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Scripture Union International Council v. scriptureunion [2004] GENDND 1508 (1 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scripture Union International Council v. scriptureunion

Case No. D2004-0577

1. The Parties

The Complainant is Scripture Union International Council, Milton Keynes, Bucks, United Kingdom of Great Britain and Northern Ireland, represented by Whitaker, Chalk, Swindle & Sawyer, LLP, United States of America.

The Respondent is scriptureunion, Web Master, General Delivery, George Town, Grand Cayman GT, Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name <scriptureunion.com> (the “Disputed Domain Name”) is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004. On August 3, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the Disputed Domain Name. On August 31, 2004, Address Creation 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 requested the Complainant to amend the Complaint to add “scriptureunion” to the Respondent details and the Complainant filed such amendment to the Complaint on September 17, 2004. The Center verified that the Complaint, together with the amendment to 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 the proceedings commenced on September 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2004.

The Center appointed Michael D. Cover as the sole panelist in this matter on October 18, 2004. 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.

4. Factual Background

The Respondent has not disputed the following facts submitted by the Complainant:

The Complainant is an international Christian organization based in the United Kingdom, which has been in existence since 1867. The service mark SCRIPTURE UNION has been used by the Complainant since 1879, and the Complainant holds long-standing common law rights to that service mark.

The Complainant’s services under the service mark SCRIPTURE UNION are provided through its local chapters in 130 countries throughout the world and such service mark is recognized worldwide.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain name is identical (save for the addition of the gTLD “.com”) to the Complainant’s service mark SCRIPTURE UNION in respect of the same or similar classes of goods or services in many jurisdictions throughout the world. The Complainant also contends that the Complainant has never granted to the Respondent any licence or permission in respect of the use by the Respondent of the Disputed Domain Name.

The Complainant goes on to state that the Respondent’s use of the Disputed Domain Name diverts users and users that would access the Complainant’s website via search engines to the Respondent’s Disputed Domain Name, which points to a website which is a mere collection of links to other websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the policy requires that the Respondent, as registrant of the Disputed Domain Name, submits to a mandatory administrative proceeding in the event that the Complainant establishes:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant puts forward no evidence of registered trademarks, so has to rely on common law rights. The Panel accepts that the Complainant was established in 1867, and that the service mark SCRIPTURE UNION has been used since 1879, and that services are provided in 130 countries around the world. No supporting evidence showing use or turnover figures or collateral material, such as media articles, has been included in the Complaint. Notwithstanding this, the Panel finds, on balance, that the Complainant does have common law rights in the name SCRIPTURE UNION.

Save for the minor and inconsequential differences of the absence of a space between the word “Scripture” and “Union” and the addition of the suffix “.com”, the Disputed Domain Name is identical to the Complainant’s trade mark SCRIPTURE UNION and, accordingly, the Complainant has established that which it needs to establish under paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has not granted a licence to the Respondent in respect of the Disputed Domain Name. The Respondent has not responded to the Complaint. This would be enough for the Panel to find that the Respondent had no rights or legitimate interest in the Disputed Domain Name. As such, an analysis of paragraph 4(c) is not strictly necessary. However, all the evidence available to the Panel points in the same direction. Any use of the Disputed Domain Name appears to be non- bona fide (see the part of the decision relating to Registered and Used in Bad Faith below); in addition, the use that is taking and has taken place appears to be deliberately and misleadingly to divert consumers to other websites.

Regarding Paragraph 4(c)(ii), there is no evidence that the Respondents have been commonly known by the disputed domain name. Accordingly, the Panel cannot conclude that the Respondents’ have rights or legitimate interests in the domain name simply because the Respondent has chosen to call itself scriptureunion. There is no evidence that the Respondent has a business or that it has become commonly known by that name. See Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512.

Therefore, the Complainant has met the criteria set out in paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii), which is the last of the set of three criteria that must be met for the Complainant to succeed, requires the Disputed Domain Name to have been registered and is being used in bad faith. Paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of registration and use of a domain name in bad faith.

The Complainant has adduced considerable evidence that the Respondent is a serial cybersquatter, citing a number of decisions which have resulted in the transfer of domain names to complainants. These other decisions would not necessarily be conclusive but, in this case, the evidence is overwhelming and has not been responded to by the Respondent. Taking of a name in which the Complainant has trade mark rights and which could have been discovered by a simple Internet search is of itself evidence of bad faith; the fact that the Disputed Domain Name points at a website that is a collection of links to other “Christian” websites is evidence that the circumstances of this Complaint fit within paragraph 4(b)(iv) relating to the attraction, for commercial gain, of users to this website by creating a likelihood of confusion with the Complainant’s trade mark.

The Complaint therefore meets the requirements of paragraph 4(a)(iii) and, hence, the requirements of Paragraph 4(a) as a whole.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <scriptureunion.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist

Dated: November 1, 2004