WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oorah, Inc. v. Simchat Torah Beit Midrash
Case No. DTV2007-0003
1. The Parties
Complainant is Oorah, Inc., of Lakewood, New Jersey, United States of America, represented by Lackenbach Siegel LLP, United States of America.
Respondent is Simchat Torah Beit Midrash, of Parker, Colorado, United States of America, of United States of America, represented by Moye White, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oorah.tv> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom 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”), 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 March 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2007. The Response was filed with the Center on April 17, 2007.
The Center appointed Mark Partridge as the sole panelist in this matter on May 1, 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.
On May 15, 2007, the Panel issued Procedural Order No. 1 seeking additional evidence from Respondent. The Response to the Procedural Order was received by the Center and forwarded to the Panel on May 22, 2007. A reply in opposition to the Response was received by the Center on May 25, 2007 and subsequently forwarded to the Panel.
4. Factual Background
Complainant has used the mark OORAH in connection with “outreach and educational services for Jewish children and families” since 1996. Complainant operates a nonprofit website at <oorah.org>. Complainant’s site states that “oorah” means “awaken.”
Respondent is engaged in religious educational services about “the Hebrew roots of the Christian faith.” Respondent operates a commercial website at <torah.tv>.
Respondent registered the domain name <oorah.tv> on October 7, 2003. The domain name directs Internet users to Respondent’s “torah.tv” website. Respondent claims its use of “oorah” is derived from the Hebrew word pronounced “uwr” or “oor” meaning to arouse or awaken.
5. Parties’ Contentions
Complainant claims that Respondent registered and used the domain name in bad faith to misdirect Internet users for commercial gain based on confusion with Complainant’s mark.
Respondent contends it registered the domain name in 2003 in good faith based on its Hebrew meaning to develop a site related to its principal site that was directed to children.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts for the purpose of further discussion that the disputed domain name is identical in material part to Complainant’s OORAH mark.
B. Rights or Legitimate Interests
The Policy indicates that the Respondent may show a legitimate interest in the domain name by presenting evidence that it made demonstrable preparation to use the domain name for a bona fide offering of goods or services prior to notice of the dispute.
Respondent claims that it planned to develop a website for children’s ministry under the <oorah.tv> domain name prior to any notice of objection by Complainant. In support, Respondent has submitted several items of evidence, the most salient of which include:
- A confidentiality agreement dated December 13, 2003, relating to the hiring of Greg Hall for the development of various projects.
- Timesheets for work performed by Greg Hall, including time spent in 2005 on “website” and “CM curriculum” (presumably short for “Children’s Ministry Curriculum”).
- A five page site map for “www.oorah.tv” dated July 15, 2005.
Complainant challenges this evidence by suggesting that it lacks credibility or is otherwise insufficient to show a legitimate interest. Without the benefit of testimony it is difficult assess the credibility of evidence in these proceedings. The Panel finds no basis, however, for concluding that the actions taken by Respondent to develop the <oorah.tv> site were a sham; instead, they seem sufficient to evidence a legitimate interest in making actual use of the domain name for a website.
Complainant also suggests that these actions in 2005 should be given little if any weight because Respondent has not carried them forward and instead only uses the domain name to direct Internet users to its “www.torah.tv” site. Respondent, however, has shown that it has continued to develop material relating to children’s ministries (although not obviously under the “oorah” name) and includes the <oorah.tv> domain name in its publications. Under these circumstances, the delay in developing the use of <oorah.tv> as an independent site is not a sufficient basis for rejecting the evidence of preparation provided by Respondent.
The question remains as to whether or not Respondent’s plan to use “oorah” for a site relating to children’s ministry involved a bona fide offering of services. A deliberate infringement of another’s trademark rights does not entail a bona fide offering of goods or services. Similarly, when the alleged plan is not plausible, it may be reasonable to conclude that there proposed offering was not bona fide.
Here, we must consider whether Respondent selected the domain name as a deliberate infringement of Complainant’s rights or whether it selected the domain name in good faith. Complainant contends that its use of its OORAH mark is well-known in the Jewish religious community so that Respondent must have been aware of its rights when it registered <oorah.tv> in 2003. Respondent contends that it did not know of Complainant’s use of OORAH when it registered the domain name and that it selected the name because of its Hebrew meaning, not due to any connection with another party. Respondent further argues that parties’ respective uses of OORAH are not likely to be confused because the parties focus on different target markets.
Based on the record presented, it appears more likely than not that Respondent did not adopt the domain name for the deliberate purpose of infringing Complainant’s rights. This is based on several factors:
- Complainant has not obtained any trademark registration for OORAH.
- Complainant has not demonstrated that its mark is famous or well-known.
- Complainant acknowledges that “oorah” has an ordinary Hebrew meaning which is apt for the purpose proposed by Respondent.
- Complainant has not shown that Respondent knew about Complainant’s OORAH mark when Respondent registered the domain name, and Respondent denies any such knowledge.
- Respondent’s services are directed to the Christian community, while Complainant’s are directed at the Jewish community.
- The websites of the parties are readily distinguishable.
It is also apparent that Respondent is in the business of offering ministry services and thus children’s ministry services would have been a plausible expansion of its operations. This fact supports the conclusion that Respondent was making “demonstrable preparations” for a bona fide offering of services and was not engaged in a sham for the purpose of retaining rights in the domain name. Thus, Respondent’s claim of innocent adoption for a legitimate purpose seems plausible and likely.
For these reasons - particularly the evidence of demonstrable preparations to provide a bona fide offering of services, and the lack of evidence of any deliberate attempt to trade on Complainant’s rights - the Panel concludes that Complainant has not established that Respondent lacks any right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Complainant’s basis for alleging bad faith is its position that the domain name is a deliberate infringement of its rights. The discussion above leads to a contrary conclusion on this element. The Panel concludes that Complainant has not sustained its burden under the Policy of showing that Respondent is a cybersquatter. Instead, given the ordinary meaning of the disputed term, the fact that Complainant has not registered its name as a trademark, and Respondent’s well-established business, it appears more likely than not that Respondent adopted the domain name in good faith for use in connection with a bona fide service that is a direct outgrowth of its own business without a deliberate intent to trade on Complainant’s name.
In reaching this conclusion, the Panel notes that the Policy is not designed to address garden variety trademark infringement claims; therefore, this decision does not address that potential issue, which would need to be heard, if at all, in an appropriate civil court.
For all the foregoing reasons, the Complaint is denied.
Dated: June 11, 2007