The Church in Houston v. Light of Truth Ministries

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Church in Houston v. Jim Moran, Light of Truth Ministries

Case No. D2001-0683

1. The Parties

The Complainant is The Church in Houston, a non-profit religious organization

located at 6355 Windswept Lane, Houston, Texas, USA. Complainant is represented

in this matter by Thompson & Knight, L.L.P.

The Respondent is Jim Moran on behalf of Light of Truth Ministries located

at Chicago, Illinois, USA, a non-profit Christian research ministry. Respondent

proceeds pro se.

2. The Domain Name and Registrar

The domain name at issue is <thelocalchurch.org> (the "Domain Name").

The Domain Name is registered with Network Solutions, Inc. (the "Registrar").

3. Procedural History

Complainant filed its Complaint by email on May 23, 2001, and in hardcopy on

May 25, 2001. Because of deficiencies in the Complaint noted by the Center,

Complainant filed an Amended Complaint by email on June 1, 2001 and in hardcopy

on June 7, 2001. Complainant requested a three-member panel, provided the names

of three preferred panelists, and paid the required fee.

On May 25, 2001, the WIPO Arbitration and Mediation Center (the "Center")

sent a Request for Verification to the Registrar requesting verification of

registration data, and on May 30, 2001, the Registrar confirmed, inter alia,

that it is the registrar of the Domain Name and that the Domain Name is registered

in the Respondent's name. The Center then verified that the Amended Complaint

satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution

Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Rules"), and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (the "Supplemental Rules"), a finding

with which the Panel agrees. The Center commenced this proceeding on June 11,

2001.

A Response was filed on June 21, 2001.

4. Factual Background

Complainant is a member church of a group of Christian churches known collectively

as The Local Church[1]. Members of The Local

Church movement believe, inter alia, that the inherent oneness of all

Christians compels all Christians in a particular city to meet at a single church.

Each member church of The Local Church is thus identified by the city in which

it is located, i.e., Complainant is The Local Church in Houston.

Complainant does not hold a registered mark in the name "The Local Church,"

but the term is used by adherents to Complainant’s faith and at least some third

parties to identify the religious movement of which Complainant is a part. The

Local Church movement maintains websites at, among other places, <thelocalchurches.org>

and <localchurches.org>.

Respondent publishes a website that offers analysis of and commentary on The

Local Church movement from an evangelical Christian perspective. Respondent

registered the Domain Name in June of 1998 and has posted a continuous stream

of articles critical of The Local Church since that time. Respondent also "mak[es

himself] available to offer counseling and public speaking opportunities"

related to Complainant’s religious movement.

5. Parties’ Allegations

A. Complainant

Complainant submits that, although it does not have a registered mark in The

Local Church, "the group along with third parties have long used the mark

‘The Local Church’ to identify and distinguish the religious services of these

churches from those of other Christian groups. This is the standard for a service

mark under the Lanham Act § 45." Complainant alleges that "the Church

in Houston is the owner of the marks ‘The Local Church’ and ‘The Local Churches’

and all other churches’ and ministries’ use of this mark is pursuant to a license."

Complainant asserts that the Domain Name is thus identical to a mark in which

it has rights.

Complainant further argues that Respondent "can have no rights or legitimate

interests in the domain name." Complainant admits that Respondent’s website

purports to be for the purpose of fostering public discussion of The Local Church

movement, but insists that,

"[a]lthough this may appear innocuous enough, Respondent’s intent is to

discredit Complainant and its licensee churches and to label them as a cult."

In support of this claim, Complainant cites articles on Respondent’s website

in which Witness Nee, the founder of The Local Church movement, is compared

to David Koresh and Jim Jones. Complainant argues that Respondent registered

Complainant’s alleged mark as its domain name not out of a legitimate interest

but instead "to mislead persons actually seeking Complainant or information

on Complainant to Respondent, so that Respondent would disseminate its views

criticizing Complainant and its licensee churches." This, according to

Complainant, "tarnishes the mark ‘The Local Church.’"

Finally, the Complainant submits that the domain name has been registered in

bad faith in order to "create[ ] a likelihood that the public will be confused

into believing that Respondent is somehow sponsored by, connected with, approved

by, associated with, or endorsed by Complainant." Complainant also alleges

that Respondent makes a bad faith use of the domain name to "solicit[ ]

speaking engagements, individual and group therapy and radio and television

interviews."

B. Respondent

Respondent replies that (1) he has rights in the mark "The Local Church.org;"

(2) the domain name was legitimately "registered and put into service for

the sole purpose of providing members of the online community with an easier

means to obtain differing opinions about the beliefs and practices of Complainant’s

religious movement;" (3) Respondent’s website "in no way competes

with Complainant’s religious movement’s efforts to gain converts [or] to seek

monetary gain;" (4) "Respondent has in no way attempted to pass himself

off as being affiliated in any way with the Complainant and Complainant’s religious

movement;" and (5) seeking service mark protection for the name "The

Local Church" violates the tenets of Complainant’s faith.

Respondent also alleges that:

Complainant has not submitted any proof of any kind to substantiate its claims

of being the proper owner of the name ‘The Local Church’, that it is the sole

authority to license its use out to other parties, that it has actually licensed

this name out to other parties – other churches in its movement, and that it

has the responsibility and authority to act on behalf of every other church

fellowship in its religious movement worldwide.

Respondent accuses the Complainant of attempting a Reverse Domain Name Hijacking.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the ICANN Policy is

to prove:

(i) That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

(ii) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That the domain name has been registered and used in bad faith.

A. Complainant Has Not Established That It Has Rights in the Mark.

The threshold requirement in any dispute under the Policy is for the complainant

to demonstrate it has rights in the mark at issue. Before a panel can determine

whether the alleged mark is identical or confusingly similar to the Domain Name,

it must be satisfied that the complainant has established its trademark or service

mark rights in the first place.

Here, the Panel concludes that Complainant has not met its burden of establishing

that it has rights in the mark "The Local Church." The mark is not

registered, and therefore enjoys no presumption of validity under United States

law. Tough Traveler, Ltd. v. Kelty Pack, Inc ,et al, WIPO

Case No. D2000-0783 (Sept. 28, 2000) [2].

Although a mark need not be registered to satisfy the first prong of the three-part

test established by the Policy, Patricia Ford and Online Creations Inc. v.

Damir Kruzicevic, WIPO Case No. D2001-0059

(Mar. 20, 2001), Complainant has not provided sufficient evidence to prove that

it has established common law trademark rights.

Complainant has presented evidence of its use of the name to provide religious

services, as well as some vaguer assertions that the phrase "The Local

Church" is used generally to describe or identify Complainant’s movement.

Respondent has countered, however, with considerable evidence that the phrase

is used descriptively. Given the conflicting evidence on the point and that

the Complainant bears the burden of proof, the Panel concludes that Complainant

has not adequately established a service mark in the name.

Moreover, Complainant itself says the phrase is descriptive of a local, that

is community based, church movement. "A local church," according to

the Complaint, "is a church in a city." The Panel doubts there are

trademark or service mark rights in the names of religious movements, whether

the name at issue is "Christian Church," "Reform Judiasm,"

"Buddhist Temple," or "The Local Church." Cf. Pet Warehouse

v. Pets.Com, Inc., WIPO Case No. D2000-0105

(Apr. 13, 2000) (no trademark rights established in name combined from two generic

terms, pet and warehouse).

Furthermore, even if there were service mark rights in "The Local Church,"

Complainant has not shown that it is the owner of them. The Complaint asserts

that Complainant licenses the mark to other churches in the movement, but Complainant

has pointed to no evidence, nor have we discovered any in the record, to substantiate

such a licensing program or to establish the Church in Houston’s rights in the

mark. To the contrary, the voluminous record submitted by Complainant mentions

a large number of entities other than the Church in Houston who appear to be

affiliated with The Local Church. Complainant fails to establish that, out of

the universe of possible claimants, it is the actual owner of the purported

rights in the mark.

A Complainant must prove its case under all three prongs of the Policy in order

to warrant relief. Because the Panel finds that Complainant has not succeeded

on the first prong, it is not necessary to reach the issues of legitimate interest

and bad faith. Tough Traveler, supra.

B. Complainant Is Not Guilty of Reverse Domain Name Hijacking.

Respondent asks for a declaration that Complainant is engaging in Reverse Domain

Name Hijacking. Such a finding requires a showing of bad faith. See Rule

1. To show bad faith, Respondent must show that Complainant knew or plainly

should have known that one of the three elements in Paragraph 4(a) of the Policy

was absent.

One Panelist believes that Respondent did prove such bad faith with respect

to the first element: that Complainant knew or should have known that it lacked

trademark rights in the name The Local Church. The other two Panelists, though,

while having no trouble concluding that Complainant failed to carry its burden

of proof on this issue, do not believe that the claim of trademark ownership

was so far-fetched as to constitute bad faith. See Jews for Jesus v. Brodsky,

993 F. Supp. 282, 295 (D.N.J.) (finding that Jews for Jesus religious movement

established trademark rights in the mark JEWS FOR JESUS, based in part on federal

registration of a design version of the mark), aff’d mem., 159 F.3d 1351

(3d Cir. 1998).

The first Panelist also was inclined to find bad faith, and hence Reverse Domain

Name Hijacking, given Complainant’s improper effort to use the UDRP to silence

its critics. Although a second Panelist found this to be a very close issue,

that Panelist ultimately concluded that Complainant’s allegations were not so

far off the mark as to justify Reverse Domain Name Hijacking given that no consensus

has yet emerged in UDRP decisions on the degree to which the legitimate interest

and bad faith prongs protect from transfer domain names registered to provide

criticism of another. Compare Britannia Building Society v. Britannia Fraud

Prevention, WIPO Case No. D2001-0505 (July

6, 2001) ("A genuine criticism site, undertaken by its proprietors with

no intent other than to protest, ridicule and mock its targets, does not fall

astray of the dictates of the Policy.") with Mission KwaSizabantu v.

Benjamin Rost, WIPO Case No. D2000-0279

(June 7, 2000). Cf. Monty and Pat Roberts, Inc. v. J. Bartell, WIPO

Case No. D2000-0300 (June 13, 2000) (criticism site that also devotes substantial

space to sales of commercial products not protected). Indeed, demonstrative

of the lack of consensus among UDRP panels on this point is that the third Panelist

considered that, if Complainant had proven trademark rights, then an evaluation

of the level of commercial content on Respondent’s website would have been a

material element in determining whether the Respondent had fairly used the mark

(cf. Jews for Jesus, supra).

In sum, although it is a close issue, Respondent has not persuaded a majority

of the Panel that the Complaint was filed in bad faith and warrants a finding

of Reverse Domain Name Hijacking.

7. Decision

Because Complainant has failed to prove that it has rights in the mark "The

Local Church," the Panel declines to order transfer of the Domain Name.

David H. Bernstein

Presiding Panelist

Frederick M. Abbott

Panelist

Michael Froomkin

Panelist

Dated: August 2, 2001

Footnotes:

1. Complainant usually does not capitalize

the name of its movement, apparently for doctrinal reasons. When referring in

the Complaint to the alleged mark, however, Complainant does use initial capital

letters. In this decision, without intending any disrespect, we will refer to

the religious group with which Complainant is affiliated as "The Local

Church," solely for the sake of convenient identification.

2. Given that both parties are U.S. residents,

it is appropriate to consider U.S. legal principles in evaluating whether Complainant

has met its burden of establishing trademark or service rights in the mark.

See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case

No. D2000-1772 (Apr. 10, 2001), n. 3.