WIPO Domain Name Dispute: Case D2005-0214, "uhj.net"2005-08-25
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Spiritual Assembly of the Bahá'ís of the United States v. Second International Bahá'í Council
Case No. D2005-0214
1. The Parties
The Complainant is National Spiritual Assembly of the Bahá'ís of the United States, an Illinois not-for-profit corporation with an office in Evanston, Illinois, United States of America. Complainant is represented by Brinks Hofer Gilson & Lione, Chicago, Illinois, United States of America.
The Respondent is Second International Bahá'í Council, an entity with an address in Missoula, Montana, United States of America, represented by Neal Chase of Missoula, Montana, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <uhj.net>, is registered with iHoldings.com Inc., doing business as DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2005. On February 25, 2005, the Center transmitted, by e-mail, to DotRegistrar.com a request for registrar verification in connection with the disputed domain name. On February 28, 2005, DotRegistrar.com transmitted to the Center, by e-mail, its verification, confirming that Respondent is listed as the registrant of the domain name, indicating that it had "locked" the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 3, 2005. In accordance with Rule 5(a), the Response was due on March 23, 2005. The Response was filed with the Center on March 23, 2005.
The Center appointed Debra J. Stanek as the sole panelist in this matter on April 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence required by the Center to ensure compliance with Rule 7.
On April 1, 2005, Complainant submitted to the Center, by e-mail, a request to provide a reply, stating that Respondent's submission had made "several inaccurate and confusing statements" that "may need to be addressed."
Because Complainant had indicated that it had not sent a copy of its communication to Respondent, the Center forwarded the request to Respondent. On April 8, 2005, Respondent submitted to the Center, by e-mail, its opposition to the request.
4. Factual Background
The Bahá'í faith, to which both parties to this dispute claim to adhere, was founded in the mid-1800s.
According to Complainant, in 1963, members of the Complainant, along with members of other National Spiritual Assembly of the Bahá'ís around the world, created an institution called the "Universal House of Justice." The Universal House of Justice is apparently the highest authority of the Bahá'í faith and has its headquarters in Haifa, Israel.
Complainant owns a United States federal trademark registration, issued in 1965, for the mark THE UNIVERSAL HOUSE OF JUSTICE for publications. Complainant also claims to have used THE UNIVERSAL HOUSE OF JUSTICE mark in connection with "other religious activities" involving the Bahá'í faith.
According to the Respondent, the term "Universal House of Justice" is defined, in the will of the founder of the Bahá'í faith and other documents related to its establishment and institutions, as an entity whose president is a descendant of King David, the king of Israel during biblical times. Respondent claims to be a descendant of David and therefore the leader of the "true" Universal House of Justice for the Bahá'í faith.
Respondent registered the <uhj.net> domain name in 2000. Visitors to the "www.uhj.net" website are presented with a page that identifies the site as "The Official Website of the Universal House of Justice." The home page includes a photograph of a Bahá'í shrine located in Israel and a quotation to the effect that the president of the Universal House of Justice must be a descendant of King David and that such leadership distinguishes "the true UHJ from fakes, frauds, and imitations."
5. Parties' Contentions
Complainant makes the following contentions:
Complainant has been authorized by the Universal House of Justice to serve as the highest authority for the Bahá'í faith in the United States. In addition, the Universal House of Justice has authorized Complainant, exclusively, to use the symbols of the Bahá'í faith in the United States.
The disputed domain name, <uhj.net>, is confusingly similar to Complainant's THE UNIVERSAL HOUSE OF JUSTICE trademark, which has been used extensively for many years. The acronym "uhj" used by Respondent is recognized and used by followers of the Bahá'í faith to refer to THE UNIVERSAL HOUSE OF JUSTICE mark.
Respondent is using "uhj" as an acronym for THE UNIVERSAL HOUSE OF JUSTICE trademark without the permission or consent of Complainant. The home page for <uhj.net> is identified as "The Official Website of the Universal House of Justice," depicts one of the holiest of Bahá'í shrines, and contains a link labeled "Click here to contact the UHJ" that leads visitors to an e-mail address that is not the address of Complainant or the Universal House of Justice in Israel.
Respondent has no rights or legitimate interests in the domain name. Respondent does not own trademark applications or registrations for the marks THE UNIVERSAL HOUSE OF JUSTICE or UHJ and is not known by either name. Instead, Respondent is using the domain name to divert those seeking Complainant's website and Respondent has caused actual confusion among followers of the Bahá'í faith.
Respondent registered and is using the domain name in bad faith. Respondent has diverted those seeking the official website of the Bahá'í faith and used misleading designations to confuse followers of the Bahá'í faith and to disrupt Complainant's organization. Further, the content of Respondent's website is not in accord with the teachings of the Bahá'í faith.
Pursuant to various documents, Respondent is the successor to property of the Bahá'í faith, including its intellectual property, because, among other things, he is a descendant of King David. Complainant does not have a right to use the name "The Universal House of Justice," or any Bahá'í property, intellectual or otherwise.
Complainant's registration of the mark THE UNIVERSAL HOUSE OF JUSTICE was in bad faith, done with the intention of hijacking Respondent's rights.
Respondent is using the domain name in good faith to promote itself as the true Universal House of Justice. Its website is intended to distinguish it from the Complainant; it explicitly refers to the fact that the "true UHJ" must have as its president a descendant of King David.
Respondent has rights or legitimate interests in the domain name. For many years before notice of the dispute, Respondent prepared to use and used the name "Universal House of Justice" and "UHJ" for its legitimate religious, non-commercial purposes as the "true and legal" Universal House of Justice.
Respondent is making legitimate non-commercial, fair use of the domain name, without any intent of commercial gain or any attempt to misleadingly divert consumers or to tarnish the trademark at issue.
Respondent is not affiliated with Complainant and has no desire to confuse those who follow Complainant's teachings. The home page of Respondent's website discloses its views regarding the "true" Universal House of Justice, headed by a descendant of King David, and other "fakes, frauds, and imitations."
The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. The domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name and Respondent has not engaged in a pattern of such conduct.
Complainant is engaging in reverse domain name hijacking.
6. Discussion and Findings
A. Procedural Matters
As noted above, Complainant has requested an opportunity to submit a reply to respond to "inaccurate and confusing statements" in the Response. 1 As an initial matter, neither the Rules nor the Supplementary Rules provide for the filing of a reply.
Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. [citation omitted].
See Document Technologies, Inc. v. International Electronic Communications Inc. (WIPO Case No. D2000-0270). Rule 12 does, however, permit a panel to request further documents and statements. Such requests always involve balancing the provisions of Rule 10, which require a panel to ensure both that each party has a "fair opportunity" to present its case and that the proceeding take place with "due expedition."
The Panel is of the view that supplementary submissions are appropriate only in ‘exceptional' cases, such as where new, pertinent facts arose or new, relevant legal authority was reported after a party's submission. See Document Technologies, supra. To seek or accept supplemental submissions under other circumstances undercuts the purpose of the streamlined procedures established by ICANN.
Complainant's cited reason for its seeking to supplement its initial submission was that Respondent made "inaccurate and confusing statements" that "may need to be addressed." In the Panel's view, the cited reason does not fit within the limited circumstances under which supplementary submissions are appropriate.
B. Burden of Proof
In order to prevail, Complainant must prove:
(i) The <uhj.net> domain name is identical or confusingly similar to Complainant's THE UNIVERSAL HOUSE OF JUSTICE mark; and
(ii) Respondent has no rights or legitimate interests in respect of the <uhj.net> domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a Respondent's bad faith registration and use under Paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
(1) Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. For purposes of considering identity or confusing similarity, the ".net" top-level domain is not relevant.
Complainant's mark is THE UNIVERSAL HOUSE OF JUSTICE. Complainant does not argue that the <uhj.net> domain name is identical to its mark and it is not. Further, Complainant does not claim any trademark rights in "uhj" and has not identified any use by it of "uhj" in any manner, including to identify itself, its activities, the institution in Israel, or the activities of that institution. Complainant must, therefore, establish that the domain name is "confusingly similar" to its mark.
Neither the Policy nor the Rules expressly articulate a test for determining "confusing similarity" and other panels have applied different tests. Some have limited the test to determining the degree of resemblance of the domain name and mark at issue as to "sight, sound, and meaning." Others have considered the degree of resemblance along with factors such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used.
This Panel has previously concluded that only the degree of resemblance between the Complainant's mark and the disputed domain name should determine confusing similarity. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649. As stated in Columbia Insurance, this is because paragraph 4(a) refers only to the identity or confusing similarity while paragraph 4(b)(iv), in contrast, expressly refers to "likelihood of confusion . . . as to the source, sponsorship, affiliation, or endorsement." Further, the Policy is intended to be international in scope, which suggests that -- absent express language -- a panel should be cautious about interpreting the Policy as incorporating a test that may not exist in a number of jurisdictions. See Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
Complainant argues that the disputed domain name is confusingly similar to its THE UNIVERSAL HOUSE OF JUSTICE mark. For the reasons set out below, the Panel concludes that "uhj" does not resemble THE UNIVERSAL HOUSE OF JUSTICE in appearance, pronunciation, or meaning.
The disputed domain name incorporates only the initial letters of three of the five words that make up the mark -- "uhj" -- resulting in significant differences in appearance and pronunciation between the two. The acronym "uhj" has no inherent meaning. Acronyms, by their nature, may stand for more than one combination of words. Although Complainant has provided copies of e-mail messages that seem to suggest that some members of the Bahá'í faith use "uhj" as an abbreviation for the words "Universal House of Justice," the Panel finds that these messages do not establish that the acronym has the same meaning as the words.
First, the only evidence of Complainant's trademark rights is its federal registration for use of the mark in connection with publications. Yet the messages supplied by Complainant do not appear to use the acronym "UHJ" to refer to Complainant's THE UNIVERSAL HOUSE OF JUSTICE publications or mark. Instead, they appear to refer to the institution, the Universal House of Justice in Haifa, Israel (for example, requests for prayers, a request to visit shrines in Israel, etc.). Complainant has asserted that it uses THE UNIVERSAL HOUSE OF JUSTICE mark in connection with "other religious activities" involving the Bahá'í faith. However, Complainant has not provided any evidence of use of the mark in connection with those other activities. In the absence of any evidence, Complainant has not established common law rights in THE UNIVERSAL HOUSE OF JUSTICE mark in connection with those unspecified activities, rendering the e-mail messages ambiguous at best.
Second, all of the evidence consists of e-mail messages. The use of acronyms and abbreviations in such messages is common. The Panel is not convinced that this evidence supports a more widespread use and understanding that "UHJ" signifies Complainant's THE UNIVERSAL HOUSE OF JUSTICE pamphlets or Complainant.
Finally, relying on the understanding of members of the Bahá'í faith to establish the "meaning" of the acronym, is inconsistent with the test of confusing similarity that this Panel has adopted.
The decision in Society of St. Vincent de Paul, Council of the United States v. Alex Yip, WIPO Case No. D2004-0121, supports the Panel's conclusion. In that somewhat analogous case, the panel rejected an argument that the disputed domain name, <svdpusacouncil.org>, was confusingly similar to the registered mark, SOCIETY OF ST. VINCENT DE PAUL U.S.A. ST V DE P. The panel noted that "only a part of the registered mark is incorporated into the disputed domain name, and the ‘svdp' portion of the domain name shows up as ST V DE P in the registered mark." Here too, only a portion of the registered THE UNIVERSAL HOUSE OF JUSTICE mark is incorporated into the disputed domain name.
However, in St. Vincent de Paul, the complainant also contended that over the years, it had been known by the acronym "SVDP." The panel concluded that the acronym had acquired sufficient common law rights to merit protection because it appeared that the acronym had been "used by Complainant for many years to identify it and the charitable services provided by Complainant." In contrast here, there is no evidence that Complainant has ever, at any time, itself used "uhj" to identify itself or its services. Further, and as discussed above, the e-mail messages that Complainant has characterized as showing the use, by members of the Bahá'í faith, of the acronym to identify Complainant are ambiguous.
Complainant cites two decisions by other panels for the proposition that a domain name that is an acronym of a trademark is confusingly similar to the trademark. In Successful Money Management Seminars, Inc. v. Financial Services of California, Claim No. FA0006000095042 (National Arbitration Forum, July 31, 2000), the panel stated that <fssr.com> was confusingly similar to the FINANCIAL STRATEGIES FOR SUCCESSFUL RETIREMENT trademark, for which it was an acronym. However, in that case, the panel's observation was not necessary to the decision because the complainant owned a trademark registration for the mark FSSR and the Panel does not find it persuasive here.
In VeriSign, Inc. v. Michael Brook, WIPO Case No. D2000-1139, the panel concluded that various "vrsn" domain names were confusingly similar to the complainant's VERISIGN trademark. The Panel believes that it is more aptly described as an abbreviation of the mark.2 This distinction is important because an abbreviated form of a trademark is more likely than an acronym to resemble a mark in sight, sound, and meaning. In any case, in the Panel's view, "vrsn" more closely resembles the mark VERISIGN than "uhj" resembles the mark THE UNIVERSAL HOUSE OF JUSTICE.
In addition, although Verisign did not use "vrsn" as a trademark, Verisign did use "VRSN" as the symbol under which shares of its stock were publicly traded. As noted above, Complainant has not made any comparable claim or presented any evidence showing that it uses "uhj" in any manner, much less as a mark or other type of identifier.
Under the circumstances of this case, the Panel finds that Complainant has not met its burden of establishing that Respondent's domain name is confusingly similar to a mark in which Complainant has rights.
(2) Rights or Legitimate Interests
As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainant has not established the first element, it is not necessary to address the issue of Respondent's claim to have rights or legitimate interests in the disputed domain name.
(3) Registered and Used in Bad Faith
For the same reasons outlined above, it is not necessary to address the issue of bad faith.
(4) Reverse Domain Name Hijacking
Respondent asserts that Complainant is engaged in reverse domain name hijacking. Reverse domain name hijacking is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The Panel finds this case presented challenging issues (although not all are discussed in this decision). The Panel concludes that the Complaint was not an attempt at reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Dated: May 8, 2005
1 Complainant did not send a copy of its request directly to Respondent, apparently believing Respondent had a "religious objection" to communicating with it. While the Panel appreciates Complainant's sensitivity, it did not interpret the statement that Respondent had, consistent with Respondent's religious beliefs, ignored Complainant's cease and desist letter, to be an objection to receiving communications. Moreover, the Panel reminds Complainant of Rule 2(h): "Any communication by . . . a Party shall be copied to the other Party, the Panel and the Provider, as the case may be" (emphasis added).
2 Compare Merriam-Webster Online Dictionary, 10th edition, s.v. "acronym" (http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=acronym) (defining "acronym" as: "a word (as NATO, radar, or snafu) formed from the initial letter or letters of each of the successive parts or major parts of a compound term; also : an abbreviation (as FBI) formed from initial letters") with Merriam-Webster Online Dictionary, 10th edition, s.v. "abbreviation (http://www.m-w.com/cgi-bin/dictionary?book =Dictionary&va=abbreviation) (defining "abbreviation" as: "2 : a shortened form of a written word or phrase used in place of the whole <amt is an abbreviation for amount>").