see also CPP, Inc. v. Nokta Internet Technologies, WIPO Case No. D2008-0591 (holding that when relying on common law rights in UDRP proceedings, “the Complainant must adduce sufficient evidence to demonstrate that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with the Complainant's goods or services in a definable market.”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.7 (“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition […] However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”). On the record here, the Panel agrees with Respondent, Complainant has not shown any rights in the alleged RT Mark.
To begin with, Complainant failed to provide the Panel with any evidence of its use of the alleged RT Mark for even a small amount of time, let alone a time sufficient to establish common law rights. See Koninklijke Nederlandse Springsstoffen Fabriek N.V. v. Kim Hyungho GMM, WIPO Case No. D2002-0707 (holding that “As long as there is no registration of the letters KNSF as a company name or a trademark [for Koninklijke Nederlandse Springsstoffen Fabriek], and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”) Rather, Complainant’s assertion of common law rights is based on bald assertions that the Mark has been in “commercial use, in association with The Real Truth Magazine” and that “The Real Truth” has been in circulation and used the “RT” mark throughout the U.S. and in other countries for 10 years”. So the best that Complainant can do is to try to piggyback rights for the alleged RT Mark on its claimed 10-year use of the term “The Real Truth Magazine”.
Complainant has provided the Panel the cover of the November 2012 edition of the Magazine and a recent front page from the Magazine website – certainly not sufficient evidence even to support the alleged ten years of using the term “The Real Truth Magazine”. Nothing on the Magazine cover or the website page shows any use whatsoever of the alleged RT Mark, only use of the term “The Real Truth”. Similarly, the subscriber numbers for the Magazine (hard copy and online) relate to “The Real Truth Magazine” not to the alleged RT Mark. To carry its burden in this proceeding, Complainant had to show relevant common law rights in the alleged RT Mark as set forth above. Mere assertions of common law rights in a mark, here the alleged RT Mark, are insufficient without the requisite accompanying evidence to demonstrate that the public identifies Complainant's mark exclusively or primarily with Complainant's products. See, e.g., Saint Francis Hospital and Medical Center v. Registrant (187640), WIPO Case No. D2006-0543 (holding complainant's failure to produce any evidence in support of its allegations that the asserted mark had acquired secondary meaning was fatal to its claim under paragraph 4(a) of the Policy).
Complainant has also alleged in the Complaint that “[t]he domain name “rt.org” is identical to the RT trademark, and not surprisingly, the Respondent’s use of [it] . . . is confusing people who are seeking materials from or information about [Complainant The Restored Church of God, and who associate the mark with The Real Truth Magazine”. Complainant’s claim that the Domain Name “is confusing” people suggests that Complainant might have evidence of actual confusion, but none was made of record. Notwithstanding that, the Panel is not persuaded that any confusion is likely to exist. First, how can use of the Domain Name cause confusion with the term “rt” when there is no evidence that “RT” is being used in any capacity, let alone as a trademark. Complainant offers no evidence demonstrating that the public associates the alleged RT Mark with either The Restored Church of God or The Real Truth Magazine so it is not clear how confusion could occur between the Domain Name <rt.org> and such very different terms as “The Real Truth Magazine” or “The Restored Church of God”.
Because Complainant has failed to meet its burden under paragraph 4(a)(i) of the Policy, no further issues need to be decided. In this case, however, the relationship between Complainant’s allegations of common law rights and Respondent’s alleged bad faith registration warrant discussion.
B. Registered and Used in Bad Faith
It has been noted that “[t]he longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”. AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011 (holding that the complaint must fail because complainant failed to prove bad faith registration “mainly because of the length of time [9 years] since the original domain name registration”). Here, Respondent registered the Domain Name back in 1998, but the e-mail exchange aimed at persuading Respondent to transfer the Domain Name to Complainant did not occur until 2012. That is about 14 years after Respondent registered the Domain Name. The Panel's decision in this case, however, that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights. Complainant has not provided the Panel with any facts or circumstances sufficient to show Respondent registered the Domain Name in bad faith.
Because Complainant failed to provide the Panel with any evidence to support its allegations of common law rights (e.g., time, place, extent, and manner of using the alleged RT Mark), the Panel has no evidence even to infer bad faith registration when Respondent registered the Domain Name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the domain name for lack of bad faith registration because, for example, there was no documentary evidence that someone from the respondent actually visited, or is likely to have visited, the complainant's website in the period before registration of the domain name, or that the complainant's promotional literature actually was, or is likely to have been, received by the respondent during that period); see also AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011 (holding that bad faith registration cannot be found if the domain name had been registered before the complainant acquired trademark rights); see also WIPO Overview 2.0, paragraph 3.1 and cases cited therein. Indeed, the Panel could not even infer that Respondent knew of Complainant’s use of “The Real Truth Magazine” when it registered the Domain Name because Complainant began using that term well after Respondent registered the Domain Name. More specifically, it is undisputed that Respondent registered the Domain Name back in November 1998. At best, Complainant claims to have been using “The Real Truth Magazine” for the past ten years. On the website for “The Real Truth Magazine” at “www.realtruth.org/home.html”, the Panel noticed a tab for “Back Issues” of the magazine dating back to 2003. And the current issue of the magazine is an Anniversary Issue that has a large “10 YEARS” title on its cover. This is some confirmation of Complainant’s claim of using “The Real Truth” and/or “The Real Truth Magazine” for the past 10 years. But this merely confirms that Complainant began using these terms after Respondent registered the Domain Name in 1998 and, so, bad faith registration is not tenable on these facts.
The Panel has not addressed Complainant’s arguments regarding bad faith use of the Domain Name because of the omission of proof on bad faith registration.
C. Reverse Domain Name Hijacking
Respondent argues that because Complainant cannot demonstrate trademark rights in the alleged RT Mark existed at the time Respondent registered the Domain Name and, thus, that bad faith registration is not possible, an inference can be drawn that the Complaint was brought in bad faith.
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, Respondent must typically show that Complainant knew of Respondent’s unassailable rights or legitimate interests in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In any event, based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Date: March 21, 2013