DECISION

Charles P. Stetson, Jr. v. Mancil Group

Claim Number:  FA0409000333046

PARTIES

Complainant is Charles P. Stetson, Jr. (“Complainant”), represented by Marco Ciavolino, 1603 Belvue Drive, Forest Hill, MD 21050-2508.  Respondent is Mancil Group (“Respondent”), 2000 E Lamar Blvd Ste. 600, Arlington, TX 76006-7340.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <teachaboutthebible.org>, registered with Network Solutions LLC.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 22, 2004; the Forum received a hard copy of the Complaint on September 29, 2004.

On September 24, 2004, Network Solutions LLC confirmed by e-mail to the Forum that the domain name <teachaboutthebible.org> is registered with Network Solutions LLC and that Respondent is the current registrant of the name. Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC 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 October 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 2004 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@teachaboutthebible.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 November 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <teachaboutthebible.org> domain name is confusingly similar to Complainant’s BIBLECURRICULUM.ORG mark.

2. Respondent does not have any rights or legitimate interests in the <teachaboutthebible.org> domain name.

3. Respondent registered and used the <teachaboutthebible.org> domain name in bad faith.

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

FINDINGS

Complainant, Charles P. Stetson, Jr. asserts rights in the <teachaboutthebible.org> domain name.  On March 1, 2001, Complainant’s predecessor of rights in the disputed domain name, the National Bible Association, transferred the rights and interests of the <teachaboutthebible.org> domain name to Complainant.  The Complaint states that the disputed domain name was registered on behalf of the National Bible Association by Respondents Brewster Mance and David Saul.  Complainant has attempted to contact Respondent in an effort to transfer the disputed domain name in addition to two other disputed domain names in exchange for $1,000.00.  Complainant did not receive a Response.  Complainant has conceded it has not filed a trademark for the mark in which it asserts rights. 

Complainant currently operates the <biblecurriculum.org> domain name to host a website offering religious educational information. 

Respondent, Mancil Group, registered the <teachaboutthebible.org> domain name on October 1, 1999.  Respondent is using the domain name to provide religious educational materials. 

The website at Complainant’s <biblecurriculum.org> domain name and Respondent’s <teachaboutthebible.org> domain name are similar to one another, as both websites offer religious educational information and both display a banner entitled “teach about the bible” with a square icon and phrase “Bible & Public Schools” displayed on the website. 

           

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 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 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 not established rights in the BIBLECURRICULUM.ORG mark or any other related marks to bring a claim under the Policy.  Alternatively, Complainant asserts rights in the <teachaboutthebible.org> domain name, transferred and vested by the National Bible Association resolution on March 1, 2001.   However, Complainant has conceded that it has not filed for a trademark and has produced no evidence of any other trademark rights.  The Panel finds Complainant has not demonstrated rights in a mark for purposes of Policy ¶ 4(a)(i).  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name). 

To bring a claim under Policy ¶ 4(a)(i), Complainant must establish rights in the BIBLECURRICULUM.ORG mark by establishing secondary meaning under the common law or through registration with the United States Patent and Trademark Office.  Complainant has failed to present a prima facie case pursuant to Policy ¶ 4(a)(i).  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); 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).

The Panel finds that Complainant has not established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response and the Panel may accept any reasonable allegations made by Complainant as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Although Respondent has not submitted a Response, the Panel must still analyze whether Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the <teachaboutthebible.org> domain name.  The Panel finds that Complainant’s claims that it has been unable to contact Respondent are insufficient for a prima facie case alleging Respondent lacks rights or legitimate interests in the disputed domain name.  See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not automatically lead to a ruling for Complainant).

The Panel finds that Complainant has failed to establish Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that its inability to contact Respondent, Respondent’s unwillingness to respond or comply with the National Bible Association’s decision, Respondent’s registration of the disputed domain name in his own personal name and the National Bible Association’s conflicting board resolution with Respondent’s registration evidences bad faith registration.  Essentially, Complainant asserts that Respondent was not authorized to register the <teachaboutthebible.org> domain name in his own personal name now that the National Bible Association has transferred the domain name to Complainant.  Complainant’s argument is outside the scope of the Policy, and is insufficient to show bad faith registration.  See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).

The Policy only authorizes the Panel to transfer a domain name upon evidence of abuse of the registration process.  According to the Complaint, Respondent initially registered the disputed domain name on behalf of The National Bible Association.   Complainant has failed to demonstrate that at the time of registration, Respondent registered the <teachaboutthebible.org> domain name in bad faith.  See Creative Paradox LLC v. Talk America, FA 155175 (Nat. Arb. Forum June 23, 2003) (finding no bad faith registration of the domain name where the Panel found evidence that Respondent was authorized to register the disputed domain name by Complainant); see also Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where Respondent registered the domain name in good faith, without objection by Complainant, and in the interest of promoting Complainant’s business); see also The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that Respondent did not register the disputed domain name in bad faith where it "registered the Domain Name with the full consent and knowledge of Complainant" and therefore "did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy").

The Panel finds Complainant has failed to establish Policy ¶ 4(a)(iii).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist

Dated:  November 22, 2004

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