Church of Israel v. Jerry Gentry a/k/a JG
Claim Number: FA0309000193928
Complainant is Church of Israel, Schell City, MO ("Complainant") represented by Dan Mueller, Route 1, Box 225, Schell City, MO 64783. Respondent is Jerry Gentry a/k/a JG, Route 2, Box 198, Big Sandy, TX 75755 ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <churchofisrael.com>, <thechurchofisrael.com>, <thechurchofisrael.org>, <reformedchurchofisrael.com>, and <gaymangate.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Timothy D. O'Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 11, 2003; the Forum received a hard copy of the Complaint on September 15, 2003.
On September 15, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <churchofisrael.com>, <thechurchofisrael.com>, <thechurchofisrael.org>, <reformedchurchofisrael.com>, and <gaymangate.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 7, 2003.
Complainant submitted a timely Additional Submission on October 13, 2003, in compliance with Forum Supplemental Rule 7.
Respondent filed a timely reply to Complainant's Additional Submission on October 16, 2003, in compliance with Forum Supplemental Rule 7.
On October 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Timothy D. O'Leary as Panelist.
Complainant requests transfer of the domain names from Respondent to Complainant.
Complainant contends as follows:
1) The domain names <ChurchofIsrael.com>, <TheChurchofIsrael.com>, <TheChurchofIsrael.org>, & <ReformedChurchofIsrael.com> are identical and or confusingly similar to the name of the Church of Israel in Schell City, Missouri which was established in 1981.
2) Respondent has no rights to or legitimate interest in these domain names.
3) The domain names were registered and are being used in bad faith.
AS TO THE IDENTICAL AND CONFUSINGLY SIMILAR CONTENTION, COMPLAINANT STATES:
The Church of Israel was formed on December 13th 1981 in Schell City Missouri when the Church of Our Christian Heritage voted to disband and form a new church under the name "Church of Israel". The Church of Israel filed a public notice of its formation and its name January 11th 1982. The Church of Israel has operated continuously since January 11th 1982 under the name(s) "Church of Israel" and "the Church of Israel".
The Respondent volunteered to create and maintain a website for the Church of Israel congregation in Schell City, Missouri in August of 1999. The Respondent registered the domain name <ChurchofIsrael.com> on behalf of the Church of Israel Congregation in Schell City, Missouri, on September 5th 1999. He then created and maintained a website for the Church of Israel on a voluntary basis.
In Mid-November of 2000, the Respondent left the Church of Israel. Shortly thereafter, the Respondent agreed to turn over control of the domain name <ChurchofIsrael.com> to the Church of Israel in Schell City, Missouri. Unfortunately, to this date, The Respondent has not kept his word.
On December 28th 2000, The Respondent registered in bad faith, the confusingly similar domain names <ReformedChurchofIsrael.com> and <ChurchofIsraelRedeemed.com> and subsequently created websites at those domains for the purpose of stealing the identity of, and discrediting the true Church of Israel in Schell City, Missouri.
On January 6th 2002, the Respondent registered more domain names in bad faith. <TheChurchofIsrael.com> and <TheChurchofIsrael.org> were registered for the express purpose of directing web traffic to <GaymanGate.com> to cause hurt and embarrassment to the people of the congregation of the Church of Israel in Schell City, Missouri, and tarnish its good name around the world.
The Respondent had initially promised to return these domains to the Church of Israel and failed to follow through. But soon after his departure from the Church of Israel in November of 2000, the Respondent refused outright to turn over control of these domain names to the Church of Israel in Schell City, Missouri. Instead he has continued to use the domain names <ChurchofIsrael.com>, <TheChurchofIsrael.com>, and <TheChurchofIsrael.org>. The purpose of this was to redirect traffic to his website <GaymanGate.com> which to this date is actively involved in a crusade to destroy the reputation of Dan Gayman.
RESPONSE OF RESPONDENT TO CONTENTION NUMBER 1:
Respondent argues that the documents that Complainant relies on to support the organization of the "Church of Israel" are full of errors and the official notary seal is missing.
Respondent points out that Complainant has claimed no registered trademark/s or service mark/s in the name/s of "Church of Israel", "The Church of Israel" or in any of the other disputed names. A search at the United States Trademark Office (http://www.uspto.gov) confirms there are no registered trademarks or service marks in any of the names in dispute. A recent google.com search of "Church of Israel" yielded over 2000 hits, few of which were connected at all with Complainant. "Church of Israel" is a generic church name used broadly in reference to many different churches and congregations.
"Public notice" is asserted without proof, and is contrived and bogus.
Respondent argues that Complainant failed to show sufficient evidence that its organizational meeting/meetings actually took place. Complainant has failed to prove his documents are genuine and not forged. Complainant clearly identifies itself as "the Church of Israel in Schell City, Missouri," which is distinguished from other churches elsewhere also known as "Church of Israel."
Respondent maintains that Complainant confuses the names "Church of Israel congregation in Schell City, Missouri" with the generic denomination name "Church of Israel." These two names differ legally and substantially. Use of the same or similar names is not unusual among churches in various cities, i.e., "First Methodist Church," "First Baptist Church," "First Presbyterian Church," etc., are names of churches found in nearly every city in the United States. So it is with "Church of Israel."
Respondent asserts that this generic "denominational" name "Church of Israel" has ALWAYS been used by the various churches located in differing cities, which chose to use that designation for their church, much like "First Baptist Church" and "Church of Christ" are used in many different locales without bad faith or confusion. There exist many additional denominational churches, where a single congregation owns the domain name and website, even though there are hundreds, perhaps thousands, of churches by that same name located elsewhere. There are thousands of local churches called "Church of Christ" all over the United States, but the domain name and website by that name is owned and operated exclusively by a single Church of Christ, Omaha, NE. There are literally thousands of churches called "First Methodist Church," but only a single local church owns the domain name and operates a website at that address.
Respondent contends that Complainant breached their agreement for Respondent- to transfer the <ChurchofIsrael.com> and therefore it is of no force and effect.
Respondent contends that Complainant herein once again admits that its "Church of Israel" is in fact limited to "the people of the congregation of the Church of Israel in Schell City, Missouri." Many churches are known under the name/s "Church of Israel" and "The Church of Israel," outside the geographical area, control and ecclesiastical authority of Complainant through it's head Bishop Dan Gayman. No confusion exists in the minds of any who read the various websites.
COMPLAINANT'S ADDITIONAL SUBMISSION UNDER CONTENTION NUMBER 1:
Complainant explains that the differing dates and problems reflecting meetings are easily explained and the documents are legitimate and were signed, witnesses and notarized.
In response to Respondent's argument that Complainant has no registered trademarks or service marks in the name of "Church of Israel," Complainant contends that registering a Trade Mark may be essential if you are a retail business like Dairy Queen, or McDonalds. It is not required for a church, nor was the registration expense in excess of thousands of dollars to obtain it, deemed a reasonable burden for the parishioners of the Church of Israel, nor is the annual maintenance cost of keeping such a trademark. Public notice was given at the time of formation in full compliance with Missouri state law.
The Church of Israel name is not generic, nor is the name used broadly. There are not many different churches and congregations with the same name. The name Church of Israel is unique to the Church of Israel in Schell City Missouri. A simple search at <switchboard.com> for “Church of Israel” in all states will yield results from "Children of Israel Baptist Church" to "Israel of God Church" but it will yield only one "Church of Israel" and that is in Schell City, Missouri.
Complainant asserts that by virtue of the oral contract, the Respondent agreed to transfer the Church of Israel domain names, and eventually agreed to the amount of $1000 for which payment was made on November 13th 2000. The Respondent specified that the check should say "Gift" in the Memo section purportedly so he could avoid paying income tax on it.
RESPONDENT'S ADDITIONAL RESPONSE UNDER CONTENTION NUMBER 1:
Respondent maintains that even if the documents are genuine as Complainant claims, and notarized properly, there is no official notary seal. Further, Respondent argues that it is odd that the minutes of the meeting are prepared before the meeting.
"Public notice" of a church being formed means nothing. No law requires it and in addition, Complainant gave no evidence of "public notice" being given.
In addition Respondent argues, Complainant has not produced any proof that it has exclusive use of "Church of Israel." Complainant knows of the existence of "Church of Israel" in many states.
As to Complainant's argument that Respondent entered into an oral contract to sell the domain names, Respondent contends that Complainant changed the terms of the contract, lied, and reneged on it. Respondent states that Complainant never made any payment to him under the alleged oral contract. For these reasons Respondent contends that there is no contract.
Respondent makes a number of factual statements to justify his use of these websites to criticize Complainant.
Contention No. 2:
AS TO THE RIGHTS AND LEGITIMATE INTERESTS CONTENTION, COMPLAINT STATES:
The Respondent offers no goods or services in connection with any of the aforementioned domain names. The Respondent is intentionally deceiving website visitors to <reformedchurchofisrael.com> into believing that they are at the website of the Church of Israel.
The Respondent continues to this day to use the domain names in question to impugn the good name, and harass the congregation and clergy of the Church of Israel in Schell City, Missouri and around the world.
At no time has the Respondent been known as the Church of Israel, nor has he ever been a member of its board of directors, though at one time, he was a beloved and supportive member of the Church of Israel.
RESPONSE OF RESPONDENT TO CONTENTION NUMBER 2:
Respondent argues that the terms "Church of Israel" are generic. Respondent states that it registered these names on behalf of another "church" commonly known as the Church of Israel.
Respondent contends that the domain names in question are used for the legitimate purpose of disseminating true facts concerning the operation of Complainant's church and to offset Complainant's efforts to control the minds and actions of Respondent's church.
In addition, Respondent contends that the websites are operated by Respondent and his affiliates and friends as a ministry.
COMPLAINANT'S ADDITIONAL SUBMISSION UNDER CONTENTION NUMBER 2:
Complainant asserts Respondent has no right or legitimate interest in the domain names because he agreed by oral contract to transfer the Church of Israel domain names and was paid $1,000.00 to do so.
RESPONDENT'S ADDITIONAL RESPONSE UNDER CONTENTION NUMBER 2:
Respondent states website changes were necessitated by changing needs of Respondent's ministry and were not done to redirect legitimate traffic wrongfully.
Respondent argues that Complainant does not have exclusive interest in the name "Church of Israel." Complainant has no trademark, service mark or exclusive common law use of the name "Church of Israel." Nor is there any evidence Complainant has exclusive ownership of that domain name.
Contention No. 3:
AS TO THE REGISTRATION AND USE IN BAD FAITH CONTENTION, COMPLAINANT STATES:
Respondent registered the domain names on behalf of, and for the people of the congregation of the Church of Israel in Shell City Missouri. He did, at one time, voluntarily maintain a website for the Church of Israel but since then has used the name of the Church of Israel in bad faith to attack the reputations of its members and clergy.
In addition, Respondent registered the names to prevent the Church of Israel from using its own name for its Christian mission on the internet. He did so to harass and disrupt the members of the Church of Israel, to confuse and befuddle its outreach ministry and its remote members and other churches around the world, and to personally and directly attack Dan Gayman.
RESPONSE OF RESPONDENT TO CONTENTION NUMBER 3:
Respondent denies that it registered <reformedchurchofisrael.com> for the purpose of stealing the identity of the true Church of Israel in Shell City and thus this argument cannot be used by Complainant to show bad faith.
Respondent further states that he has the right of free speech and criticism and this conduct cannot constitute bad faith.
Respondent advises he is a member of the "Church of Israel" in Texas and has attended there for some 14 years.
COMPLAINANT'S ADDITIONAL SUBMISSION UNDER CONTENTION NUMBER 3:
Complainant advises there is no Church of Israel, redeemed, reformed, or otherwise. Those domain names are being used only on the internet to mislead and confuse visitors and therefore this is evidence of bad faith.
RESPONDENT'S ADDITIONAL RESPONSE UNDER CONTENTION NUMBER 3:
Respondent asserts that the reformed Church of Israel has met regularly since its inception and is a legitimate ministry.
Identical and/or Confusingly Similar Policy ¶ 4(a)(i)
I find the issues on this element in favor of Respondent. Complainant has not asserted that it holds a trademark or service mark, but only that the domain names in issue are confusingly similar to its name, Church of Israel.
Respondent asserts that Complainant's name is "the Church of Israel in Schell City Missouri," not Church of Israel.
I find that, because Complainant's purported "mark" was not used in commerce, it does not receive trademark protection under the Policy. See Molecular Nutrition, Inc. v. Network News & Publ'ns c/o Dennis Baratta, FA 156715 (Nat. Arb. Forum June 24, 2003) (recognizing "common law" trademark rights as appropriate for protection under the Policy "if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services"); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).
I find that Complainant has no rights in the <gaymangate.com> domain name because secondary meaning is not established and because Complainant does not have standing to assert the rights of Dan Gayman. See Final Report on the Second WIPO Domain Name Process, Sept. 3, 2001 ("Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations"); see also Townsend v. Birt, D2002-0030 (WIPO Apr. 11, 2002) (finding that the protection of an individual politician's name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation); see also Sumner, p/k/a Sting v. Urvan, D2000-0596 (WIPO July 24, 2000) ("It is clear from this statement that personality rights were not intended to be made subject to the proposed dispute resolution procedure"); see also Backstreet Boys Prod., Inc. v. Zuccarini, D2000-1619 (WIPO Mar. 27, 2001) (dismissing the Complaint because Complainant did not own the trademark); see also NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying the Complaint because Complainant was not the owner of the trademarks).
Rights and Legitimate Interests Policy ¶ 4(a)(ii)
I find the issues on this element in favor of Respondent.
I find that, as religious institutions go, the terms "Church of Israel" are generic. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) ("genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration").
I find that Respondent registered some of the domain names on behalf of another "church" commonly known as the Church of Israel. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent's company name); see also Always On UPS Systems Inc. v. Always-On, Inc., FA 114467 (Nat. Arb. Forum Aug. 22, 2002) (finding that as Respondent submitted evidence, via a press release and product information, that it used Complainant's alleged common-law mark to identify the Respondent and its business, it had rights or legitimate interests in the disputed domain names).
I find that Respondent's use of the disputed domain names falls within the realm of free speech, and since it does not mislead users about the source of the content of the associated website, its use of the domain names is legitimate. See Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that Respondent has rights and legitimate interests in the domain name where Respondent made a non-commercial use of <bajaboats.com> and received no funds from users of the site connected to the domain name); see also Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a "complaint" website about Complainant's products); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) ("the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain").
Registration and Use in Bad Faith Policy ¶ 4(a)(iii)
I find the issues on this element in favor of Respondent.
To begin with, I find that Complainant's allegations of bad faith conduct are not within the scope of the Policy because they relate to contract or agency claims. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee's registration of a domain name in his own name and subsequent refusal to transfer it to its employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel); see also Discover New England v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred).
I find that Respondent's free speech rights preclude a finding of bad faith. See Legal & General Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion is displaced by the criticism content at Respondent's website and that such a "low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet").
I also find that, even if the domain names were used in bad faith, they were not registered in bad faith, as the Policy requires as a prerequisite to relief. See Caterpillar Inc. v. Off Road Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where Complainant failed to submit any evidence that the domain name was registered in bad faith); see also Eddy's (Nottingham) Ltd. v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration where Respondent initially used the web site to promote Complainant's goods, but later changed the content of the web site, causing confusion with Complainant's mark).
Reverse Domain Name Hijacking UDRP Rules 1 & 15(e)
I do not find Complainant guilty of reverse domain name hijacking.
Respondent requests a finding that Complainant 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." See generally Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, Respondent must show that Complainant brought the claim in bad faith despite the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name).
Respondent has not advanced specific grounds upon which its reverse domain name hijacking claim is made.
Even though Complainant failed in its burden of proof on all three necessary elements of its Complaint, I find that the Complaint was not brought in bad faith. See, Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001), noting that a finding of reverse domain name hijacking requires bad faith on Complainant's part, which was not proven.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
I find the issues in favor of Respondent.
I find the issues in favor of Respondent.
I find the issues in favor of Respondent.
It is Complainant's burden to establish all three elements required under the ICANN Policy in order to be entitled to relief. Complainant has failed to establish any of the three elements. Therefore it is ORDERED that Complainant's request to transfer the domain names in issue to the Church of Israel is denied.
Timothy D. O'Leary
November 14, 2003