[Indexed as: Christus Rex v. Karr]
[Indexed as: christusrex.com]
eResolution
Administrative Panel Decision
Case No.: AF-0188
Commenced: 18 April 2000
Judgement: 30 June 2000
Panelist: Ariane Siegel
Domain name Domain name dispute resolution Confusingly similar - Lack of trademark ownership No legitimate interests or rights No evidence of bad faith registration Unique use Entitlement Burden shift.
Complainant operates a web site at the domain name christrusrx.org,
and claims to have a trademark on Christusrex but has not submitted any
evidence to show this. The domain in question is christusrex.com,
an inactive site registered by Respondent. Respondent did not respond to
the complaint and did not present any evidence.
Held, Name Not Transferred to Complainant
Although the domain name is confusingly similar to Complainants
domain, the complainant has not shown any proof of registered trademarks
or service marks. Complainant has failed to present strong arguments to
this effect or any evidence regarding its unique use or entitlement to
the words Christusrex.
Complainant feels that because the Christusrex name is so unique
that Respondent could not have had any legitimate rights or interests.
The burden then shifts to the Respondent to refute Complainants allegations,
but because Respondent failed to provide any evidence regarding the use
of the domain name, there is an inference that Respondent has no legitimate
rights or interests.
Complainant did not provide any evidence that the domain name in
question was confusing Internet users who were trying to reach Complainants
web site. As a result, there was no registration or use of the website
in bad faith.
There were other matters that arose in the case. Complainant
has the burden of proving the case so any evidence submitted by the provider
is inadmissible because it has the potential to jeopardize their neutrality
and the fairness of the dispute resolution. As a result, the contents
of the webpage printed out by the provider were inadmissible.
The Panel also had to decide if the web page was active or inactive.
As long as a party other than the registrar or ISP places any content on
a webpage, that page becomes active. The website in question could be considered
to be an active page.
Finally, a question of notice arose in the case. It is the
provider who is responsible to take reasonable means to notify Respondent
of the complaint against them. The Panel feels that based on the information
posted on the web site redirecting users to another web site, Respondent
did indeed receive proper and actual notification.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Siegal, Panelist: -
1. Parties and Contested Domain Name
The Complainant is Christus Rex, Inc. ("Complainant"), a non-profit
religious corporation registered in the State of California under No. 2079644.
The Respondent is Kurtis K. Karr ("Respondent"), an individual with a postal
address in La Feria, Texas. The Domain Name at issue is Christusrex.com
("Domain Name"), which is registered with Network Solutions, Inc., based
in the United States of America. The Complainant seeks a transfer of the
Domain Name.
2. Procedural History
The electronic version of the Complaint form was filed on-line through
eResolution's (the "provider") web site on April 18, 2000. The hardcopy
of the Complaint Form was received on April 25, 2000. Payment was received
on April 20, 2000.
Upon receiving all the required information, the provider's Clerk proceeded
to:
1. Confirm the identity of the Registrar for the contested Domain Name;
2. Verify the Registrar's Whois Database and confirm all the required
contact information for Respondent;
3. Verify if the contested Domain Name resolved to an active web page;
4. Verify if the Complaint was administratively compliant.
The provider's Clerk confirmed the Registrar to be Network Solutions
Inc., the required contact information for all parties, and that the Registrar
is Network Solutions Inc. The Clerk also confirmed that the contested Domain
Name resolves to an inactive web page and the Complainant is administratively
compliant. The Clerk then proceeded to send a copy of the Complaint Form
and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's
Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN RULES").
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection
with forwarding the Complaint to the Respondent on April 27, 2000. That
date is the commencement date of the administrative proceeding. On April
27, 2000, the Clerk's office notified the Complainant, the Respondent,
the concerned Registrar, and ICANN of the date of commencement of the administrative
proceeding. On May 19, 2000, the Clerk's Office contacted a first Panellist
and requested that he act as Panellist in this case. On May 25, 2000, the
Clerk's Office contacted Ariane Siegel, and requested that she act as Panellist
in this case. On May 30, 2000, Ariane Siegel accepted the request to act
as Panellist in this case and filed the necessary Declaration of Independence
and Impartiality. On May 30, 2000, the Clerk's Office still had received
no Response form from the Respondent. On May 30, 2000, the parties were
notified that Ariane Siegel had been appointed and that a decision was
to be, save exceptional circumstances, handed down on June 18, 2000.
3. Factual Background
The Complainant is a non-profit religious corporation registered in
the State of California under number 2079644. The Complainant states that
on March 24, 1993, it acquired the Domain Name Christusrex.org and since
December 8, 1994 has published that web site. The Complainant publishes
religious art images and prayers on its web site. The Complainant indicates
that in June of 1999, a web site www.christusrex.com was selling religious
art reproductions. Although the Complainant states that it has owned the
trademark Christusrex since 1993, no evidence of trademark ownership was
put forward. The Respondent is the Domain Name Holder of the Domain Name
in question. The Domain Name resolves to an inactive web page.
The Respondent has not responded to the complaint and has presented
no evidence to this dispute resolution process.
4. Parties' Contentions
The Complainant argues that the Respondent has utilized the Domain
Name in order to target and confuse visitors to the Christusrex.org web
site who were mistakenly drawn to the .com web site. The Complainant suggests
that the Respondent is attempting to leverage the established position
that Christusrex.org has on the Internet. The Complainant suggests that
the Respondent has acted in bad faith given the established position of
the Complainant and its Christusrex.org web site and the Domain Name was
being used to confuse and target visitors of the Christusrex.org web site.
The Complainant states that it is in the process of securing private
financing for its future expansion plans. The Complainant further states
that it needs to secure ownership of the Domain Name in order to obtain
private financing.
As indicated above, the Respondent has not contested the allegation
of the Complainant and has submitted no evidence.
5. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy ("ICANN POLICY")
sets out the terms and condition between a domain name registrant and a
third party in connection with a dispute over registration and use of an
Internet domain name.
Paragraph 4a. of the ICANN POLICY places the burden on a Complainant
to prove all of the following three factual elements: (i) the Respondent's
Domain Name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights, and (ii) the Respondent has no
rights or legitimate interests in respect of the Domain Name, and (iii)
the Respondent has Registered and used the Domain Name in bad faith.
The Respondent has not participated in these proceedings and has offered
no defence to the allegations by the Complainant. Paragraph 14 of the ICANN
RULES allow a Panel to draw such inference as it considers appropriate
from a Party's failure to comply with any provision of, or requirement
under the Rules.
(i) Similarity between Domain Name and Trademark or Service Mark
The Domain Name Christusrex.com is confusingly similar to the Domain
Name Christusrex.org. The Complainant has shown registration and use of
the words Christusrex in association with a web site. The Complainant has
stated that it acquired the Domain Name Christusrex.org on March 24, 1993
and has published that web site since December 8, 1994. The Complainant
has stated that Christusrex has been the trademark of Christus Rex, Inc.
since 1993, but has not provided any evidence of trademark ownership. Although
the existence of the Christusrex.org Domain Name suggests there has been
use of the words Christusrex by the Complainant, there is little evidence
to consider the extent of rights to use those words by the Complainant.
Whether the Uniform Dispute Resolution Process is restricted strictly to
the owners of a trademark or service mark is unsettled. The words of Paragraph
4a. of the ICANN POLICY suggest that only holders of a trademark or service
mark can assert their rights to a Domain Name as complainants. However,
the words of Paragraph 4c. of the ICANN POLICY, which allow a Respondent
to demonstrate rights or legitimate interests to a domain name by showing
that they have been commonly known by a domain name, even if they have
acquired no trademark or service mark rights. In effect, Paragraph 4c.
of the ICANN POLICY allows a non-trademark or service mark holder to trump
the rights of a trademark or service mark holder to a particular domain
name. While an argument can be led that parties establishing prior or first
use of a name should be entitled to the benefit of the ICANN process, this
has not been conclusively determined and the Complainant has failed to
present strong arguments to this effect or any evidence regarding its unique
use or entitlement to the words Christusrex. It is beyond the scope of
this Panels' authority to deal with these issues on its own.
(ii) Respondent's Rights or Legitimate Interests in Domain Name
Paragraph 4c. of the ICANN POLICY provides that a Registrant may demonstrate
its rights or legitimate interests to the Domain Name by proving any of
the following:
1. before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
2. you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
3. you are making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue.
Based on the wording of Paragraph 4a. of the ICANN POLICY, the Complainant,
has the burden of proving that the Respondent has no rights or legitimate
interests to the Domain Name. However, the wording of Paragraph 4c. brings
confusion to the manner in which a Complainant can prove this particular
factual element. The Paragraph suggests that a Registrant may demonstrate
its rights or legitimate interests to the Domain Name by raising a number
of defences. This provision appears to shift the analysis away from the
facts that a Complainant must prove to succeed in a claim and towards the
ways a Respondent can defend itself. This apparent shifting of the burden
should be addressed.
In a case where a Respondent has failed to lead any evidence or participate
in a dispute, the Panel must infer that the Respondent has no rights or
legitimate interest in respect of the Domain Name. To find otherwise would
allow a Respondent to defeat a claim and circumvent the process simply
by refusing to participate in the proceedings thereby providing a Panel
with no basis upon which to conclude that a Respondent has no legitimate
rights or Interest in the Domain Name.
The Complainant in this case states that the Domain Name was acquired
by the Respondent on August 26, 1998 and was used to sell religious art
reproductions. The Complainant suggests, that given the unique nature of
the Christusrex name on the Internet, the Respondent has no rights or legitimate
interests with respect to the contested Domain Name.
There is, at this time, no evidence pertaining to the actual use of
the Domain Name.
Since the Respondent has not contested the allegation of the Complainant,
the Panel must infer that the Respondent has no rights or legitimate interests
with respect to the Domain Name.
(iii) Bad Faith Registration and Use of Domain Name
Paragraph 4b. of the ICANN POLICY states that for the purposes of paragraph
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the Panel to be present, shall be evidence of the registration
and use of a domain name in bad faith:
1. circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
2. you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct;
or
3. you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
4. by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to
the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.
The Complainant suggests that in June of 1999 it was informed of the
existence of a web site under the contested Domain Name that was offering
religious art reproduction for sale and apparently confusing individuals
attempting to visit the complainant's web site. However, no evidence has
been offered to this effect. The Complainant has failed to prove any registration
or use of the Domain Name in bad faith.
6. Conclusions
This Panel's ability to make an order in favour of a Complainant is
limited by the words of Paragraph 4a.of the ICANN POLICY which requires
that a Complainant prove three specific factual elements. The restrictive
nature of the Uniform Dispute Resolution Process and the heavy burden imposed
on complainants encourages parties to attempt to reach a settlement of
their own in a dispute. The Complainant in this case has led limited evidence
with respect to its own rights to the words Christusrex. Furthermore, the
Complainant has failed to demonstrate any bad faith registration and use
of the Domain Name by the Respondent. On this basis, the Complainant's
request for a transfer must be denied.
7. Additional Matters
On June 16, the provider's Clerk received the decision in this case.
At that time, the Clerk realized an error may have occurred pertaining
to information sent to the Panel regarding the status of the web page on
April 27, 2000.
Although the Clerk had told the Panel that on April 27th, 2000, the
Domain Name resolved to an inactive web page, it was concerned that this
information could be incorrect. Since the status of the web page, and its
contents on April 27, 2000 could have a bearing both on the Panel's substantive
analysis of issues in this case and on whether the provider had properly
complied with procedural requirements pertaining to notice set out in Clause
2(a)(ii) of the ICANN RULES, the provider sought the Panel's assistance
in determining the following issues:
1. Can the provider introduce copies of the contents of the April 27,
2000 web page to the Panel to be used as evidence in this case?
2. Was the web page on April 27, 2000 an active or inactive web page?
3. If the web page was active, did the provider comply with notice
requirement specified in the ICAN RULES.
A discussion of these issues is outlined below:
(i) Provider's Ability to Introduce Evidence in a Case
Pursuant to paragraph 2(a)(ii) of the ICANN RULES, a provider has the
obligation to consult the web page of the domain name in a dispute to identify
all the email addresses to which the official notification of commencement
of administrative proceedings must be sent. As a matter of course, the
provider prints a copy of the web page upon receipt of any complaint form.
This information is kept in the provider's file and not distributed to
the Panels. Paragraph 4(a) of the ICANN policy clearly indicates that in
any administrative proceeding, it is the complainant that bears the burden
of proving its case. It is the ICANN RULES, which outline the procedural
steps to be taken both by a complainant and a respondent in any dispute.
Specifically, paragraph 3(b) of the ICANN RULES indicates that a complainant
is entitled to annex any documentary or other evidence in a dispute. Paragraph
5(b) of the ICANN RULES states that a respondent can annex any documentary
or other evidence upon which it relies in a dispute. Neither the ICANN
RULES, the ICANN POLICY nor the provider's Supplemental Rules expressly
state that a provider is entitled to submit evidence in a case which can
be considered by a Panel in evaluating a dispute. To allow a provider to
introduce evidence in a dispute, could call into question the neutrality
of the provider and jeopardise the fairness associated with a dispute resolution
process in which the burden of proof has clearly been identified to rest
with the complainant. Based on this conclusion, the Panel rules that the
actual contents of the web page printed by the provider on April 27, 2000
are inadmissible. The contents of the April 27, 2000 web page, brought
to the Panel's attention by the provider after the completion of its decision
on June 16, 2000 have no impact on the outcome of this case.
(ii) Active or Inactive Web Page
The web site on April 27, 2000 included content posted by a party other
than the registrar or an ISP. An active web page is referred to in the
ICANN RULES as "other than a generic page the provider concludes is maintained
by a registrar or ISP for parking domain names registered by multiple domain
name holders". The word active is defined in the sixth edition of Black's
Law Dictionary as "that is an action; that demands action; actually subsisting;
the opposite of passive". The Panel takes the position that once the party
other than the registrar or ISP places any content on a web page (either
words, symbols, information or even a link) that web page becomes active.
(iii) Notice
The ICANN RULES indicate that it is the provider's responsibility to
employ reasonably available means calculated to achieve actual notice to
the respondent. The ICANN RULES enumerate a number of measures a provider
can take to discharge that obligation. The ICANN RULES indicate that the
provider should have sent an email to all email addresses shown or email
links on that web page. This was not done. However, the objective of this
requirement is to provide the parties with "actual" notice.
On June 16, 2000, the www.christusrex.com web site was not the same
as on April 27, 2000 and was showing this message: "This page has moved
to a new location. If you are not automatically redirected in a few seconds,
please click here." There was also a link on the web page: "more information
about the move." This link took browsers to www.catholex.com/moving.htm
where the following message was posted: "The reason for the move:
The administrator of the site at http://www.christusrex.org, Michael
Olteanu, submitted a complaint to provider claiming rights to the domain
name, "christusrex.com", on the basis that he registered the domain, "christusrex.org"
first. We consider his complaint to be completely without merit, considering
the extensive historical usage of the phrase "Christus Rex" in Christianity.
"Christus Rex" is Latin for "Christ, [the] King" and has been used in reference
to Jesus Christ for nearly 2000 years. Therefore, "Christus Rex" would
clearly be classified as a descriptive term and any Christianity-related
site would have an equal right to use the domain name, "christusrex.com".
Despite the superior strength of our argument, we feel that engaging
in such a petty conflict over a Christian domain name would be bordering
on religious hypocrisy. We have therefore made the conscientious decision
not to take part in any public disputes of this nature. We have come to
an agreement with the complainant to donate the domain name to his organization
in exchange for a tax-deductible receipt.
Depending on the amount of time it takes for Network Solutions to transfer
this domain name, it will eventually point to the same web site as http://www.christusrex.org/.
Incidentally, we believe that http://www.christusrex.org/ is a very
fine web site. If you are interested in Christian art, you should definitely
give it a visit."
Based on the information posted on the Christusrex.com web page, verified
by the Panel to be accurate, the Panel is of the view the respondent has
received actual and proper notice of the dispute in accordance with the
ICANN RULES.
Domain Name Not Transferred