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WIPO Domain Name Dispute Case D2003-0339

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WIPO Domain Name Dispute Case D2003-0339 Powered By Docstoc
					                 WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                              Gene Edwards v. David Miller

                                   Case No. D2003-0339




1.   The Parties

     The Complainant is Gene Edwards of Jacksonville, Florida, United States of America,
     who is represented by Andrea T. Tullo, Esq. of Shumaker, Loop & Kendrick, LLP of
     Tampa, Florida, United States of America.

     The Respondent is David Miller of Beverly Hills, Florida, United States of America.


2.   The Domain Name and Registrar

     The disputed domain name, <geneedwards.org>, is registered with Go Daddy Software
     of Scottsdale, Arizona, the United States of America.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center (the
     “Center”) on May 2, 2003. Also on May 2, 2003, the Center transmitted by email to
     Go Daddy Software a request for registrar verification in connection with the disputed
     domain name. Still on May 2, 2003, Go Daddy Software transmitted by email to the
     Center its verification response confirming that the Respondent is listed as the
     registrant and providing the contact details for the administrative, billing, and technical
     contact. 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 the
     Respondent of the Complaint and this proceeding began on May 8, 2003. In
     accordance with the Rules, paragraph 5(a), the due date for the Response was set at
     May 28, 2003. The Response was filed with the Center on May 27, 2003.



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     The Center appointed Dennis A. Foster as the sole panelist for this Case on
     June 5, 2003. 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.

     This Decision was due on June 19, 2003, but the Panel requested an extension until
     July 7, 2003, and subsequently an extension until July 14, 2003.


4.   Factual Background

     The Complainant is a well-known minister of the Christian faith whose notoriety is
     enhanced by his frequent appearances on television. The Complainant has authored
     many books in connection with his religious views.

     The Respondent is listed as the registrant of the disputed domain name. The record of
     registration was created on October 1, 2002. The Respondent is using the disputed
     domain name to host a web site that comments on and criticizes the Complainant's
     ministry.

     On December 4, 2002, the Complainant sent the Respondent a letter alleging trademark
     infringement and demanding transfer of the disputed domain name (Complaint
     Exhibit E). The Respondent replied on December 12, 2002, arguing among other
     things that he had a right to use the disputed domain name to run a “responsible opinion
     site” about the Complainant (Response Exhibit A).


5.   Parties’ Contentions

     A.   Complainant

     -    The Complainant heads an international Christian ministry. The Complainant has
          appeared frequently on television in this capacity, gaining considerable notoriety.
          The Complainant has also authored approximately thirty Christian books.

     -    The "Gene Edwards" mark, owned by the Complainant, has achieved fame and
          become synonymous in the minds of the public with the Christian House Church
          movement.

     -    The Complainant owns the domain name, <geneedwards.com>, having registered
          it prior to the registration of the disputed domain name.

     -    The disputed domain name is identical or confusingly similar to the
          Complainant's "Gene Edwards" mark.

     -    The Respondent has no rights or legitimate interests in the disputed domain name.
          The domain name is connected to a web site that portrays the Complainant in a
          false and disparaging light. The Respondent's use of the disputed domain name
          violates the Complainants' rights of privacy and publicity and constitutes unfair
          competition.

     -    The Respondent registered and has used the disputed domain name in bad faith.
          The Respondent is intentionally attempting to attract, for commercial gain,

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     Internet users to an online location by creating a likelihood of confusion with the
     "Gene Edwards" mark as to source, sponsorship, affiliation, or endorsement. The
     Respondent's use of the name dilutes the value of the Complainant's mark. The
     Complainant's fame and repute in the world make it inconceivable that the
     Respondent's use of the disputed domain name would not constitute infringement.

-    The Respondent's refusal to transfer the disputed domain name after being
     requested to do so by the Complainant shows that the Respondent's purpose in
     using the name is to disrupt the Complainant's business.

B.   Respondent

-    Although the name, "Gene Edwards", has acquired considerable fame and
     notoriety, the Complainant does not have trademark or service mark rights in that
     name. The Complainant has provided no evidence showing that name to be used
     in a commercial way to sell a product or service.

-    The Final Report of the Second WIPO Internet Domain Name Process clearly
     indicates that persons who have gained eminence and respect, but have not
     profited from their reputation in commerce, may not avail themselves of the
     Policy for protection.

-    The Christian Church Movement for which the Complainant claims to minister is
     not an institution seeking financial gain. The website at <geneedwards.com>,
     actually owned by Destiny Ministries, does not sell any products or services, and
     the company, Christian Books Publishing House, Inc., which sells the
     Complainant's books, is a non-profit corporation. The Complainant does not use
     the name, "Gene Edwards", as a mark to sell books.

-    The application for a United States trademark registration by a group affiliated
     with the Complainant for the mark, "Gene Edwards' Ministry", demonstrates that
     the Complainant did not really believe that he had common law trademark rights
     in the personal name, "Gene Edwards".

-    The Respondent acknowledges the similarity between the disputed domain name
     and the Complainant's personal name. The Respondent has used this similarity to
     facilitate dissemination of his opinions about the Complainant and his ministry, a
     legitimate interest.

-    The Respondent has not used the disputed domain name for commercial gain.
     Respondent's web site contains no solicitation for funds, nor has the Respondent
     ever received any monetary contributions from anyone because of that web site.

-    The Respondent did not register or use the disputed domain name in bad faith.
     The Respondent has never offered to sell the disputed domain name to the
     Complainant or anybody else. The Respondent did not register the name to
     prevent the Complainant from registering it, and is not a competitor of the
     Complainant.

-    The Complaint was brought in bad faith and, combined with the Complainant's
     threats of legal action, is an attempt to cast a chilling effect upon free speech use
     of the web site at the disputed domain name. After the Complainant's initial letter
     to the Respondent, the Complainant has refused to communicate with the
     Respondent despite the Respondent's requests to do so, an indication of bad faith.

                                      page 3
           The original owner of the disputed domain name transferred it to the Respondent
           because of intimidating threats by the Complainant.


6.   Discussion and Findings

     In accordance with paragraph 15(a) of the Rules, the Panel is instructed to "decide a
     complaint on the basis of the statements and documents submitted and in accordance
     with the Policy, these Rules and any rules and principles of law that it deems
     applicable."

     Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail
     in this proceeding and be awarded the disputed domain name if the Complainant can
     prove the following:

     -     the disputed domain name is identical or confusingly similar to a trademark or
           service mark in which the Complainant has rights; and

     -     the Respondent has no rights or legitimate interests in respect of the disputed
           domain name; and

     -     the disputed domain name was registered and is being used in bad faith

     A.    Identical or Confusingly Similar

     Complainant has neither contended nor offered evidence in this proceeding that he
     owns a registered trademark or service mark for the name "Gene Edwards". However,
     it has been established in prior proceedings under the Policy that a complainant's rights
     in a name may be protected if it establishes it has common law trademark or service
     mark rights in the name. See for example United Artists Theatre Circuit, Inc. v.
     Domains for Sale Inc., WIPO Case No. D2002-0005 (March 27, 2002) and Cedar
     Trade Associates, Inc. v. Gregg Ricks, NAF Case No. FA93633 (February 25, 2000).

     In this Case, the Complainant emphasizes the degree of fame and notoriety attached to
     the Complainant's name, and the Panel notes that there have been various cases brought
     under the Policy by famous singers and actors among others claiming common law
     rights in their names. In many of those cases the complainants have prevailed. See
     Helen Folsade Adu known as Sade v. Quantum Computer Services Inc., WIPO Case
     No. D2000-0794 (September 26, 2000); Mick Jagger v. Denny Hammerton, NAF Case
     No. FA95261 (September 11, 2000); and Julia Fiona Roberts v. Russell Boyd, WIPO
     Case No. D2000-0210 (May 29, 2000).

     A prior case with a fact pattern comparable to the instant Case is The Reverend Dr.
     Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO
     Case No. D2002-0184 (June 3, 2002). The principal complainant in that case,
     Dr. Jerry Falwell, is a United States Christian minister whose notoriety matches and
     perhaps even exceeds that of the Complainant. There the panel determined that the
     complainant had not shown that his ministry and use of his name were intended to
     generate revenues based on the supply of good and services. (The Panel believes that
     issues related to the Falwell domain names have been the subject of later litigations on
     a basis other than the UDRP.)

     However, in Falwell, supra, there was no contention listed that the complainant had
     authored books, while in the present case the Complainant has shown that he is credited

                                           page 4
with tens of religious books. It is well-settled under the Policy that writing and selling
books may confer common law trademark rights on the author’s name (see Jeanette
Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, (May 22, 2000) where the
disputed domain name was <jeanettewinterson.com>; and Margaret Drabble v. Old
Barn Studios Limited, WIPO Case No. D2001-0209, March 26, 2001, where the
disputed domain name was <margaretdrabble.com>).

The Panel notes that in both these cases (Jeanette Winterson and Margaret Drabble)
the authors endeavored to show they were selling their books on a commercial basis.
For authorship alone does not necessarily confer trademark or service mark status on
the author's name, especially, as in this case, where it is far from clear whether the
books are published on a commercial basis.

For reasons the Panel cannot fathom, the Complainant has made little effort to convince
the Panel that it has common law trademark rights in the disputed domain name,
<geneedwards.org>. The Complainant’s entire argument on this issue is as follows:

Quote:

      Gene Edwards has an international Christian ministry. He has appeared on
      television and is an author. By all interests Mr. Edwards has earned
      considerable notoriety and benefit, the attributions of which are recognized
      through his identity and name. Gene Edwards owns the Domain Name
      “Geneedwards.com,” the home page for which is annexed as Exhibit A.
      Gene Edwards is the author of approximately thirty Christian books. See,
      geneedwards.com/books.html, annexed as Exhibit B.

      Through long, extensive, and continuous use, and through extensive work
      and travel in his ministry, the Gene Edwards Mark has achieved fame, has
      become synonymous in the minds of the public with the Christian House
      Church movement, and serves as a symbol of the goodwill and excellent
      reputation associated with the Christian House Church Movement. The
      Gene Edwards Mark is famous and entitled to the widest scope of
      protection afforded by law, including protection against dilution.
      Moreover, Mr. Edwards has a common law right to publicity in his name.

      Gene Edwards secured and utilized the domain name “Geneedwards.com”
      on a date substantially prior to the date on which the Respondent registered
      the domain name “Geneedwards.org.”

Unquote

At Annex A, the home page for the domain name <geneedwards.com>, the
Complainant has exhibited a picture of Mr. Gene Edwards and his schedule. At Annex
B, the Complainant has exhibited books written by Mr. Edwards. There is the notation:
“All of the following books can be ordered from SeedSowers Publishing House.”
However, as the Respondent points out, there are no prices for the books. Ordinarily,
the Panel would be quite willing to assume that the Complainant writes and sells his
books to make money from them. But the Panel does not believe this is necessarily a
fair assumption to make in the context of an evangelical Christian minister.

The lack of proof of the commercial intent is even more detrimental to the
Complainant’s contentions regarding his public appearances in various media. Again,


                                       page 5
in the religious context of the Complainant’s activities, the Panel is not prepared to
assume that these are commercial as well as religious undertakings.

In a recent similar case, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa,
WIPO Case No. D2003-0248 (May 22, 2003), the Panel found that, though it was a
close call, the Complainant had succeeded in establishing that he had trademark rights
in his name, Sri Chinmoy. This case was brought by an Indian guru who was well
known for his philosophical if not religious teaching and writings. There the Panel
stated:

      “There is evidence of published works being sold online at <amazon.com>
      under or by reference to the name ‘Sri Chinmoy’, and some of those works
      appear to have been on the market since the 1980’s. There is also some
      (more limited) evidence of the name ‘Sri Chinmoy’ being used as an
      identifier of a broadcasting service (a radio station), and also to identify a
      meditation center run by the Complainant (although there is nothing to tell
      the Panel whether or not the meditation center is operated as a commercial
      enterprise). It is not strong evidence but on balance the Panel finds that
      there has been sufficient use of the SRI CHINMOY mark in association
      with goods or services of the Complainant, for him to have acquired
      common law rights in the mark.”

The Panel wishes to reiterate that it sees nothing wrong with the Complainant as a
minister establishing common law trademark rights in his name by using it in
commerce like the authors and entertainers cited above. However, the Panel finds the
Complainant has not shown that he has used his name in commerce so as to acquire
common law trademark rights.

Accordingly, the Panel finds that the Complainant has failed to carry his burden of
demonstrating that the disputed domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights (the Policy,
paragraph 4(a)(i) .

Since the Complainant must prevail on each of the three criteria listed in paragraph 4(a)
of the Policy to obtain transfer of the disputed domain name in this proceeding, the
Panel need not consider whether the Complainant has proved the Respondent's lack of
rights or legitimate interests in the disputed domain name, or his bad faith registration
and use.

Reverse Domain Name Hijacking

The Respondent has requested that the Panel consider whether the Complainant's
actions in this case have been brought in bad faith and thus constitute reverse domain
name hijacking under the Policy. As noted above, there have been many cases decided
under the Policy where famous people, particularly authors, have proved they had
common law trademark rights and have ultimately obtained the transfer of disputed
domain names. In light of those prior rulings, and taking into account the alleged use
of the domain name, the Panel does not find that the Complainant's contentions are so
unreasonable as to warrant a finding of reverse domain name hijacking.




                                       page 6
7.   Decision

     The Panel has found that the Complainant failed to demonstrate that the disputed
     domain name, <geneedwards.org>, is identical or confusingly similar to a trademark or
     service mark in which the Complainant has rights per paragraph 4(a)(i) of the Policy.

     Therefore, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the
     Panel denies the complaint.




                           ______________________________
                                   Dennis A. Foster
                                     Sole Panelist

                                   Dated: July 14, 2003




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