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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crystal Cathedrals Ministries, Inc. v. Edu Stuivenberg dba Bedroom Graphics
Case No. D2002-0102
1. The Parties
Complainant is Crystal Cathedral Ministries, Inc. ("Complainant" or "Crystal") located at 13280 Chapman Avenue, Garden Grove, California 92840, United States of America.
Respondent is Ed Stuivenberg, doing business as Bedroom Graphics ("Respondent" or "Bedroom") located at 4000 West Wallace Avenue, Tampa, Florida 33611, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <thehourofpower.com> (the "Domain Name"). The registrar is Register.com (the "Registrar"), located at 575 Eighth Street, 11th Floor, New York, New York, 10018, United States of America.
3. Procedural History
On January 30, 2002, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On February 4, 2002, the Center received hardcopy of the Complaint and sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On February 5, 2002 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, 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 verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On February 7, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On February 28, 2002, the Center advised Respondent that he was in default for failing to file his Response. On March 14, 2002, the Center received an email from Respondent with certain facts regarding his website. No formal Response has been received. Part of the March 14, 2002, email from Respondent included a prior email dated February 5, 2002, to Complainant’s representative in which Respondent offered to sell the Domain Name to Complainant for $5,795, including costs in excess of out-of-pocket costs.
On March 20, 2002 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Every week for over 30 years, Complainant has televised a one-hour religious program across the world. This program is called the "Hour of Power." The program is broadcast to every State in the United States, and nearly every nation across the globe, including Canada, Europe, the Middle East, the Commonwealth of Independent States (Russian Federation), Asia, and Australia. Complainant has the service mark registrations:
United States Service Mark Registration No. 1,512,098 for the mark HOUR OF POWER covering "a television program featuring religious services" in International Class 41 registered by the United States Patent and Trademark Office on November 8, 1988.
German Service Mark Registration No. 39,523,508 for the mark HOUR OF POWER covering "producing, designing and broadcasting of television programs with religious contents" registered by the German Trademark Office on May 7, 1996.
United Kingdom Service Mark Registration No. 2,016,356 for the mark HOUR OF POWER covering "religious education services" registered by the U.K. Trademark Office on April 3, 1995.
Benelux Service Mark Registration No. 573,915 for the mark HOUR OF POWER covering "television program featuring religious services" registered by the Netherlands Trademark Office on March 31, 1995.
In addition to television programs, Complainant also uses the mark HOUR OF POWER on and in connection with printed materials on the topic of religious services. On or about January 1991, Complainant began publishing a monthly publication. The publication is distributed throughout the world in nearly as many countries as the television program of the same name.
Since at least as early as July 1998, the Complainant has also used the service mark HOUR OF POWER in connection with an Internet website located at the URL <hourofpower.org> and Complainant also registered the URL’s <hourofpower.com> and <hourofpower.net> to preserve its rights to the service mark. Through this Internet portal, the Complainant proffers the same spiritual messages of hope and inspiration as those in the companion television program and periodical. The website makes available to the public streaming videos, written text, books, and images, all tailored to the religious community and dedicated to the furtherance and understanding of the Love of God.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has registrations of the service mark HOUR OF POWER (the "Mark"), that its service mark registrations are valid and subsisting.
The Complainant further contends that it has invested immeasurable time and effort in establishing and maintaining the quality of its nationally and internationally televised religious program. As a result of such efforts, the Complainant has become well-known throughout the United States, and the world, as one of the preeminent religious television programs.
ii. Complainant argues that the Domain Name is virtually identical with and confusingly similar to the Mark, pursuant to Paragraph 4(a)(i) of the Policy.
Complainant argues that the Domain Name is virtually identical to the Complainant’s HOUR OF POWER mark and domain name, with the exception that the Domain Name is preceded by the word "THE" and followed by ".COM". See In re Phillips-Van Heusen Corp., 228 U.S.P.Q. 949, 950 (T.T.A.B. 1986) (in finding the marks "substantially identical", the Board indicated, "the only difference between [the marks] being the inclusion in registrant’s mark of the word "THE", which has no particular trademark significance....").
Complainant further argues that even if Respondent were to argue the addition of the word "THE" to the Domain Name has significance, Complainant also has strong common law rights in and to the Mark. By way of example, in television broadcasts, or simply when spoken, Complainant’s television program is referred to as "the Hour of Power" (e.g. "coming up next is the HOUR OF POWER featuring internationally recognized speaker Robert Schuller."). Further, Complainant’s own website begins with the statement "WELCOME TO THE HOUR OF POWER." As such, the Respondent’s registration and use of the <thehourofpower.com> Domain Name infringes Complainant’s service mark rights and creates a likelihood of confusion and, Complainant asserts, has created actual confusion, under Section 2(d) of the United States Trademark Law. See 15 U.S.C. § 1052(d).
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant alleges it has no relationship with the Respondent, nor has Complainant given permission or authorized the Respondent to register and use the Domain Name. See Nokia Corp. v. NokiaGirls.com a.k.a. IBCC, WIPO Case No. 02000-0102 (April 18, 2000). Complainant alleges that prior to the registration of the Domain Name, the Respondent has not been commonly known by the Domain Name. See Singapore Airlines Ltd. v. Robert Nielson, WIPO Case No. D2000-0644 (August 29, 2000).
Complainant asserts that the Respondent is using the Domain Name "solely to divert [those persons seeking Complainant’s services] to another web site for financial gain by using the valuable mark to draw internet users to [a portal to] pornography web sites so that the Respondent can make a profit from advertising." Schauman Wood Oy v. Schaumanwood.com Meta Search, (WIPO Case No. D2001-1145 (November 7, 2001) (finding no legitimate rights and citing numerous cases wherein linking to pornography websites conferred no legitimate rights.)
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant further contends that Respondent registered the Domain Name with the intent to sell it to the Complainant. Such intent is evidenced by the offer of Respondent to sell the Domain Name for $5,797 including costs in excess of Respondent’s out-of-pocket costs.
Complainant further contends that Respondent registered the Domain Name in bad faith when it registered the Domain Name with knowledge of Complainant’s valid and existing rights in and to the service mark HOUR OF POWER. The fact that the Respondent’s Domain Name is identical to Complainant’s registered service mark, save that it is preceded by the word "the", leads to an inference that Respondent was aware of both the domain name and service mark of Complainant. Further, even if Respondent contends it was ignorant of Complainant’s domain name, Respondent is charged with knowledge of Complainant’s federally registered U.S. service mark under the U.S. Trademark Law. See Section 22 of the Lanham Act, 15 U.S.C. §1072 ("Registration of a mark on the principal register . . . shall be constructive notice of the registrant's claim of ownership thereof.").
Complainant alleges that further evidence of Respondent’s registration of the Domain Name in bad faith is found in the WHOIS records themselves. Complainant believes the ownership information submitted by Respondent when Respondent registered the Domain Name to be false or misleading. Specifically, Respondent identifies the owner of the domain as Ed Stuivenberg doing business as Bedroom Graphics. Research into the Bedroom Graphics fictitious business name reveals that the entity is the website designer or graphic artist and may not actually be the party who operates or generates the rewards of operating the website. Moreover, to proceed beyond the initial page, one must pay for and receive an adult check pass from CyberAge, Inc. before being allowed to view the content of the site, thereby further concealing the true owner and/or its affiliates. On prior occasions, WIPO has found the use of false registration information to constitute bad faith. See Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138, (April 19, 2000).
Complainant asserts that, while Respondent is certain to deny any knowledge of Complainant’s use of the mark HOUR OF POWER, Complainant respectfully submits that such a denial should "do the Respondent no credit whatsoever" given the international use and scope of Complainant’s valid and existing rights. See General Electric Company v. Basalt Management, (WIPO Case No. D2000-0925 (October 25, 2000).
Complainant further asserts that Respondent is using the Domain Name to intentionally divert actual and prospective customers of Complainant to Respondent’s website for its own commercial gain and to create a likelihood of confusion with Complainant’s mark and web site. Complainant argues that Respondent’s website has caused, and will continue to cause, actual confusion with individuals seeking Complainant’s religious services. Blackboard, Inc. v. CupCake Patrol, WIPO Case No. D2000-0811 (October 17, 2000) (registering a domain name that represents a simple one letter misspelling of the Complainant’s registered trademark resulted in actual confusion of users).
B. Respondent’s contentions
i. Respondent does not dispute that the Complainant has registrations of the HOUR OF POWER Mark.
ii. Respondent does not dispute that the Domain Name is identical with or confusingly similar to the Mark.
iii. Respondent asserts that he has rights to or legitimate interests in the Domain Name because he is offering content on the Internet directed at the niche market of those interested in sexual bondage and/or domination.
Respondent denies that he registered or used the Domain Name in bad faith because he had no intention of diverting web surfers to his website and is willing to sell the Domain Name to Complainant for the reasonable value of $5,795.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Sole Panelist is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie WIPO Case No. D2000-1772 (April 10, 2001).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical with 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 is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has numerous registrations of the service mark HOUR OF POWER and that its trademark registrations are valid and subsisting. These contentions are not contested by Respondent and serve as prima facie evidence of its ownership and the validity of the HOUR OF POWER mark. 15 U.S.C. § 1115. Such uncontested allegations show that Complainant’s registrations are incontestable and conclusive evidence of its ownership of the Mark and exclusive right to use the mark in connection with the stated services. 15 U.S.C. §§ 1065 and 1115(b). Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Mark.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i). These contentions are not contested by Respondent.
As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
The Sole Panelist notes that the entirety of the service mark HOUR OF POWER is included in the Domain Name.
Respondent asserts that he made changes disclaiming any relationship to Complainant. However, the use of a disclaimer is not sufficient to constitute a defense to bad faith. See Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion and noting that "Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership," and that even where people realize, immediately upon accessing the complained-of website, that they have reached a site operated by someone other than the trademark owner, the infringing website will still have gained a customer by appropriating the goodwill of the trademark owner).
Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc. , WIPO Case No. D2000-0270 (June 6, 2000).
Respondent has no relationship with or permission from Complainant for the use of the HOUR OF POWER Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has alleged that Respondent cannot show that it has rights or legitimate interest under any of these three nonexclusive methods and has sustained its burden of showing a prima facie case.
Respondent’s arguments apply only to subparagraph 4(c)(i), because Respondent asserts that he posted content on his website prior to being advised of the dispute. Complainant’s registration of the Mark in the United States was prior to Respondent’s registration of the Domain Name. Therefore, Respondent has constructive knowledge of the existence of Complainant’s rights and of a potential dispute prior to registering the Domain Name. Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
In arriving at this decision, the Sole Panelist has not considered whether the offering of sexual content regarding bondage and/or domination is a bona fide service.
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Respondent admits that he offered to sell the Domain Name to Complainant for an amount greater than his out-of-pocket costs. Given Respondent’s constructive knowledge of Complainant’s rights, the Sole Panelist finds that Respondent has registered the Domain Name primarily for the purpose of selling it to Complainant.
Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i) to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name <thehourofpower.com> is identical with and/or confusingly similar to Complainant’s registered service mark HOUR OF POWER, (b) that Respondent has no rights to or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Crystal Cathedrals Ministries, Inc.
Richard W. Page
Dated: April 26, 2002