Adventist.com UDRP Claim Denied

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:

Respondent states its intention to challenge the validity of that (and another) registration before the United States Trademark Trial and Appeal Board (“TTAB”) in keeping with its argument that the word “Adventist” is generic. It is not the mandate of this Panel to investigate matters already determined by the USPTO and absent evidence of a decision of the TTAB that the trademark be removed from the Principal Register, the Panel finds that trademark rights have been established for the purposes of paragraph 4(a)(i) of the Policy. Debrett G. Lyons, Esq.

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:

So, for example, referring to the Everett Affidavit, the Merriam – Webster Dictionary defines “Adventism” as “(1) the doctrine that the second coming of Christ and the end of the world are near at hand, but (2), the principles and practices of Seventh-Day Adventists.” The Collins English Dictionary – Complete & Unabridged 2012 Digital Edition defines “Adventist” as “a member of any of the Christian groups, such as the Seventh-Day Adventists that hold that the Second Coming of Christ is imminent.” Further, Dictionary.com defines “Adventist” as “(1) … a member of any of certain Christian denominations that maintain that the Second Advent of Christ is imminent, (2) of or relating to Adventists.” Panel notes that this is then followed by a so-called “contemporary example”, being: “The daughter of 7th Day Adventist missionaries, Heidi Nelson was raised with the expectation that she would do well.” The Encyclopedia Brittanica lists an “Adventist” as: “…[a] member of any one of a group of Protestant Christian churches that trace their origin to the United States in the mid-19th century and that are distinguished by their emphasis on the belief that the personal, visible return of Christ in glory (i.e., the Second Coming) is close at hand, a belief shared by many Christians. While most Adventist groups remain relatively small, the Seventh-day Adventist Church has become a significant global body, with congregations in more than 200 countries and a membership of more than 14 million.” In terms of the Policy, these definitions are not without ambiguity. A legitimate interest might exist when a word is “generic” in the sense that it relates to, or is characteristic of a whole group or class. However, the position is quite different if the word principally connotes to the public a single enterprise. Debrett G. Lyons, Esq.

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:

In redacted form with citations removed, Complainant’s submissions are that: “… the record is clear that Respondent acquired the domain name with the sole intention of selling the domain name for an exorbitant price. The listing currently displayed on Respondent’s web site offers to sell the domain name for $1.2 million dollars. While this is an offer to the general public rather than a direct offer to Complainant, it is still sufficient to demonstrate Respondent’s bad faith. Furthermore, it is apparent that the reason Respondent is demanding such an exorbitant price for the domain name is due entirely to the association of this domain name with Complainant’s ADVENTIST mark. The listing refers to as a “hand-picked premium domain name” and states that “business brandability is very high for adventist.com”. Obviously, this “business brandability” is based upon the extremely high level of consumer recognition of the mark, due to the efforts of Complainant and its predecessors over the last 150 years to promote the mark and to associate the mark with Complainant’s goods and services. Moreover, as Complainant is the legitimate owner of rights in the ADVENTIST mark, it is likely that Respondent’s goal in acquiring the domain name was to sell the domain name to Complainant at an excessive price.” Debrett G. Lyons, Esq.

The Respondent states:

“…the impressive number and variety of individuals, entities, organizations, interest groups, and for-profit companies operating under names that contain the word ADVENTIST indicate that the domain name … could reasonably be expected to be attractive to any number of potential purchasers, all of whom would have justifiable reasons to own it. For example, anyone who practices Adventism, disagrees with its teachings, has left the religion, wants to educate the public about it, wants to connect with others affiliated with it, or wants to explore its history might want to – [use the domain name].”Debrett G. Lyons, Esq.

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!

Previous
Next

Leave a Reply

Login Form

Address

Dot Powered, LLC
PO Box 1981
Montgomery, TX 77356
Phone: (512) 763-7283
Website: http://brand.bar
Email: info@brand.bar