DECISION

Gospel for Asia v. Abraham Matthew

Claim Number: FA0211000129529

PARTIES

Complainant is Gospel for Asia, Carrollton, TX (“Complainant”) represented by C. Enrico Schaefer, of Smith & Johnson, Attorneys, P.C. Respondent is Abraham Matthew, Dallas, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <gospelforasia.com> and <gospelforasia.org>, registered with Verisign.

PANEL

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

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 7, 2002; the Forum received a hard copy of the Complaint on November 7, 2002.

On November 12, 2002, Verisign confirmed by e-mail to the Forum that the domain names <gospelforasia.com> and <gospelforasia.org> are registered with Verisign and that Respondent is the current registrant of the names. Verisign has verified that Respondent is bound by the Verisign 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 November 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gospelforasia.com and postmaster@gospelforasia.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <gospelforasia.com> and <gospelforasia.org> domain names are identical to Complainant’s common law GOSPEL FOR ASIA mark.

Respondent does not have any rights or legitimate interests in the <gospelforasia.com> and <gospelforasia.org> domain names.

Respondent registered and used the <gospelforasia.com> and <gospelforasia.org> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Gospel for Asia, is a nonprofit missionary organization which provides services concerning missionary activities in Asia via books, audiotapes, periodicals and other media. Complainant has performed these services since September of 1982. As of January 26, 1999, Complainant has held a trademark registration for the GFA mark (an abbreviation of its “Gospel for Asia” name). Complainant applied for the trademark GOSPEL FOR ASIA with the United States Patent and Trademark Office on September 14, 2001. Complainant also operates a website at <gfa.org>, offering information about its missionary services.

Respondent, Abraham Matthew, registered the <gospelforasia.com> and <gospelforasia.org> domain names on March 22, 2000 and March 28, 2000, respectively. Respondent has made no original use of the domain names since registration.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established sufficient rights in the common law trademark GOSPEL FOR ASIA to file a Complaint. Complainant’s uncontested assertions allege that through 20 years of continuous and widespread use of the mark, it has established rights in this  common law trademark, and the Panel concurs. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place). Complainant’s trademark registration application for the GOSPEL FOR ASIA mark lends further support to conclusion that they have sufficient rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Respondent’s <gospelforasia.com> and <gospelforasia.org> domain names are identical to Complainant’s common law trademark. The only difference between the domain names and the mark are the elimination of the spaces between the words GOSPEL FOR ASIA and the addition of a top-level domain name. Both are products of the nature of domain names, not reflective of choices made by Respondent, and are therefore inconsequential when determining identicality under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).

Accordingly, the Panel finds that the <gospelforasia.com> and <gospelforasia.org> domain names are identical to Complainant’s GOSPEL FOR ASIA mark and Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

By failing to submit a Response to the Complaint, Respondent has implied to the Panel that it has no rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Without a Response to rely upon, the Panel will find for Complainant if Complainant shows that none of the criteria illustrating rights and legitimate interests in a domain name under Policy ¶ 4(c)(i)-(iii) are applicable to Respondent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent has not used the infringing domain names for over two years. Not using a domain name cannot be deemed a bona fide offering of goods or services, nor does it qualify as legitimate noncommercial or fair use of a domain name, which means that Policy ¶ 4(c)(i) and (iii) are both equally inapplicable to Respondent in this dispute. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Respondent’s WHOIS information lists itself as “Abraham Matthews.” Without a Response to rely upon, the Panel concludes that Respondent is not “commonly known by” either <gospelforasia.com> or <gospelforasia.org> under Policy ¶ 4(c)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <gospelforasia.com> and <gospelforasia.org> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <gospelforasia.com> and <gospelforasia.org> domain names are identical to Complainant’s GOSPEL FOR ASIA mark. Respondent’s contact information notes that its address is in Texas, the same state where Complainant is incorporated. Taking these two circumstances together, the Panel infers that Respondent was well aware of Complainant and its rights in the GOSPEL FOR ASIA mark before registering the infringing domain names. In doing so, Respondent registered the disputed domain names in bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Respondent has not made use of the disputed domain names for over two years, a sufficient amount of time for the Panel to find that Respondent is using the domain names in bad faith. As Respondent has come forward with no fact supporting a conclusion that Respondent has a good faith use intended for the disputed domain names, the Panel finds that Respondent’s passive holding violates Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <gospelforasia.com> and <gospelforasia.org> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  January 2, 2003

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