NAF case no. .FA1706007137678
August 9, 2017
Domain name : <voiceofhope.com>
A recent 2017 decision where the writer was also the panelist- High Adventure Ministries v JOHN TAYLOE / VOICE OF HOPE (NAF case no. FA1706007137678) explores a multitude of interesting issues in domain name law. It also shows the challenges to a panelist in deciding a case where there is a lot of evidence, some of it conflicting, as the Panel does not have the tools that a court has, with cross examination and discovery.
The decision also highlights some clear cases where a Respondent may well have a right or legitimate interest in a domain name, but not for the usual reasons.
The decision also raises some issues about the jurisdiction of the UDRP- what cases come within it and what cases are excluded- and our old favourite, the issue of evidence in UDRP cases.
JURISDICTIONAL ISSUES
The first jurisdictional issue is the appropriateness of UDRP jurisdiction when the domain name dispute between the parties is also the subject of court proceedings. The second is where the dispute is really just one facet of a wider trade mark or commercial dispute between the parties which might be better left to court proceedings. The third is whether a previous employee/person of affiliation can use the associated entity’s trade mark in a domain name at a later date.
The Facts
The parties in High Adventure Ministries were once affiliated through their mutual work on a project called Voice of Hope. Voice of Hope had been used as a trademark of the Complainant organisation since 1979; however, it was not registered with the United States Patent and Trademark Office until November 2016. The Respondent was a former Executive Vice-President and Corporate director of the Complainant, but was fired in 1996 for, as the Complainant said, “being a disruptive force in the organization.” Interestingly, the Respondent was married to the daughter of the co-founder of the Complainant, George Otis. In more recent times, he has been conducting religious broadcasts which, according to him, were a new venture, but which according to the Complainant were an attempt to give the impression that it was the former, long stranding venture. The Respondent registered the <voiceofhope.com> domain name to promote his current venture.
The Complainant alleged that the Respondent registered the Voice of Hope domain name in 1998 to compete with the Complainant, and that he uses the webpage to solicit donations, trading on the name and good will of the Complainant.
The Respondent adduced numerous pieces of evidence to support its submissions that:
There already existed a commercial dispute between the parties, with court proceedings commenced in Tel Aviv and Kentucky;
The Complainant sold its rights to operate the US radio station ‘Voice of Hope-Americas’ to a third party in 2003, and Respondent subsequently acquired those rights in 2011;
The Respondent had acquired rights and used the trademark “Voice of Hope” since 2013:
The Respondent purchased the domain name <voiceofhope.com> in 2014 from an unrelated third party, who had first registered in 1998; from 2007-2014 the domain name had been dormant and was for sale;
Since 2016 the Complainant had been aware of the Respondent’s domain name registration and had in fact approved the disclaimer on the Respondent’s website which denied affiliation with the Complainant company; and
Complainant did not have trademark rights in the name VOICE OF HOPE and had abandoned them in 2003.
The two Jurisdictional Issues
The Respondent raised two preliminary issues that had to be resolved before the case could proceed.
The Panelist’s first step was therefore to look at whether the UDRP conferred jurisdiction to deal with the domain name dispute. Under s 4(k) policy, the UDRP does not hear matters which are associated to concurrent court proceedings “until the court proceeding is resolved.” In High Adventure Ministries the Complainant certified that no such proceedings existed, which turned out not to be true. In fact, there were related court proceedings on foot in both Israel and the USA. The panelist was obviously conscious of the fact that this complicated matters, but decided that he was able to confine his consideration to the dispute that clearly fell within the ambit of the UDRP and not the court proceedings.
The second issue raised was whether the dispute under the UDRP was itself wider than a dispute merely about a domain name or whether it was part of a wider trademark and commercial dispute. Although it is not in any sense rare for UDRP panelists to decline to hear disputes that focus on trademark or general commercial disputes, the Panelist here[1] was confident that he could fit the domain name issues in dispute within the framework of the policy and “deal with them without transgressing on other areas that are more the province of the courts in the pending proceedings.”
Those issues being resolved, the merits of the UDRP dispute could then be considered.
Identical or Confusingly Similar
On the first issue of identical and/or confusingly similar, the Panelist concluded that yes, the Complainant had registered trademark rights since 2016, but that it had not made out whether it had common law rights extending back to 1979 when it claimed its first use of the mark. As the domain name was acquired and, hence, registered by the respondent in 2014, .i.e. , before the trademark was registered, in order for the Complainant to be successful on the later issue of bad faith, it really had to prove these common law rights back to a date prior to the acquisition and registration of the domain name.
Although the Panelist was prepared to give the Complainant the benefit of the doubt that it was actually arguing for a common law trademark, which seemed doubtful in itself, the evidence for an unregistered or common law trademark did not come up to scratch . This was because the Complainant had not shown a secondary meaning in the expression VOICE OF HOPE which was substantially a generic expression and it had not shown that such a secondary meaning linked the name with the Complainant. Accordingly, the Complainant could not prove a common law trademark and it had to sink or swim by relying on its registered trademark.
The panelist was, however, for the purposes of the first element under the UDRP, able to find that the domain name was identical to the registered trademark and that the Complainant had therefore won Round One.
Rights or Legitimate Interests
The Complainant then had to show the Respondent did not have a right or legitimate interest in the domain name. To that end it submitted, first, that the Respondent was not commonly known by the domain name, i.e. not commonly known as Voice of Hope. It seemed unlikely that Mr. Tayloe would have been known by that name and in any event there was no evidence that he was in fact known as Voice of Hope. Thus, the Complainant was right on that issue, which meant that Mr. Tayloe had not shown it had a right to the domain name, or, more accurately, not yet, as it could still do so on other grounds, as we are about to see.
The second argument relied on by the Complainant to show that Mr. Tayloe did not have a right or legitimate interest in the domain name was that he was not using the domain name to offer “bona fide services”, but that he was “using the domain in a “closely related and confusingly similar way” to the VOICE OF HOPE trademark by portraying a connection with the Voice of Hope radio ministries founded by the late George Otis” and was using this subterfuge to raise money.
The Panel’s view was that, first, it must be doubted if what the Respondent Mr. Tayloe was doing was in breach of the Complainant’s trademark at all, as the trademark related only to printed dissemination of a message and not broadcasting, which is what Mr. Tayloe was doing.
Secondly and more importantly, the Panel found that it had not been proved against Mr. Tayloe that he was doing what was alleged against him, namely trading on the name of the former Voice of Hope organisation for which he had previously worked and soliciting donations under that pretence. The Panel found that Mr. Tayloe had made it clear on his website that the current service was new and not just a continuation of the original service. In any case, the Respondent actually had a connection with George Otis the founder of the movement in question, so in evoking Mr. Otis’ name he was relying on a matter of fact, not a false claim of association; not only was he married to Otis’ daughter and he was also was an ex-employee/director of the Complainant. The Respondent proudly detailed his work and biography on the website, but did so with a disclaimer that notified any prospective donor that he was no longer affiliated with the Complainant. The panelist also noted that Mr. Otis’ work on Voice of Hope ceased 17 years ago, thus signalling that the new radio projects are of an entirely new creation. Further, the Respondent tendered evidence which proved that the Complainant knew about the Respondent’s radio station, website and disclaimer, and consented to them, to the extent of encouraging the Respondent to continue his work.
Accordingly, the Panel found that putting all of this together the “Respondent has a right or legitimate interest in the domain name as it reflects the name of Respondent’s undertaking and that Complainant has consented to that use”.
WHAT DO WE LEARN FROM THIS CASE SO FAR?
Note here, the fact that evidence is vital in these cases and that the effort of collecting past emails and evidence of who did what and when, pays dividends in the eventual result. This case was clearly won on the evidence collected and adduced by the Respondent.
Note also, it is often overlooked, that a right or legitimate interest in a domain name may be established as it was in this case by showing that the domain name you chose is related to your already established business and that was the reason for choosing the domain name.
Bad Faith
It followed from all of the above, and the Panelist found, that bad faith registration could not be established because the Respondent had registered the domain name prior the registration of the Complainant’s trademark (and the Complainant had failed to make out common law trademark rights dating from 1979), and also because the Respondent has rights and legitimate interests in the domain name.
Reverse Domain Name Hijacking
The Panelist was invited to make an order for reverse domain name hijacking. The reasons put forward for this were that the Complainant had misled the Panel when stating there were no concurrent court proceedings and made some highly accusatory remarks against the Respondent, which in fact were completely contradicted by the Respondent’s evidence. For example, remarks such as the Respondent registered the domain name in bad faith to “in order to redress perceived wrongs and to disrupt Complainant’s ministries,” were overcome by evidence showing that the Complainant knew of and gave giving full support to the Respondent’s new work under the name Voice of Hope.
The Panelist decided that he was not entirely convinced that the purpose of the proceeding was to “harass Respondent and it may well be that Complainant felt it had good reasons for bringing the claim”.
Accordingly, the application for a finding of RDNH was rejected.
Concluding Remarks
High Adventure Ministries teaches as us several things about domain names and their interaction with trademarks:
Be careful about bringing UDRP proceedings if the dispute is or may be associated with concurrent court proceedings and broader trademark and commercial disputes issues; the UDRP is not appropriate for that sort of dispute;
If you have a common law trademark through use, register it as soon as possible, but in the absence of doing so, keep your evidence of a common law trademark, such as press coverage, sales made under the name and use of the name in your business;
Do not consent to or encourage a previous employee or someone with past affiliation to your company/organisation/self to use the trademark in any capacity; and
Register a domain name that is associated with any trademark you own as soon as practicable and a reasonable number of related or similar domain names. President Trump has more than 3000!(see: http://www.businessinsider.com/trump-owns-over-3000-websites-2017-2?IR=T).
[1] The panelist in this case wasThe Hon Neil Brown QC