29th Nov 2010
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bible Study Fellowship v. BSF.ORG / Vertical Axis Inc.
Case No. D2010-1338
1. The Parties
Complainant is Bible Study Fellowship of San Antonio, Texas, United States of America, represented by Jackson Walker, LLP, United States of America.
Respondent is BSF.ORG / Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <bsf.org> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 9, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed Domain Name. On August 10, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 25, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 30, 2010 The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced September 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response September 21, 2010. The Response was filed with the Center September 21, 2010.
The Center appointed Luca Barbero, Gordon Arnold and the Hon. Neil Brown QC as Panelists in this matter on October 28, 2010. The Panel finds that it was properly constituted. Each member of 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. It has been necessary to extend the date for the rendering of the decision in this matter (further to the Panel’s power under Rules paragraph 10(c) to the date indicated under paragraph 7 below.
4. Factual Background
Complainant is an American non-profit organization which provides Bible study educational services and is the owner of the United States Federal Trademark Registration No. 1,722,606 for BSF INTERNATIONAL (word and logo), filed on June 24, 1991 and registered on October 6, 1992, in International Class 41.
Complainant operates the web site “www.bsfinternational.org”.
The Domain Name <bsf.org> was created on September 26, 2000.
5. Parties’ Contentions
Complainant states that the Domain Name <bsf.org> is confusingly similar to its registered trademark BSF INTERNATIONAL and contends ownership of common law rights in the marks BSF and BSF INTERNATIONAL relying on the following allegations:
– Complainant has been using the words “Bible Study Fellowship”, as well as the corresponding acronym “BSF”, continuously since 1953 and has been using its BSF INTERNATIONAL logo since 1990 to identify its Bible study materials and educational services, in addition to “BSF” and “Bible Study Fellowship”.
– Complainant’s BSF marks were used to identify Complainant’s Bible study materials and educational services in 29 countries from 2000 to 2001 and in that period “almost a quarter of a million adults and nearly 70,000 children” participated in Bible study classes and used materials identified by the Complainant’s BSF Marks”. Complainant’s BSFmarks are currently used in thirty-eight countries in the world and forty-eight states of the United States. Complainant attaches to the Complaint a copy of a BSF magazine dated May 2001 and lists of BSF classes in the world and in the United States taken from Complainant’s web site “www.bsfinternational.org”.
– Complainant alleges to be the owner of twelve domain names including the mark BSF, all registered after 2001 but for the domain name <bsfinternational.org>, registered on May 15, 1997. Attached to the Complaint are printouts of the web site “www.bsfinternational.org” operated by Complainant, dated back to 2000 and retrieved from the web site “www.archive.org”.
Complainant concludes that in view of the “long-standing and widespread use of the Complainant’s BSF Marks, the Complainant’s BSF Marks are well-known throughout much of the world and particularly in the United States”, without citation to further evidence.
With reference to Complainant’s registered trademark, Complainant contends that its own domain name and BSF INTERNATIONAL mark are “visually similar and create the same overall impression, and hence are confusingly similar” to the disputed domain name, both consisting of the word “BSF” with the addition of the non-distinctive wording “INTERNATIONAL”, which is descriptive and was disclaimed in the registration for BSF INTERNATIONAL (word and logo). Complainant also states that the Domain Name is confusingly similar to its BSF mark since it is used in connection with a “domain parking website offering links to third party products or services, including Bible study materials and Bible study educational services”. Attached to the Complaint are printouts of web pages available at “www.bsf.org”, including pages displaying links to third party bible study material which appear to be selected pages from the web site “www.bsf.org”, but no authentication or explanations on how the pages were created are provided to the Panel.
Complainant also states that the adoption of the top level domain “.org” is apt to increase potential confusion with Complainant as it “may create an impression that Respondent is a non-profit organization” such as Complainant. Complainant also alleges that actual confusion has occurred since Complainant has received queries from members of the public who mistakenly believed that <bsf.org> was affiliated, connected, or associated with Complainant.
With reference to rights or legitimate interests in respect of the Domain Name, Complainant points out that Respondent has no rights or legitimate interests in respect of the Domain Name, since Complainant’s marks were well-known long before Respondent’s registration or acquisition of the Domain Name. Complainant states that it has no relationship with Respondent and that Complainant has not authorized or licensed Respondent to use Complainant’s BSF marks or to register domain names reflecting or incorporating Complainant’s BSF marks. Complainant highlights that Respondent does not have any registered trademark rights in the term “BSF”, nor was it commonly known by the name “BSF” or any other words including the term “BSF” before the Domain Name registration.
According to Complainant, Respondent’s use of the Domain Name for a parking page featuring advertising or sponsored links through which Respondent earns pay-per-click revenues does not constitute either a legitimate noncommercial or fair use of the Domain Name or a bona fide offering goods or services.
As to bad faith at the time of registration, Complainant asserts that the Domain Name was registered in bad faith since Complainant’s BSF INTERNATIONAL (word and logo) mark was registered long before Respondent’s registration of the Domain Name. Complainant reiterates that its BSF marks were well-known, particularly in the United States, long before the Domain Name registration. Complainant also alleges that Respondent possessed actual and/or constructive knowledge of Complainant and its marks before the registration, in view of Complainant’s prior United States Federal registration, of Complainant’s use of the BSF marks in many countries and of the fact that Complainant’s BSF marks were well-known. Complainant states that “BSF” would be an invented word with no common meaning,
As further circumstances in support of the finding of bad faith, Complainant states that Respondent is concealing its true identity by using a privacy shield, and that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, since the Domain Name is pointed to a domain parking website offering advertised or sponsored links to third party products or services, including Bible study materials and Bible study educational services.
Complainant also points out that Respondent is offering for sale the Domain Name through the web site “www.domainbrokers.com” for the minimum price of USD 10,000 and contends that the amount requested by Respondent is in gross excess of Respondent’s direct out-of-pocket costs for the Domain Name. Complainant concludes that the Domain Name was “registered or acquired primarily for the purpose of selling, renting, or otherwise transferring <bsf.org> to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to <bsf.org>”.
As to the use of the Domain Name, Complainant contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other online locations, by creating a likelihood of confusion with Complainant’s BSF marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or other online locations.
Respondent rebuts all Complainants’ contentions stating that “Complainant has brought forth a Complaint void of any evidence, whatsoever, justifying relief under the Policy”.
Respondent contends that the Domain Name is not confusingly similar to Complainant’s BSF INTERNATIONAL mark since it is a design plus word mark and is merely descriptive. Respondent informs the Panel that Complainant also filed a trademark application before United States Patent Office for “BSF” word mark on August 18, 2010, but the application was not even reviewed by a trademark examiner at the time of filing the Complaint.
Respondent points out that Complainant’s allegations on the ownership of common law trademark rights in the marks BSF and BSF INTERNATIONAL have not been substantiated by evidence of consumers’ exclusive association of BSF with Complainant.
Respondent states that, even if the Domain Name was found to be confusingly similar to Complainant’s mark, the use of the three-letter term “BSF” is not exclusive to Complainant and Respondent did not register the Domain Name with Complainant’s mark in mind, the Domain Name being a three-letter combination to which no party has exclusive rights. In support of Respondent’s good faith registration, Respondent alleges to be the registrant of 178 other three-letter “.org” domain names and attaches to the Response the full list of such domain names. Respondent also points out that there is no restriction on the registration of “.org” domain names, and no reason that an individual arriving at “www.bfs.org” would conclude the Domain Name is associated with Complainant. These statements are supported by a declaration of Mr. Forde-Millar, Manager of Vertical Axis, Inc.
With reference to legitimate interest in respect of the Domain Name, Respondent reiterates that the Domain Name is simply a three-letter combination which is an abbreviation for numerous things and is subject to substantial third party use, as highlighted from a search through “AcronymFinder.com” (as per evidence attached to the Response), in which “BSF” was found to be an abbreviation with over forty-four different meanings. Also a search through United States Patent Office database highlighted seven third-party United States trademark registrations incorporating “BSF” term providing the Panel with a copy of the web page from the Trademark Electronic Search System showing the active and pending third party trademarks including “BSF”.
Respondent emphasizes that, like common words, anyone is entitled to register a three-letter combination and Respondent’s legitimate interest is established per se at the point of registration, since no other party can claim exclusive rights to it.
Respondent highlights that the Domain Name has been used in connection with generic pay-per-click (“PPC”) advertisements which constitute a bona fide offering of goods and services under the Policy. Respondent underlines that the Domain Name has not been used to present advertisements for goods and services similar to those promoted by Complainant since the web site corresponding to the Domain Name has always displayed generic PPC links. Respondent highlights that the web pages attached to the Complaint which display links for Bible materials have been manufactured by Complainant by clicking on one of the generic links on Respondent’s home page, and then proceeding to manually type “bible studies” or “bible study” in the search box appearing on a secondary page. Respondent emphasizes that, other than Complainant’s manufactured annex, there is absolutely no evidence that demonstrates that Respondent ever used the Domain Name for links related to Complainant’s goods and services. Respondent’s allegations are supported by publically-available evidence and the declaration of Mr. Forde-Millar attached to the Response.
As to bad faith, Respondent states that it did not have Complainant’s mark in mind when Respondent registered the Domain Name and reiterates that the Domain Name is simply a combination of three letters which is not exclusively referable to Complainant.
Respondent also points out that its offer for sale of the Domain Name does not constitute bad faith, since the Domain Name was not registered to profit from trademark rights, and that Respondent’s use of a privacy service does not establish bad faith since it is not supported by any evidence of a demonstrated intent to avoid participation in the UDRP proceedings.
Respondent also states that the fact that the proceeding was not initiated until 10 years following registration of the Domain Name, raises an inference that Complainant did not truly believe Respondent engaged in bad faith registration or use.
Respondent concludes that the Complaint should be denied and demands the Panel to rule that Complainant has engaged in reverse domain name hijacking. In support of its demand, Respondent submits the following allegations:
– There is no basis for a finding of Respondent’s bad faith since Complainant has not demonstrated that Respondent targeted Complainant’s trademark;
– Complainant was likely aware that its evidence was lacking when it filed the Complaint;
– Complainant abused the proceedings by filing the Complaint as a “plan b” strategy, since Complainant had not been able to purchase the Domain Name for a price less than USD10,000.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or a service in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Domain Name Identical or Confusingly Similar
Complainant has provided evidence of ownership of a trademark registration for BSF INTERNATIONAL (figurative trademark) and has alleged ownership of common law trademark rights on the mark “BSF”.
It is well-established that, in order to assert common-law or unregistered trademark rights successfully, a complainant must show that a name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes, e.g., length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7).
The Panel finds that the evidence submitted by Complainant, which is limited to a copy of Complainant’s magazine dated back to 2001 and pages from Complainant’s web site “www.bsfinternational.org”, is not sufficient to establish that “BSF” has become a distinctive identifier associated with Complainant or its goods and services.
Since Complainant has not shown common law rights in “BSF”, the Panel must consider Complainant’s trademark registration BSF INTERNATIONAL, in order to evaluate possible confusingly similarity with the Domain Name.
As stated in many prior panel decisions, the content of a website is irrelevant in the finding of confusing similarity and the test for confusing similarity should be a comparison between the trademark and the Domain Name to determine the likelihood of confusion (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 and Transfer Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).
As a preliminary note, in comparing Complainant’s marks to the Domain Name with reference to “BSF” it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name. See Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 (“the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).
Complainant has provided evidence of ownership of a registered trademark for BSF INTERNATIONAL constituted by word and design elements. The verification of the registration certificate shows that the term “International” is subject to a disclaimer (stating that “No claim is made to the exclusive rights to use “international” apart from the mark as shown”) and that the dominant portion of the mark could be argued to be the lettering or the overall design.
On one hand, the design elements of Complainant’s mark could be ignored, on the basis that it is normally the words in a figurative mark which convey the mark’s overall impression (see along these lines, Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, in which it was held: “The facts that Complainant’s service mark includes a design and is suggestive, bordering on descriptive are indications of a weak mark. The fact that the mark is weak, however, does not mean that Respondent’s domain name is not identical or confusingly similar to Complainant’s mark. In addition, graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity”).
Also, it could be considered that the term “International” in Complainant’s mark is descriptive and subject to a disclaimer, whose legal effect is that the registration does not evidence any trademark rights in the disclaimed words (see Advance News Service, Inc. v. Vertical Axis, Inc./ Religionnewsservice.com, WIPO Case No. D2008-1475, in which it was held that “when descriptive or generic words are disclaimed in a registration on the Principal Register, the legal effect is that the registration does not evidence any trademark rights in the disclaimed words; rather, those words are protected only when used with the mark as a whole”).
Therefore, the core of Complainant’s mark could be argued to be the lettering “BSF”, and, since the Domain Name would be identical to the most distinctive element of Complainant’s trademark, the Domain Name could be argued to be confusingly similar to the registered trademark BSF INTERNATIONAL owned by Complainant, in accordance with paragraph 4(a)(i) of the Policy.
On the other hand, it could be argued that “BSF” is a relatively weak common term, being a mere three letter combination, which is not exclusive to Complainant and its activity. Moreover, the presence of a logo featuring a globe and a crucifix, of stylized text and of the additional descriptive term “international”, could be argued to be sufficient to exclude confusion between the Domain Name and Complainant’s mark (see Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512, Packet Clearing House, Inc. v. Howard Lee, WIPO Case No. D2005-0828).
Whatever the result of the judgment as to the standard of confusing similarity between Complainant’s trademark and the Domain Name is, in view of the low threshold that the first element requires, the Panel finds that, on the balance of probabilities, Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In view of the Panel’s findings detailed in the next paragraph, it is not necessary for the Panel to address this issue.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith under paragraph 4(b):
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The first three grounds under paragraph 4(b) necessarily require some knowledge of an owner of a mark at the time of registration of the Domain Name. Complainant seems to rely, at least in part, on common law rights and allegations of being well-known. The Panel finds that Complainant has failed to provide any evidence of Respondent’s knowledge of Complainant at the time of registration of the Domain Name. Further, Complainant failed to present sufficient evidence that might allow an inference of knowledge. Moreover “BSF” has not been shown to have been exclusive to Complainant when the domain name was registered since it is a mere combination of three letters and, as highlighted by Respondent, is used as an acronym or an abbreviation with a number of different meanings.
As stated in HSM Argentina S.A. v. Vertical Axis, Inc, WIPO Case No. D2007-0017, “…the evidence of third party use of the letters ‘hsm’ mitigates against a finding that the Respondent knew specifically of the Complainant or its mark when the disputed domain name was registered. This evidence suggests that the combination of the letters ‘hsm’ may have a number of potential associations, unconnected with the Complainant”.
In light of the above, the Panel finds that the fact that Complainant registered a design with BSF INTERNATIONAL as a part of it before Respondent registered the domain name is insufficient to show knowledge of, or intent to target, Complainant.
Finally, Complainant relies on Respondent’s offer to sell the domain name for USD 10,000, alleging that it must be above the out-of-pocket costs directly related to the domain name. However, paragraph 4(b)(i) does not prohibit commercial sales of domain names for more than their costs. It says that it is evidence of bad faith if there are circumstances indicating intent at the time of registration to sell to specific people (the owner of a trademark or competitor) at a price above the out-of-pocket costs. Making an offer to sell a domain name at a market-valuation price, even if it could have been above the out-of-pocket costs directly related to the domain name, when solicited by Complainant ten years after the registration, is no evidence of knowledge of Complainant at the time of registration.
Complainant has also failed to provide any evidence of bad faith by Respondent in its use of the Domain Name, under paragraph 4(b)(iv). In fact, the Domain Name is connected to a web site that does not seek to trade on the goodwill of the underlying trademark since it is associated with a parking page where generic pay-per-click links are displayed. As highlighted by Respondent, links which referred to Bible related topics appear to be displayed only after selecting one of the generic links on the first page and inserting terms like “bible” and “study” in the search engine available on the secondary page. Furthermore, no evidence was provided to the Panel in support of the Complainant’s allegation that actual confusion has occurred based on queries from Internet users who mistakenly believed that <bsf.org> was affiliated, connected, or associated with Complainant.
To the extent Respondent relies on the offer for sale of the domain name for bad faith use, the Panel notes that an offer to sell a domain name is not “use” that would attract Internet users to the holder’s site by creating a likelihood of confusion with a trademark, as is required under paragraph 4(b)(iv). Further, the offer was merely done, according to the documents submitted to the Panel, after solicitation by Complainant via the website “www.domainbrokers.com”, the Domain Name consists of the combination of three letters, and further no evidence has been provided that the combination of letters is exclusive to Complainant.
Also, the Panel finds that, under the circumstances of the case, Respondent’s use of a privacy service does not constitute clear evidence of bad faith. As stated in Gusztav Ujfalusi Fogarassy v. Domain Deluxe, NAF Claim No. 296270, the use of a privacy service, “absent other circumstances, would not be sufficient to prove bad faith behavior”.
Accordingly, Complainant has not made out the case that the Domain Name was registered and used in bad faith.
D. Reverse Domain Name Hijacking
“Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. As stated, inter alia, in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking.
In the case at hand, the Panel finds that Complainant’s allegations have not been substantiated by relevant evidence and also the rationale in the Complaint has been developed with tenuous logic and supported by very little citation. Also, the lack of explanation on the generation of the web page displaying Bible links is not suggestive of a good faith behavior of Complainant.
Nevertheless, the Panel finds that Respondent has not proven reverse domain name hijacking in this proceeding.
For all the foregoing reasons, the Complaint is denied. Respondent’s request for a finding of reverse domain name hijacking is also denied.
The Hon. Neil Brown QC
Dated: November 29, 2010