Twenty First Century Holiness v. John Smith

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Twenty First Century Holiness Tabernacle Church, Inc. v. John Smith / Ian Mann

Case No. D2007-0198

1. The Parties

Complainant is Twenty First Century Holiness Tabernacle Church, Inc., Fort Smith, Arizona, United States of America, represented by the law firm Rabinowitz, Boudin, Standard, Krinsky & Lieberman PC, New York, New York, United States of America.

Respondent is John Smith / Ian Mann, Gulf Breeze, Florida, United States of America.

Mr. Mann has submitted a Response on his own behalf.

2. The Domain Names and Registrar

The disputed domain names <armfulofhelp.com>, <armfulofhelp.net>

and <armfulofhelp.org> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2007. On February 12, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue.

On February 13, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the three disputed domain names and providing the contact details for the administrative and technical contact.

Network Solutions, LLC also notified the Center that Respondent was not the registrant of a fourth domain name listed in the Complaint. The Center so notified Complainant on February 19, 2007. Complainant then submitted an Amended Complaint on February 23, 2007, deleting this one domain name.

The Center verified that the Amended 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”). All references in this Decision to the “Complaint” refer to the Amended Complaint.

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 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2007. The Response was filed with the Center on March 21, 2007.

The Center appointed Richard G. Lyon as the sole panelist in this matter on

April 3, 2007. The Panel finds that it was properly constituted. The Panel has

submitted his 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 is a not-for profit religious corporation that operates or has in the past operated Christian ministries to the poor, disadvantaged, and victims of war or natural disasters. Complainant holds no nationally-registered trademark but has used the name “Armful of Help” extensively as an identifier of its ministry since at least 1989, and has registered this as a fictitious business name with the Secretary of State of Arkansas, its charter jurisdiction and the state of the United States of America in which Complainant has its principal office. Complainant has used its mark continuously for this purpose since 1989 in many states of the United States of America and in India, Africa, and Latin America. The Complainant owns and makes use of a number of Internet domain names employing the phrase “Armful of Help”. Complainant owned one of the disputed domain names, <armfulofhelp.org>, until November 2006, but at that time “inadvertently failed to re-register this domain name”.

Respondent’s real name is Ian Mann, an individual residing in Gulf Breeze, Florida, United States of America. Mr. Mann claims to be a co-founder of Complainant with Tony Alamo, Complainant’s principal, but since an estrangement some years ago has been a constant and strident critic of Mr. Alamo and Complainant.

Respondent registered the disputed domain names in December 2006. The Whois

database lists the registrant for each of the disputed domain names as John

Smith. Mr. Mann has confirmed that he registered the disputed domain names under

a fictitious name for reasons set forth in the Parties’ Contentions section.

Respondent maintains an active website at <www.armfulofhelp.org>; the

other two disputed domain names are parked. The active website contains media

reports, photographs, and commentary that are highly critical of Complainant

and Mr. Alamo.

5. Parties’ Contentions

Complainant contends as follows:

Identical or Confusingly Similar to a Mark in Which Complainant has Rights. Complainant has common law rights in the phrase “Armful of Help” by virtue of its continuous use since 1989. (The evidence in support of this is discussed in the Discussion and Findings section.) Complainant’s ministries have become identified with the phrase “Armful of Help”, providing “secondary meaning” in the phrase that supports Complainant’s rights. As the disputed domain names differ only in the top-level domain identifier, under the Policy, they are identical to Complainant’s mark.

Respondent Lacks Rights or Legitimate Interests. Complainant has not authorized Respondent to use its marks; Respondent has never been known by the phrase “Armful of Help”; Respondent has made no use of the disputed domain names until December 2006, when Complainant’s registration for one of them inadvertently lapsed. The use Respondent now makes is not legitimate because it diverts Internet users seeking Complainant’s site to Respondent’s site. To the extent Respondent’s site is critical, he has no right to use the Complainant’s mark as his Internet address from which to deliver his message.

Respondent Has Registered and Has Used the Disputed Domain Names in Bad Faith. In addition to the activities described under the preceding section, Respondent used a false name to register the disputed domain names. Such use is by its very nature fraudulent and evidence of bad faith. Respondent subsequently used the name John Smith to hide his true identity, constituting further evidence of bad faith. His use is also “directly competitive” to Complainant, as Respondent is sponsoring an “anti-cult” campaign. As such, he is intentionally attempting to attract Internet users by creating a likelihood of confusion with Complainant’s marks, in violation of paragraph 4(b)(iv) of the Policy.

Respondent contends as follows:

Identical or Confusingly Similar to a Mark in which Complainant has Rights. Although Respondent denies identity or similarity, his principal argument on this element of the Policy is that as a co-founder of Complainant, he has rights equal to those of Complainant to use the phrase “Armful of Help”, or at least rights sufficient to use the name himself.

Rights or Legitimate Interest. Respondent has a right, indeed a duty, to conduct his site, in order to advise the public, including prospective donors to Complainant, of Complainant’s straying from its stated mission, and Mr. Alamo’s record. Respondent simply registered two of the disputed domain names when they became available; failure to renew them is Complainant’s own fault and in any event not attributable to Respondent.

Bad Faith. Respondent has engaged in no improper

conduct. He used a fictitious name to register the disputed domain names to

prevent retaliation against him or his family from Complainant, and the use

of the John Smith name was merely taking advantage of a privacy option offered

by the registrar. The address and telephone numbers provided to the registrar

have always been accurate. Furthermore, Complainant has doctored evidence submitted

in support of the Complaint, so it is Complainant, not Respondent, that has

acted in bad faith.1

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must establish each of the following:

(1) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants has rights; and

(2) that the Respondent has no rights or legitimate interests in respect to the disputed domain names; and

(3) that the disputed domain names have been registered and are being used in bad faith.

Complainant bears the burden of proof on each element.

A. Identical or Confusingly Similar.

Complainant has established common law rights in the

phrase “Armful of Help” with competent evidence. It has submitted

testimonials; letters of commendation; thank you letters from private individuals,

other charities, and governmental entities; newspaper articles; and advertisements

that more than suffice to show Complainant’s continuous use of this phrase

to identify the activities its undertakes. A non-profit organization may hold

rights in a name or phrase sufficient to invoke the Policy. See The Baltimore

Museum of Art, Inc. v. Mo Domains, WIPO

Case No. D2005-0720; Ukrainian World Congress v. Daniel Steel, WIPO

Case No. D2004-0658.

Based on the foregoing, it is obvious that the domain names are identical or confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests.

Respondent asserts that he has an equal right to the mark because of his past affiliation with Complainant. The evidence before the Panel on this point is unclear. Had Respondent registered the disputed domain names while still associated with Complainant, this argument might, if established, have had some force. But here Respondent does not allege that he was in any way associated with Complainant, the mark owner, in 2006, when he registered the disputed domain names. Without Complainant’s permission, not present here, and absent established and on-going co-rights to the mark, there is no basis in the present case for a finding of rights or legitimate interest on the basis of this argument.

Respondent hints at, and Complainant addresses, a

second argument for a finding of rights or legitimate interest, that Respondent

is using one of the disputed domain name for legitimate (in his view, necessary)

criticism of Complainant and Mr. Alamo. Respondent’s site is not commercial

in any way; its sole purpose is criticizing Complainant with commentary and

media articles. Under the United States Constitution, Respondent has every right

freely to express to the public his views of Complainant, subject only to the

boundaries of fraud, libel, or demonstrably false statements. A Panel under

the Policy, of course, generally lacks the competence to evaluate whether commentary

crosses any of these lines. See InMed Diagnostic Services, LLC, InMed Diagnostic

Services of S.C., LLC, InMed Diagnostic Services of MA, LLC and InMed Diagnostic

Services of IL, LLC v. James Harrison, WIPO

Case No. D2006-1230. As Complainant argues, however, Respondent has no right

to make use of Complainant’s mark as the Internet address for his criticism.

See Justice for Children v. R neetso / Robert W. O’Steen,

WIPO Case No. D2004-0175; Royal Bank

of Scotland Group v. Lopez, WIPO Case

No. D2002-0823; WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, paragraph

2.4, View 1. Complainant has carried its burden of proof under paragraph 4(a)(ii)

of the Policy, and its case has not been rebutted by Respondent.

Based on the foregoing, the Panel finds that Respondent does not have rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith.

For the same reasons set forth in the preceding paragraph,

Complainant has shown that Respondent has used the disputed domain names in

bad faith – not because of any assertions about Complainant’s activities

or its principal’s character or by registering under a fictitious name,

but because of his misuse of Complainant’s marks. Respondent has admitted

that he registered and used one of the disputed domain names to criticize Complainant.

Establishing his website immediately after registration allows the Panel to

infer that he registered the active domain name to “intentionally attempt[]

to attract, for commercial gain, Internet users to [his] website . . ., by creating

a likelihood of confusion with the complainant’s mark as to the source,

sponsorship, affiliation, or endorsement” (Policy, paragraph 4(b)(iv))

and the other two merely to keep them from Complainant. While there is no showing

that Respondent has engaged in a pattern of conduct meeting the example set

out in paragraph 4(b)(ii) of the Policy, the examples in paragraph 4(b) are

non-exclusive and in the circumstances of this case, Respondent’s conduct

amounts to bad faith in registration and use. Compare Justice for Children

v. R neetso / Robert W. O’Steen, supra.

7. Decision

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 names, <armfulofhelp.com>, <armfulofhelp.net> and <armfulofhelp.org>, be transferred to Complainant.

Richard G. Lyon

Sole Panelist

Dated: April 17, 2007

1 Respondent specifies in reasonable detail how he believes this was done. Complainant requested leave to respond to this charge (see Rules, paragraph 12), explaining that there was no tampering; Respondent replied with further details. As the Panel finds that this assertion is not relevant to its decision, leave to submit the supplemental filings is denied.