WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Holy Mother World Networks v. Gregg Ostrick
Case No. D2011-0627
1. The Parties
The Complainant is Holy Mother World Networks of Toronto, Canada, represented by Perani Pozzi Tavella, Italy.
The Respondent is Gregg Ostrick, GNO, Inc. of Birmingham, Alabama, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <hmwn.com> (“Disputed Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 11, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain Name. On April 12, 2011, Moniker Online Services, LLC 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” 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 April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. The Respondent submitted no Response by the formal deadline. Therefore the Respondent’s default was notified on May 9, 2011. The Response was filed with the Center on May 9, 2011.
The Center appointed Alistair Payne, Edoardo Fano and Frederick M. Abbott as panelists in this matter on June 10, 2011. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a Canadian non-profit corporation founded on July 25th, 2001 which carries on broadcasting services in Canada as part of the worldwide Associazione Radio Maria (the World Family of Radio Maria). The Complainant’s radio station does not feature commercial advertisements and operates on the basis of voluntary contributions. It is also broadcast over the Internet on a website at “www.hmnw.net” which it has operated since March 4, 2001.
The Respondent formerly of Louisiana, but more recently residing in Alabama, has obtained registration and holds numerous 4 letter domain names. The Respondent registered the Disputed Domain Name on December 27, 2002.
5. Parties’ Contentions
A. Complainant
The Complainant submits that HMWN which is an acronym for its trading name “Holy Mother World Networks” functions as a trade mark which is well-known by the Canadian public and which has been used by the Complainant since 2001. The Complainant says that it has also transmitted its radio station over its website at “www.hmwn.net” since that time. It says further that HMWN resolves through every major search engine to a set of first results which link to its website and as a consequence it submits that it owns unregistered trade mark rights in HMWN for the purposes of the Policy and that the Disputed Domain Name is identical or confusingly similar to its mark and to its domain name “www.hmwn.net”.
The Complainant submits that it only recently became aware of the Respondent’s ownership and use of the Disputed Domain Name. It says that the Respondent does not have rights or legitimate interests in the Disputed Domain Name because it has no association with and is not authorized by the Complainant, nor is the Respondent commonly known by the Disputed Domain Name. In addition the website at the Disputed Domain Name is not a fair or noncommercial use and rather features “pay per click” links to commercial services and products of no relevance to the Complainant’s radio station which results in confusion for the public and damage for the Complainant, in that people may be misled into thinking that the spiritual mission of HMWN and Radio Maria is not supported purely by voluntary contributions from its listeners.
The Complainant says that as its HMWN mark is well-known in America and especially in Canada that the Respondent must have known of the Complainant’s mark and by registering the disputed Domain Name was fraudulently exploiting the reputation of the HMWN trade mark by seeking to attract Internet users to a website which was not connected with the Complainant. Further, the Complainant submits that inclusion of a note on the Respondent’s website “The domain hmwn.com is for sale. To purchase, call BuyDomains.com at +1.339-222.5147 or 866-836-6791. Click here for more details.” indicates that the Respondent has no legitimate interest in the Disputed Domain Name other than to sell it at a profit or to use it to generate income from paid advertising links. The Complainant says that evidence of the Respondent’s intention to make a profit from the Disputed Domain Name is provided by the notice on the Registrar’s website that the Disputed Domain Name is for sale for USD 8.99 but if one follows the link from the Respondent’s website it appears that the Respondent is seeking to sell the Disputed Domain Name for USD 2500.
B. Respondent
The Respondent firstly seeks leave to permit the filing of the Response one day late. The Respondent submits that this delay was the result of truly exceptional circumstances, in particular the Respondent’s home location being declared a civil disaster area in late April with the consequence that there was no power or communication with the area for a significant amount of time and the Respondent’s counsel was unable to contact the Respondent. On top of this difficulty the Respondent notes that his mother’s funeral was held in the first week of May.
Under the first element of the Policy, the Respondent submits that the Complainant has not demonstrated evidence of its trade mark rights. Although it admits that the Complainant’s corporate registration of “Holy Mary World Networks of Canada” and use of that name establishes trade name rights, the Respondent disputes that this supports a finding of unregistered trade mark rights in the acronym HMWN. The Respondent says that although the Complainant provides evidence of its current “About Us” section on its Internet page and of current results on search engines, it provides no evidence as to the Complainant’s use of the HMWN mark at the date of registration of the Disputed Domain Name, namely back in December 2002. In addition the Respondent submits that the letters HMWN have biblical significance in their own right as they are derived from a Latin transliteration of a Greek word for “us” or “ours”. The Respondent notes that undertaking a Google search for the acronym together with the term “Greek” results in a series of references to the biblical meaning of this acronym, however the significance of this meaning is never referred to by the Complainant. As a consequence the Respondent submits that the Complainant has not demonstrated contemporaneous evidence of trade mark rights in the HMWN acronym, has provided no evidence of advertising, listenership, promotional materials or any of the other typical indicia of unregistered trade mark rights and should not be entitled to appropriate to itself a biblical term without being able to demonstrate such trade mark rights.
The Respondent submits that the Complainant has not met the burden of demonstrating that it has no rights or legitimate interests in the Disputed Domain Name. The Respondent argues that it follows from its explanation above of the meaning of HMWN that it is unsurprising that a PPC search engine looking for relevant links would come up with biblical language and translation references and that use of a website at the Disputed Domain Name to advertise links for this purpose is perfectly acceptable. The Respondent says that there is no evidence that it was attempting to pass itself off as having an association with the Complainant, that the Complainant provides no evidence as to why the biblical links at the website to which the Disputed Domain Name resolves are an infringement of the broadcasting services in which the Complainant claims rights and the Complainant does not own a monopoly in Greek words with biblical references which are found in the bible.
The Respondent says that he has not acted in bad faith at all. At the time of registration of the Disputed Domain Name he was attempting to register a range of four letter domain names because of their inherent value and notes that his reputation for doing so was noted by a previous panel in its decision in Franklin Mint Federal Credit Union v GNO, Inc., NAF Claim No. 0612000860527. In any event he says that the Complainant has not demonstrated any reputation or goodwill in Canada to support trade mark rights as at December 2002 and as the Respondent until recently had lived all of his life in Louisiana, he was not aware and could not be expected to have been aware of the existence of the Complainant’s low power Canadian not for profit religious radio service.
As far as use in bad faith is concerned, the Complainant submits that his use of the Disputed Domain Name for PPC advertising links with biblical references has been explained as set out above. In addition he says that he is entitled to offer for sale generic domain names or freely available acronyms and that if his primary purpose in acquiring the Disputed Domain Name had been to sell it to the Respondent then he would not have waited 9 years to do so and has not done so to date. He submits that his actual purpose, as alluded to above, was to acquire the Disputed Domain Name together with the various other 4 letter acronyms that he already owned in the hope that certain of them may one day have a value and be saleable at a profit. He says that considering the prices paid for 4 letter domain names the advertised price of USD 2500 is not substantial and merely reflects the general market rate.
6. Discussion and Findings
The Panel has a residual discretion under the Policy to manage cases as it sees fit. As a general rule the deadline for filing the initial Response has been enforced strictly unless exceptional circumstances pertain under Rule 5 (d) of the Rules. In this case the Panel is satisfied that the Respondent’s circumstances were exceptional and that the Panel should exercise its discretion under the Policy to permit the minimal one day delay in the filing of the Response.
A. Identical or Confusingly Similar
The Complainant submits that it owns unregistered trade mark rights in the HMWN mark in Canada. To support its claim it says that the HMWN mark has been well-known by the Canadian public since 2001 as a consequence of use by the radio station “Holy Mother World Networks” and it has provided evidence of the “About Us” page from 2001 on its Internet site at “www.hmwn.net” and has submitted that the mark’s notoriety is further supported by the fact that every major Internet search site returns details of its website within its first results.
Previous UDRP panels, as set out at section 1.7 of the WIPO Overview of Panel Views on Selected UDRP Questions Guide, have required sufficient relevant evidence of use or of developed goodwill and reputation in order to make a finding that the mark has become a distinctive identifier of a complainant’s goods or services. Except in the case of extremely well known marks, this evidence has usually included details of the use and dissemination of the mark in question, advertising and sales figures as appropriate, readership or listener statistics and an indication of the geographical reach of the goods or services provided under the mark. Panels have tended to set a higher bar in relation to purely descriptive or generic terms, on the basis that these terms necessarily have a lower degree of inherent distinctiveness and should be available for use by all unless there is substantial evidence of use supporting a finding of unregistered trade mark rights.1
The Complainant has supplied as evidence an archived copy of the “About Us” page from its website in 2001. This page shows four descriptive references to its corporate entity “Holy Mother World Network of Canada” using the acronym HMWN. At the top of this page is a reference to “Radio Maria Canada” which in the majority of the Panel’s view might suggest that the Complainant used this name to describe itself in 2001, but this is not entirely clear.
Apart from this the only other evidence that the Complainant provides concerns the primacy of its website in Internet search engine results listings immediately prior to the filing of the Complaint, but not at the date of registration of the Disputed Domain Name. Notably, no evidence is provided of the readership of the Complainant’s website or of the listenership or penetration of its radio broadcasting service at the date of registration of the Disputed Domain Name, being 27 December, 2002. Neither is there any evidence as to the number or scope of donations made to support the radio station by the Canadian public, nor of any promotional activities whether within the church or within the community which might demonstrate the type of use that the Complainant made of the acronym HMWN at the relevant date.
Overall the majority of the Panel considers that the Complainant has not met the burden upon it under the first element of the Policy of demonstrating that HMWN has become a distinctive identifier of the Complainant’s radio broadcast service such as would support a finding of unregistered trade mark rights at the relevant date. Accordingly the majority finds that the Complaint does not succeed under the first element of the Policy and therefore cannot succeed overall.
The majority of the Panel notes that even had it been possible to afford the Complainant the benefit of the doubt in relation to the first element, the majority would in any event have been unable to make a finding of bad faith under the third element of the Policy, for the reasons set out below.
B. Rights or Legitimate Interests
Based on the majority’s findings in relation to element 1 of the Policy there is no requirement to consider this element and the majority declines to do so.
C. Registered and Used in Bad Faith
The majority does not consider that the Complainant has met its burden of showing that the Respondent registered and used the Disputed Domain Name in bad faith. In particular the majority finds that there is insufficient evidence of bad faith registration of the Disputed Domain Name. As there is inadequate evidence of goodwill and reputation in Canada to support a finding of unregistered rights, there is no basis on which the majority can infer that there is even a likelihood that the Respondent, based in Louisiana at the relevant time, was necessarily aware or should have been aware of the Complainant’s radio service or use of the HMWN acronym or mark.2 The Respondent appears to have been in the business of registering numerous 4 letter domain names as is borne out by the description of the Respondent’s activities in Franklin Mint Federal Credit Union v GNO, Inc., NAF Claim No. 0612000860527 and this appears to the majority to be the more credible explanation for how the Respondent came to register the Disputed Domain Name in the first place. In these circumstances the majority of the Panel does not find that the Respondent registered the Disputed Domain Name in bad faith.
The Panel notes that as a general rule the registration or use of a domain name for the purpose of resale and in particular, the registration of domain names or groups of letters which are generic in nature and which have no trade mark significance is not prohibited per se under the Policy. It is only when this activity is aimed at taking advantage of another’s trade mark rights in circumstances that import bad faith that the Policy may intervene. It follows that use of such a domain name for pay-per-click advertising on a domain name registrar’s parking site is not prohibited per se under the Policy.
In this case the Respondent has permitted the use of pay-per-click advertising at its place keeper site and the links chosen by the site were at least in part religious in nature in that they concerned the following topics: the Hebrew Dictionary, Latin Translation, Hebrew Translation, Hebrew Words, English Greek, Greek Bible Translation, Greek Dictionary, Bible Words, Word Translation and a Bible Dictionary. However none of these topics appear to compete directly with the Complainant’s broadcasting service, even if they have a religious flavour. The Respondent suggests that this is not surprising as a consequence of the way in which the advertising engine’s relevance search tools would operate in relation to a term such as HWMN which is a Latin transliteration of a biblical Greek word for “us” or “ours”. In the majority’s view these links do not demonstrate an obvious attempt to take advantage of the Complainant’s service nor to confuse Internet users into moving to competing services and this is even more so the case in circumstances, as outlined above, that it seems unlikely that the Respondent was aware of the Complainant’s usage of HMWN in Canada. On balance the majority does not consider that these links are indicative of use in bad faith on the part of the Respondent and prefers the Respondent’s explanation of the reason for these links.
Finally, the Complainant alleges that the sale offer on the Respondent’s website is indicative of bad faith and that this was the main purpose for registration of the Disputed Domain Name in the first place. The Panel notes that if this had been the case then it would be surprising for the Respondent to have held the Disputed Domain Name for approximately 9 years without approaching the Respondent directly with an offer for acquisition. In the majority’s view this is simply not a credible argument in these circumstances.
As a result the majority finds that the Respondent neither registered nor used the Disputed Domain Name in bad faith and the Complaint also fails in relation to the third element of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
Frederick M. Abbott
Panelist
Edoardo Fano
Panelist (Dissenting)
Dated: June 22, 2011
DISSENTING OPINION
I respectfully dissent from the majority decision of the Panel on the basis of the following considerations.
The Respondent is a sophisticated domainer registering several four letters domain names in order to use them as landing pages with links to various commercial activities and/or to sell them.
All the homepages of the websites corresponding to the 4 letters domain names owned by the Respondent have the same layout, they just change the background colour and the field of the commercial activities they are linking to, except the homepage at the Disputed Domain Name at the time of filing the Complaint.
At that time, the homepage at the Disputed Domain Name made reference to the Bible, without explaining why, but as all the other Respondent’s homepages it had links to commercial activities, according to the Complainant and without the Respondent proving contrary.
The reference to the Bible is explained in the Response, but in consists of a clear “after-the-fact” explanation.
Today the homepage at the disputed domain name has exactly the same layout as all the other Respondent’s homepages, with links to commercial activities and no reference whatsoever to the Bible.
While I was wondering why, among all the homepages of the websites corresponding to the 4 letters domain names owned by the Respondent, only the one corresponding to the disputed domain name had a specific reference to the Bible, that is to field of activity of the Complainant and why today the Respondent has changed the content of the homepage at the disputed domain name, deleting all the references to the Bible that were explained in such minute details in the Response, I reached the following conclusions.
I find that the first element of the UDRP has been proved, since the Complainant enjoys unregistered trademark rights on the acronym HMWN (used in Internet as showed in the Complainant’s official website at “www.hmwn.net” as well as results of Internet engines searching) and I further find that the Respondent has registered as disputed domain name a 4 letters acronym corresponding to an unregistered trademark of a religious organization, the Biblical reference showing that he knew this acronym was used as a distinctive sign in the religious field, or that he should have known it, since he was and is a sophisticated domainer.
In fact several UDRP panel decisions have considered the specific responsibility of sophisticated domainers, by saying that “it is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights” (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Therefore in this Panelist’s view people who make a living from registering vast numbers of domain names must make a reasonable effort to ensure that they are not infringing on the trademark rights of third parties, either registered or unregistered, without engaging in what is usually called “wilful blindness” to the existence of such rights.
As stated by the three-member Panel in the mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141: “Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be wilfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”
And also, “[…] an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trade mark application or registration. […] Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term. Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages […] In this context, registrants that run [pay-per-click] landing page businesses cannot be wilfully blind to whether domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights. It is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
I also find that the second element of the UDRP has been proved since the Respondent was and is not commonly known as the disputed domain name and has not positively demonstrated that it has legitimate rights or interests in the disputed domain name being the explanation given in the Response a typical after-the-fact explanation.
I also find that the third element of the UDRP has also been proved, since the Respondent:
- at the time of registering the Disputed Domain Name could not, in this Panelist’s view, have ignored the existence of the unregistered trademark right of the Complainant, otherwise the Biblical reference has no apparent reason other than possibly being pretextual, (since this Panel cannot see how Respondent has proved to have rights or legitimate interests in the disputed domain name based on the after-the-fact explanation provided in the Response), and also in case of accepting such explanation that the pay-per-click landing site at the disputed domain name had religious links chosen automatically by the site itself, the fact that the Respondent is a sophisticated domainer would still lead to his responsibility of checking whether these links, and as a consequence the disputed domain name, were infringing third parties trademark rights;
- in using the Disputed Domain Name this Panelist’s assessment is that the Respondent is again acting in bad faith, because the reference to the Bible does not link, for example, to the explanation of the HMWN religious acronym which is provided the Response nor to any other, for, example, definitely noncommercial religious content, but rather to commercial activities from which the Respondent is apparently deriving a benefit. This Panel finds on balance that it is more likely that the Respondent is conducting such activities with a view to capitalising on likely confusion with trademark rights than merely trading on the claimed biblical meaning. The recent change in the relevant webpage, from which all reference to religion has disappeared, would further suggest to this Panelist the bad faith of the Respondent.
I am therefore of the view that the Complainant succeeded in proving all three elements of the UDRP.
Edoardo Fano
Panelist (Dissenting)
Dated: June 22, 2011
1 Panelist Abbott notes that the Complainant did not provide information concerning legal standards that Canadian judicial or other authorities would employ for determining whether unregistered trademark rights are established in Canada (which appears to be the jurisdiction in which Complainant asserts the establishment of such rights). In Panelist Abbott’s view, trademark rights must be established with respect to a particular national or regional jurisdiction, though there need not be a direct correlation between such jurisdiction and the place where a disputed domain name is used (or abused) for purposes applying paragraph 4 of the Policy.
2 To be clear, in order to prevail regarding bad faith registration, the Complainant must have demonstrated that it owned trademark rights when Respondent registered the disputed domain name. Even had the majority accorded Complainant additional benefit of the doubt regarding unregistered rights as of the date of initiation of this proceeding, the Complainant certainly failed to demonstrate rights at the time the disputed domain name was registered in 2002.