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New Life Church and Literary Foundation v. Private Business a/k/a Virgil Howard [2001] GENDND 119 (19 January 2001)


National Arbitration Forum

DECISION

New Life Church and Literary Foundation v. Private Business a/k/a Virgil Howard

Claim Number: FA0012000096280

PARTIES

The Complainant is New Life Church and Literary Foundation, Pine, AZ, USA ("Complainant"). The Respondent is Private Business a/k/a Virgil Howard, Seattle, WA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are vernonhoward.com, vernonhoward.net, vernonhoward.org, registered with Network Solutions.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 14, 2000; the Forum received a hard copy of the Complaint on December 18, 2000.

On December 15, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names vernonhoward.com, vernonhoward.net, vernonhoward.org are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that the Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@vernonhoward.com, vernonhoward.net and vernonhoward.org, by e-mail.

On January 11, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that:
    1. The domain names in this Complaint are identical to the trademark and

      2. service marks VERNON HOWARD held by the Complainant.

    2. The Respondent has no rights in the registered trademark VERNONHOWARD since he transferred all such rights to the Complainant as part of a federal court settlement agreement.
    3. The Respondent registered and is using the domain names in bad faith:
      1. by registering the domain names shortly after transferring his interest

in the VERNON HOWARD trademark to the Complainant; (2) continuing to use the domain names after being given formal notice of trademark infringement; (3) using the domain names for the purpose of diverting consumers to a site offering a forthcoming book, thereby creating confusion with the Complainant’s mark; and (4) by using the domain names in an attempt to destroy the goodwill associated with the Complainant’s trademark and service marks.

B. Respondent

As a preface to his Response the Respondent attempts to invoke some type of confidentiality that his Response will not be made public. No such confidentiality exists under the ICANN policy or rules. Furthermore, ICANN decisions are published on the Internet by the dispute resolution service providers. Accordingly, the Panel has considered and will discuss the Respondent’s Response herein. The Respondent contends that:

    1. The Complainant’s registration of the similar domain names of Vernon-Howard.com, Vernon-Howard.net, Vernon-Howard.org. eight (8 ) days after the registration his domain names constitutes bad faith;
    2. That the Respondent has a proprietary interest in the name VERNON HOWARD since Vernon Howard was his father;
    3. The Complainant makes misleading statements considering the federal lawsuit;
    4. The trademark is not valid; and
    5. His website does not create confusion; and, to avoid the possibility of such, he has enabled a direct-link to the Complainant’s website from his site and has posted an explanation and disclaimer.

FINDINGS

1. The Complainant owns the following trademark and service marks:

a. VERNON HOWARD – Trademark

Reg. No. 2,049,681, Registered April 1, 1997 for the VERNON L. HOWARD 1991 TRUST, as applied for by the Respondent, as its Trustee.

Assignment made May 7, 1999 by the Respondent, as Trustee of the Vernon L. Howard 1991 Trust, to the Complainant.

Assignment to the Complainant recorded June 28, 1999.

FOR: INSPIRATIONAL PUBLICATIONS, NAMELY BOOKS, PAMPHLETS AND BROCHURES, IN CLASS 16 (U.S. CLS. 37,38 AND 50).

b. VERNON HOWARD - Service Mark

Reg. No. 2,377,423, Registered August 15, 2000 for the Complainant.

FOR: CONDUCTING SPIRITUAL, INSPIRATIONAL, INNER DEVELOPMENTAL AND INNER LIFE CLASSES AND SEMINARS, IN CLASS 41 (U.S. CLS. 100, 101 AND 107).

c. VERNON HOWARD - Service Mark

Reg. No. 2,379,342, Registered August 22, 2000 for the Complainant.

FOR: PROVIDING AN ON-LINE COMPUTERIZED DATABASE IN THE FIELD OF SPIRITUAL, INSPIRATIONAL, INNER DEVELOPMENTAL AND INNER LIFE ADVICE AND WISDOM, IN CLASS 42 (U.S. CLS. 100 AND 101).
  1. On May 7, 1999, in his capacity as trustee of the Vernon L. Howard 1991 Trust, the Respondent assigned the registered trademark VERNON HOWARD to the Complainant. The assignment reads in part:

    2. "… ASSIGNOR [Respondent] hereby assigns all right, title and interest in and to the trademark "VERNON HOWARD®, the registration thereof, Registration No. 2,049,681 together with the goodwill appurtenant thereto to ASSIGNEE [Complainant]."

  2. Vernon (L.) Howard was a well-known author and lecturer on spiritual psychology. In 1979 he founded New Life Church and Literary Foundation (the Complainant) as a nonprofit organization to make his teachings known through the sale of his writings and recorded lectures. He was also Director of the Foundation from its beginning until his death on August 23, 1992. Several of his books were published by commercial publishers, with royalties going directly to him. However, the vast majority of his books were published by the Complainant and he never took any royalties on these latter works. Since Vernon Howard made no provision for the payment of royalties to his heirs on those works, the Complainant continued to publish them after his death just as during his life.

  3. In December 1996, the Respondent filed a copyright infringement lawsuit against the Complainant in the U.S District Court in Arizona. A settlement of this suit was reached based on the sale of all of the intellectual property of Vernon L. Howard, consisting mainly of his copyrights and the VERNON HOWARD trademark, held either by his heirs, including the Respondent (who is one of his sons), or the Vernon L. Howard 1991 Trust to the Complainant on May 7, 1999. This sale was made part of the Settlement Agreement for dismissal of the suit, also executed on May 7,1999. The suit was dismissed with prejudice on May 18, 1999.
  4. On August 26, 1999, the Respondent registered the disputed domain names.
  5. On January 27, 2000 the Complainant sent a letter to the Respondent stating that the domain names infringed the Complainant’s trademark and requesting that they be transferred into it’s name. The Respondent refused the Complainant’s request for transfer of the domain names in a fax dated February 14, 2000.

7. The Respondent’s websites consist of two (2) pages: a homepage with what appears to be a book cover having the title Vernon Howard Mystic or Maniac? with a link titled "Synopsis" which leads to the second page and the synopsis of the purported forthcoming book. The Complainant considers the Respondent’s websites to be defamatory toward the Respondent’s father — the source of Complainant’s trademark and service marks — and those associated with him at New Life Church and Literary Foundation. The Complainant says that the statements made in the Respondent’s websites about the actions and motivations of Vernon Howard and those associated with him at New Life Church and Literary Foundation are totally false.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules") instructs this Panel to "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."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
    1. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Complainant owns the registered mark VERNON HOWARD. The Respondent’s domain names (vernonhoward.com, vernonhoward.net, vernonhoward.org) are identical to the Complainant’s mark. See Football Assoc. Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name "facup.com" is clearly identical to the FA CUP trademark belonging to Complainant); see also Wembley National Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name wembleystadium.net" is identical to the WEMBLEY STADIUM mark).

The Respondent challenges the validity of the Complainant’s trademark contending that:

    1. the trademark must be used as a brand name of a product, must appear on the

product, and must be followed by a trademark symbol and (2) there are numerous persons by the name of Vernon Howard living in the United States. An ICANN proceeding is not the appropriate forum in which to challenge the validity of the trademark. Furthermore, by selling these marks to the Complainant, the Respondent is estopped from now challenging their validity.

Rights or Legitimate Interests

The Respondent has no rights in the registered mark because he transferred all such rights to the Complainant. The Complainant’s offer to purchase the domain names from the Respondent is not evidence that the Respondent has rights or legitimate interests in the domain name. The fact that the domain names are comprised of the Respondent’s deceased father’s name is not relevant because the Respondent transferred to the Complainant for considerable consideration all of the intellectual property rights or interests in his deceased father’s name.

Registration and Use in Bad Faith

The Respondent has acted in bad faith because he was aware of the Complainant’s mark prior to registering the domain names at issue. See Samsonite Corp. v.Colony Holding, FA 94313 (Nat. Arb. Forum, Apr.17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

In addition, the Respondent has acted in bad faith by using the domain names to intentionally attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. See Drs. Foster & Smith, Inc. v Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000). (finding bad faith where the Respondent attracted Internet users seeking the Complainant’s site to the Respondent’s site for commercial gain by creating a likelihood of confusion with the Complainant’s mark).

Nor does the Respondent’s direct-link to the Complainant’s website and disclaimer evidence a lack of bad faith, in view of the fact that the Respondent’s use diminishes the reputation and goodwill associated with the Complainant’s marks.

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant.

Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain names vernonhoward.com, vernonhoward.net, vernonhoward.org.

Charles K. McCotter, Jr., Panelist

Dated: January 19, 2001

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