WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Iglesia De Dios Ministerial de Jesucristo, Inc. v. Whois Privacy Rights, Inc.

Case No. D2015-0656

1. The Parties

The Complainant is Iglesia De Dios Ministerial De Jesucristo, Inc. of Weston, Florida, United States of America (“USA” or “US”), represented by The Law Office of Bradley Gross, P.A., USA.

The Respondent is Whois Privacy Rights, Inc. of Scottsdale, Arizona, USA, represented by “Sons of Thunder”, who are not further identified.

2. The Domain Names and Registrars

The disputed domain names <cgmjc.com> and <cgmjci.com> are registered with GoDaddy.com, LLC.

The disputed domain names <cgmjci.org>, <idmji.net>, <idmj.net> and <idmj.org> are registered with eNom.

Collectively, the six disputed domain names are referred to as the “Domain Names”, and the two registrars as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2015. On April 14, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On April 14, 2015, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details as to the Domain Names for which it is the registrar. On April 15, 2015, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details as to the Domain Names for which it is the registrar.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. The Response was filed with the Center on May 3, 2015.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 15, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a nonprofit corporation organized under the laws of Florida, USA and headquartered in Weston, Florida. It presents itself as the current form of an organization for a Christian church founded in Colombia in 1972 by the late Pentecostal Christian preacher Luis Eduardo Moreno, his mother María Jesús Moreno, and his wife María Luisa Piraquive, who now heads the church. The Complainant owns and operates more than 800 houses of worship in 46 countries, with “hundreds of thousands of parishioners”. The Complainant is known by both the Spanish and English versions of its name and acronym, Iglesia de Dios Ministerial de Jesucristo Internacional (IDMJI) and Church of God Ministry of Jesus Christ International (CGMJCI), respectively. The Complainant uses these forms of its name and acronym, in Spanish or English, on signage and publications as well as on its website.

The Complainant operates a website, in Spanish and English versions, at “www.idmji.org” (the “Complainant’s website”). The Complainant says it has used this domain name since 2002, although the Respondent asserts that the Complainant’s website was actually published at “www.webiglesia.com” until 2014. The Complainant also operates a Twitter account, @IDMJIoficial, with a Twitter page at “https://twitter.com/idmjioficial”, and a Facebook page at “www.facebook.com.idmjioficial” (collectively, the “Complainant’s social media pages”).

The Complainant owns the following registered US trademarks:

The Complainant also claims US common law rights in CGMJCI as an unregistered mark.

The Respondent’s name has the appearance of a domain privacy service, but it is not clear that it corresponds to a legal entity of any kind. The WhoIs databases of both Registrars show “Contact Protected” or “Contact Protection” in place of the registrant name, administrative contact name, and technical contact name, for all six Domain Names. The registrant’s organization is given as “Whois Privacy Rights, Inc.”, which is therefore listed as the Respondent in this proceeding, at a postal address in the same building in Scottsdale, Arizona, USA that houses the Registrar of two of the Domain Names, GoDaddy.com, LLC (“GoDaddy”). However, GoDaddy offers the services of a different domain privacy service, Domains By Proxy, LLC, a Delaware limited liability company registered as a foreign company doing business in Arizona. By contrast, the online database of the Arizona Corporation Commission does not contain any listing for a company – foreign or domestic, active or inactive – doing business in Arizona under the name of the Respondent. Similarly, the Registrar for the other four Domain Names, eNom, offers a domain privacy service under a different name, “Whois Privacy Protection Service”, not “Whois Privacy Rights, Inc.”

Search engine queries do not reveal any company named “Whois Privacy Rights, Inc.” nor any domain privacy service advertised under that name. However, that name, with the same purported address at GoDaddy’s headquarters in Scottsdale, Arizona, appears as the registrant in the WhoIs data for a handful of other domain names in Spanish. Two of these clearly have a religious theme: <santasescrituras.net> (“holy scriptures”) and <diosesluzyamor.net> (“God is light and love”). Neither currently resolves to an active website.

According to the Registrars’ respective responses to the Center in this proceeding, the Domain Names were created on the following dates:

The Domain Names currently resolve to the same page headed “IDMJ Investigación” on the Twitter social media website “www.twitter.com” (the “Respondent’s Twitter page”). The page features the Spanish phrases “Periodismo de Investigación” (“investigative journalism”), “Libertad de Prensa” (“freedom of the press”), and “Libertad de Expresión” (“freedom of expression”). This text is followed by a disclaimer of affiliation with the Complainant, in Spanish and English: “NO AFILIADOS CON: IDMJ IDMJI Iglesia (NOT affiliated with: CGMJC CGMJCI church)”. The page archives the Respondent’s Tweets, but these can be viewed only by followers of the @IDMJI Twitter account.

The Complaint indicates that the Domain Names formerly resolved to Twitter pages displaying a logo similar to one of the Complainant’s design marks used on the Complainant’s Twitter page. The Complaint attaches a screen shot of the Respondent’s Twitter page displaying that logo, which does not currently appear on the Respondent’s Twitter page. The logo featured the words “Iglesia de Dios Ministerial de Jesucristo”, lacking only the final word “Internacional” that appears in the Complainant’s standard-character mark and design mark. The logo shown in the screen shot of the Respondent’s Twitter page used different fonts and colors than the Complainant’s design mark, but it had a similar appearance, with the words “Iglesia de Dios” displayed in a larger font and arching over the other words. The Respondent’s Twitter page included at that time (as it does now) a disclaimer of affiliation with the Complainant. A similar disclaimer also appeared above individual posts of Tweets and emails displayed on the Respondent’s Twitter page, as shown in the screen shot. These posts included critical comments, in Spanish, from members or former members of the Complainant’s church and of MIRA, a Colombian political party ideologically aligned with the Complainant, alleging “calumnia” (slander) and “persecución” (persecution) by officials of the Complainant’s church in Colombia.

MIRA is the Movimiento Independiente de Renovación Absoluta (Independent Movement of Absolute Renovation), a political and social movement in Colombia originating with members of the Complainant’s church. It is also a registered political party and nonprofit organization in Colombia. As indicated on the party’s website at “www.movimientomira.com” and the Spanish Wikipedia articles on “Movimiento Independiente de Renovación Absoluta” and “Alexandra Moreno Piraquive”, MIRA’s co-founder and first president (2003-2008) was Alexandra Moreno Piraquive, a Colombian lawyer and senator who is the daughter of Luis Eduardo Moreno and María Luisa Piraquive, the Complainant’s founding preacher and current leader, respectively. It appears that other MIRA political candidates are also members of the Complainant’s church. Some of the critical remarks posted on the Respondent’s Twitter page appear to come from current or former members of the Complainant’s church and the MIRA political party.

The Response is not forthcoming about the identity of the actual person or persons with an interest in the Domain Names. The Response was signed and submitted in the name of “Sons of Thunder”, at the email address “[email protected]”. This seems to be a Biblical reference to Mark 3:17, where Jesus called twelve apostles, including “James the son of Zebedee and John the brother of James (to whom he gave the name Boanerges, that is, Sons of Thunder)” (New Testament, English Standard Version). The domain name <colombia.com> is used for a Spanish-language portal for Colombian news, entertainment, and advertising, with a facility for personal email accounts. The posts on the Respondent’s Twitter page shown in the screen shot attached to the Complaint expressed Pentecostal Christian views and disaffection with officials of the Complainant’s church and of the MIRA political party in Colombia. These themes dominate in the Response itself.

The Response characterizes the Respondent in the plural as “legitimate members of the original and true IGLESIA DE DIOS MINISTERIAL DE JESUCRISTO (COLOMBIA), founded by Brother LUIS EDUARDO MORENO MORENO (WIKIPEDIA) in 1972 in Colombia.” The Response does not purport to be submitted on behalf of that church, however, but by some of its unidentified “legitimate members” who registered all of the Domain Names. Hence, this Decision will refer to these otherwise unidentified persons collectively as “the Respondent”. The Response explains the Respondent’s reticence about identifying its contributors as follows: “Some of us are refugees in the United States of America, for that reason our personal information is not public.”

The Respondent does not recognize the Complainant as the legitimate continuation of the church founded in Colombia by Luis Eduardo Moreno Moreno. The Response attaches a 2002 letter from the municipal government of Bogotà, confirming that the Iglesia de Dios Ministerial de Jesucristo (to which the Respondent claims allegiance) was recognized as a nonprofit entity by the Ministry of Justice in 1997, while the Iglesia de Dios Ministerial de Jesucristo Internacional (the name used by the Complainant) was separately recognized as a nonprofit entity by the Ministry of the Interior (the date of this event is not given). The municipal government consequently declared that the two are not the same church. The Response states that the Complainant’s church was registered in Colombia in 1997 and in the State of Florida, USA in 1998. Thus, it appears that both entities, with nearly identical names, received legal recognition in Colombia. However, the record does not indicate the current status of the Respondent’s church or establish its existence as a legal entity in the period 2011-2013 when the Domain Names were registered.

5. Parties’ Contentions

A. Complainant

The Complainant observes that the Domain Name created first, <idmji.net>, is identical to the Complainant’s registered IDMJI mark. Two others, <idmj.net> and <idmj.org>, are nearly identical, lacking only the final letter “i”.

Oddly, the Complaint does not articulate an argument that the remaining three Domain Names, <cgmjc.com>, <cgmjci.com>, and <cgmjci.org>, are identical or confusingly similar to the Complainant’s unregistered CGMJCI mark, for which the Complainant claims common law protection under US law. Such a contention is implied, however, in the Complainant’s discussion of the second and third elements of the Complaint.

The Complainant states that it has never given permission for the Respondent to use either the Complainant’s registered IDMJI mark or its unregistered CGMJCI mark. In further support of its contention that the Respondent has no rights or legitimate interests in the Domain Names, the Complainant observes that the WIPO Global Brand Database does not reveal a registered mark corresponding to the name formerly displayed on the Respondent’s Twitter Page, “Iglesia de Dios Ministerial de Jesucristo” (without the final word “Internacional” that appears in the Complainant’s name). The Complainant also observes that the content of the Respondent’s Twitter Page does not demonstrate any use of the Domain Names in connection with a bona fide offering of goods or services.

The Complainant argues that the Respondent registered and used the Domain Names in bad faith, citing the registration of the six Domain Names as a “pattern” of creating domain names based on the Complainant’s marks and then using them for Twitter pages discussing the Complainant, with a logo mimicking the Complainant’s. The Complainant infers that the Respondent registered the Domain Names to prevent the Complainant from obtaining them. The Complainant also contends that the disclaimers of affiliation on the Respondent’s Twitter page do not “dissipate” the Respondent’s bad faith.

B. Respondent

The Respondent, apparently not native English-speakers and not represented by counsel, submitted a detailed letter with annexes that the Panel will treat as the Response, taking into account the fact that it does not include the required certification of accuracy and completeness (Rules, paragraph 5(b)(viii)).

The Respondent points out that the Complainant obtained trademark registration for IDMJI in December 2013, after all of the Domain Names were registered, and never registered CGMJCI as a trademark.

The Response charges that the Complainant illegally seized properties of the original church, as well as appropriating its name (adding only the word “Internacional”). The Response argues that establishing and promoting the MIRA political party is contrary to the teachings of Brother Luis and violates the conditions for maintaining the Complainant’s nonprofit status in Colombia and the USA. The Response is largely devoted to such criticism of the Complainant, citing and attaching media articles about allegations that church leaders have been involved in political corruption, drug trafficking, money laundering, and physical assaults, as well as denying the pulpit to disabled congregants. It appears that the Complainant has brought defamation actions against the publishers of some of these stories.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.

The Complainant indisputably holds a US registered trademark for IDMJI, which the Panel finds sufficient to meet the standing requirement with respect to the Domain Names <idmji.net>, <idmj.net>, and <idmj.org>. Disregarding the non-distinctive generic Top-Level Domain names “.net” and “.org”, these three Domain Names are identical or confusingly similar to the Complainant’s IDMJI mark. The fact that the mark was registered after all three Domain Names were registered is not relevant to the standing issue under the first element of the Complaint, although it may be relevant to the second and third elements of the Complaint. Accordingly, the Panel concludes that the first element of the Complaint has been established with respect to the Domain Names <idmji.net>, <idmj.net>, and <idmj.org>.

The Panel does not find it necessary to rely on the Complainant’s standard-character and design marks featuring the Complainant’s full name in Spanish or English. These are problematic because (a) they do not feature the initials used in the Domain Names and therefore have a very different appearance, and (b) they are registered only on the Supplemental Register of the United States Patent and Trademark Office (“USPTO”). The Supplemental Register is reserved for currently non-registrable marks that are capable of acquiring distinctiveness over time. See Lanham Act, 15 United States Code sec. 1091(a). Consequently, this Panel would normally require evidence that a mark registered on the Supplemental Register has actually acquired a secondary meaning associated with the complainant. This is not necessary, however, with regard to the IDMJI mark, which is a standard-character mark registered on the USPTO Principal Register, and that mark suffices to support the Complainant’s standing to challenge three of the Domain Names.

The Complaint also mentions a claim to “significant” common law rights in CGMJCI as an unregistered mark, “as discussed further below”. That discussion does not appear in the Complaint, however, and there is little evidence in the record that the Complainant uses CGMJCI as a common law mark in English-speaking countries. See WIPO Overview 2.0, paragraph 1.7, which reports the consensus view of WIPO UDRP panels as follows:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”

Such evidence is lacking in the Complaint and attachments. Moreover, the Complainant’s two marks on the Supplemental Register that display the full English name of the Complainant do not feature its initials. Hence, the Panel must dismiss the Complaint with regard to the Domain Names <cgmjc.com>, <cgmjci.com>, and <cgmjci.org>, for failure to establish common law rights sufficient to satisfy the first element of the Complaint.

Given the factual similarity in the use of all of the Domain Names, however, the Panel notes that the conclusions below on the second and third elements of the Complaint would apply equally to all six Domain Names.

B. Rights or Legitimate Interests

The Policy provides a non-exclusive list of circumstances that demonstrate rights or legitimate interests in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent claims to follow the “original” church established by Brother Luis, but that church did not register the Domain Names or submit the Response in this proceeding. Apart from claiming to be “legitimate members” of that church, the Respondent does not demonstrate a cognizable interest in any rights that church may hold in its name or in the Spanish abbreviations “idmj” or “idmji”, and it makes no claims to such interests in the English abbreviations “cgmjc” or “cgmjci”. Moreover, the parties agree that the Respondent has not used the Domain Names in connection with an offering of goods or services.

But the point that neither party addresses in its pleadings is that the Respondent’s use of the Domain Names seems to fit the third example of rights or legitimate interests listed in the Policy: “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. There is no evidence of commercial use of the Domain Names, and the Response indicates that they have been used only to redirect to the Respondent’s Twitter page. That page does not advertise any products or services, and the Respondent denies ever offering the Domain Names for sale. Screen shots of the Respondent’s Twitter page indicate that the page is used for critical commentary about the Complainant.

As reported in WIPO Overview 2.0, paragraph 2.4, UDRP decisions reflect “two main views” on the question, “Can a criticism site generate rights and legitimate interests?” Some decisions (the first view) hold that the right to criticize simply does not extend to registering and using a domain name that is identical or confusingly similar to a trademark, while others (the second view) conclude that “the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial”, even if the domain name itself does not connote criticism. See also WIPO Legal Index, sec. II.B.4.b.(i), “Criticism & Commentary”.

The second approach is often taken “in cases involving only US parties or the selection of a US mutual jurisdiction”, perhaps because the balancing of free speech and trademark rights is fairly well established in US case law. Here, the Complainant is a US corporation with trademarks registered in the US, which is also asserting an unregistered mark as protected by US common law. The Response appears to be prepared by individuals residing in Colombia and the US. Thus, the Panel finds it appropriate to consider US law, which recognizes “fair use” and “free speech” defenses to trademark infringement and dilution claims. See 4 J. McCarthy, McCarthy on Trademarks and Unfair Competition secs. 31:139 (free speech defense), 33(b)(4) (fair use defense), 24:124 (fair use defense to trademark dilution). Often cited is the appellate court decision in Rogers v. Grimaldi, 875 F2d 994 (US 2nd Circuit Court of Appeals, 1989), concluding that trademark interests should prevail “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” This principle has been applied in US judicial decisions rejecting infringement claims against defendants using domain names, based on trademarks, exclusively for genuine criticism. See, e.g., Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (US 9th Circuit Court of Appeals, 2005) (a domain name used for a website devoted to critical commentary, without advertising or direct links to commercial websites, did not represent “a use in connection with a good or service”).

The Respondent here is not asserting fair use as a pretext for commercial gain (see WIPO Overview 2.0, paragraph 2.4); the record does not demonstrate any use of the Domain Names other than for genuine criticism. The Complainant may not consider the criticism well founded, but the question here is not the accuracy but the sincerity of the commentary. In the absence of facts indicating a pecuniary or malicious motive, the Panel accepts the Respondent’s statements to the effect that those involved with the Domain Names acted out of concern over a rivalry between the Complainant and the “original” church to which they adhere, as well as specific instances of misconduct and departures from the teachings of their spiritual mentor Brother Luis.

The record here is mixed as to whether the Respondent intended confusion once a visitor reached the Respondent’s Twitter page, which is sometimes given as a factor to consider in assessing fair use. The Respondent’s Twitter page formerly displayed a logo similar to the Complainant’s (although it apparently gave the correct name for the church that considers itself the “original” church founded by Brother Luis), but it also included disclaimers of affiliation with the Complainant, both at the outset and with each individual post. Thus, a visitor could not remain long at the site without realizing that it was not affiliated with the Complainant.

The Panel finds on the available record that the Respondent has made only “legitimate noncommercial or fair use” of the Domain Names, which defeats the second element of the Complaint.

C. Registered and Used in Bad Faith

The conclusion on the second element of the Complaint is dispositive. Nevertheless, the Panel will state for the record its conclusions on the third element as well, the alleged bad faith of the Respondent.

The Policy gives non-exclusive examples of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. These include the following on which the Complainant implicitly relies:

“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; …”

The Respondent does not deny prior knowledge of the Complainant; indeed, the Domain Names are used for a Twitter account and Twitter website page discussing the Complainant’s alleged misdeeds. As discussed above in connection with the second element of the Complaint, the Panel concludes that the Respondent can claim fair use in employing domain names based on the Complainant’s initials for genuine critical commentary, which militates against a finding of bad faith.

Further, the Panel does not find that the Respondent acted to prevent the Complainant from using a domain name corresponding to its names or acronyms. Although the Respondent registered the six Domain Names with strings identical or nearly identical to the Complainant’s Spanish and English initials, the Complainant was able to register a corresponding domain name, <idmji.org>, which it uses at the time of this Decision. And it is questionable whether the Respondent’s registration of the six Domain Names at issue in this proceeding would constitute a “pattern” of attempting to prevent trademark owners from registering corresponding domain names; “a pattern normally requires more than one relevant example.” See WIPO Overview 2.0, paragraph 3.3.

Finally, while it is clear that the Respondent targeted the Complainant for critical commentary, it is not established on this record that the Respondent targeted the Complainant’s marks. As noted above in assessing the first element of the Complaint, the Complainant has not, in this proceeding, established common law rights to its English acronym CGMJCI, which is implicated in three of the Domain Names. For the Complainant’s IDMJI mark, the relevant string for the other three Domain Names, the timing is wrong. The Complainant did not even apply to register that trademark until after the Respondent had registered all of the Domain Names. The Complaint does not include sufficient evidence to establish that IDMJI was protectable as a common law mark before it was registered, or that the Respondent was likely aware of the Complainant’s intentions to register the mark.

The Respondent likely sought to attract Internet users to its Twitter page criticizing the Complainant by using the Complainant’s Spanish and English acronyms, or variations thereof omitting the final “i”. But the record does not establish that these were protected as trademarks when the Respondent registered the Domain Names. Thus, it is not logical to infer that the Respondent had the Complainant’s marks in contemplation when it registered the Domain Names. See WIPO Overview 2.0, paragraph 3.1.

The Panel concludes, for all these reasons, that the third element of the Complaint has not been established.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: May 29, 2015