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 Complainant’s 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 Complainant’s 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 Complainant’s 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
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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.