While at the ICA Dinner, held during NamesCon last week, I had the pleasure of meeting Greg Everett, CEO of Philanthropist.com, and he and I quickly bonded over our connection to South Carolina and our shared knowledge of how to spell the town name of Moncks Corner. While chatting Greg shared with me that he was in the middle of a UDRP proceeding, where he was the respondent.
Apparently, a UDRP was filed on his Adventist.com domain name by the complainant, General Conference of Seventh-day Adventists. As this was my first time encountering someone who was personally going through these proceedings I was intrigued. Up until that moment, I had only ever read about the process and the subsequent decisions. While Greg hoped he would prevail, according to him, industry veterans were almost certain he wouldn’t.
Here’s a brief rundown on the case: General Conference of Seventh-day Adventists, who was represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, holds registered trademark rights on the word Adventist and uses the domain name Adventist.org to conduct business, alleged that the respondent, who was represented by Eve J. Brown of Bricolage Law, LLC, had an identical name- Adventist.com, had no legitimate interest in the use of the domain, and registered the domain name in bad faith. As a result, they wanted the domain name removed from the current registrant- the respondent, and transferred to them. The case was reviewed by The Honorable Neil Anthony Brown QC, Jeffrey Samuels and Debrett G. Lyons (chair) as panelists.
For those of you who are unaware- there are three elements a complainant must prove in order to have a domain name transferred. They are:
- The domain name registered by the Respondent has to be identical or confusingly similar to a trademark or service mark the complainant has rights to
- The respondent has no rights or legitimate interests in regards to the domain name
- The domain name has been registered and is being used in bad faith.
It was established straightaway that the Trademark element to this case was clearly proven by the complainant. Greg has said that he is working on a challenge to the mark because he believes Adventist to be too generic a word to be awarded a trademark, but the panel decided his intent did not preclude the fact that the complainant already had a legally registered trademark on the word with the USPTO regardless of what happens with the TTAB:
Moving on to the second element, the matter of the respondent’s rights or legitimate interest in the domain name-the responsibility fell to the respondent here, to prove that he had legitimate interest in the domain name so he did so by providing the panel with a statement that he is a domain name reseller and his selling domain names that are generic words is his business practice of offering goods and services. While the panel accepted his business practice as legitimate, ultimately, it seemed to be his outlining of what he considers to be a generic word and why the word adventist falls within that classification that struck a chord with the panelist:
The panel took both the respondent and the complainants argument into consideration and determined that the word adventist had a broader meaning beyond Seventh-day Adventists and subsequently decided that Greg had a legitimate interest in the domain name as relates to his business.
Because this second element- legitimate interest was established in the respondents favor, the claim was set to be denied, but the panel completes the process by working through the third element- was the domain name registered in bad faith? In my opinion, this is where the things get truly interesting. Here’s the complainants claim:
The Respondent states:
The panel states that issue of bad faith was a “close case.” My interpretation is that both make a good argument here, and while the association of the complainant’s trademark with the respondent’s domain name may have been the reason for the respondent’s registration and subsequent $1.2 million price tag, the complainant was unable to prove that was the respondent’s intent. In fact, the respondent proved a legitimate interest in the second element which would almost make it almost impossible to prove bad faith at this point.
You can research the case at UDRPSearch.com, case number 1706357, for more details.
I think i’ll spend more time learning about the UDRP claims process and proceedings, as I find it to be particularly interesting how the panelist decide these claims. I believe the outcome of this one will go down as surprising, to say the least. Greg, congratulations on being able to hold on to your domain name, and I wish you the best with your work over at Philanthropist.com!