Holy Mother World Networks of Toronto, Canada, brought A URDP against domainer Gregg Ostrick, of GNO, Inc. on the domain name HMWN.com who was represented by John Berryhill.

Holy Mother claimed that the 4 letter domain name represented their name which they had trademark rights to and that the domain holder showed bad faith by parking the domain and having a for Buydomains.com for sale link on it.

Holy Mother owned the .net version of the .com domain they brought the UDRP on

Here are the facts and relevant findings from the three member panel who ruled in favor of the domain holder, with a dissenting opinion.

“The Complainant a Canadian non-profit corporation founded on July 25^th, 2001 carries “broadcasting services in Canada as part of the worldwide Associazione Radio Maria (the World Family of Radio Maria). The Complainant’s radio station does not feature commercial advertisements and operates on the basis of voluntary contributions. It is also broadcast over the Internet on a website at “www.hmnw.net” which it has operated since March 4, 2001.”

“The Respondent registered the Disputed Domain Name on December 27, 2002.”

“The Complainant submits that HMWN which is an acronym for its trading name “Holy Mother World Networks” functions as a trade mark which is well-known by the Canadian public and which has been used by the Complainant since 2001. ”

“The Complainant says that it has also transmitted its radio station over its website at “www.hmwn.net” since that time. It says further that HMWN resolves through every major search engine to a set of first results which link to its website and as a consequence it submits that it owns unregistered trade mark rights in HMWN for the purposes of the Policy and that the Disputed Domain Name is identical or confusingly similar to its mark and to its domain name “www.hmwn.net”.”

“The Complainant submits that it only recently became aware of the Respondent’s ownership and use of the Disputed Domain Name. ”

“The Complainant says that as its HMWN mark is well-known in America and especially in Canada that the Respondent must have known of the Complainant’s mark and by registering the disputed Domain Name was fraudulently exploiting the reputation of the HMWN trade mark by seeking to attract Internet users to a website which was not connected with the Complainant. Further, the Complainant submits that inclusion of a note on the Respondent’s website “The domain hmwn.com is for sale. ”

“To purchase, call BuyDomains.com at +1.339-222.5147 or 866-836-6791. Click here for more details” indicates that the Respondent has no legitimate interest in the Disputed Domain Name other than to sell it at a profit or to use it to generate income from paid advertising links.”

“The Complainant says that evidence of the Respondent’s intention to make a profit from the Disputed Domain Name is provided by the notice on the Registrar’s website that the Disputed Domain Name is for sale for USD 8.99 but if one follows the link from the Respondent’s website it appears that the Respondent is seeking to sell the Disputed Domain Name for USD 2500.”

“Under the first element of the Policy, the Respondent submits that the Complainant has not demonstrated evidence of its trade mark rights. Although it admits that the Complainant’s corporate registration of “Holy Mary World Networks of Canada” and use of that name establishes trade name rights, the Respondent disputes that this supports a finding of unregistered trade mark rights in the acronym HMWN.”

“The Respondent says that although the Complainant provides evidence of its current “About Us” section on its Internet page and of current results on search engines, it provides no evidence as to the Complainant’s use of the HMWN mark at the date of registration of the Disputed Domain Name, namely back in December 2002.”

“In addition the Respondent submits that the letters HMWN have biblical significance in their own right as they are derived from a Latin transliteration of a Greek word for “us” or “ours”. The Respondent notes that undertaking a Google search for the acronym together with the term “Greek” results in a series of references to the biblical meaning of this acronym, however the significance of this meaning is never referred to by the Complainant. As a consequence the Respondent submits that the Complainant has not demonstrated contemporaneous evidence of trade mark rights in the HMWN acronym, has provided no evidence of advertising, listenership, promotional materials or any of the other typical indicia of unregistered trade mark rights and should not be entitled to appropriate to itself a biblical term without being able to demonstrate such trade mark rights.”

“Overall the majority of the Panel considers that the Complainant has not met the burden upon it under the first element of the Policy of demonstrating that HMWN has become a distinctive identifier of the Complainant’s radio broadcast service such as would support a finding of unregistered trade mark rights at the relevant date. Accordingly the majority finds that the Complaint does not succeed under the first element of the Policy and therefore cannot succeed overall.”

“The majority of the Panel notes that even had it been possible to afford the Complainant the benefit of the doubt in relation to the first element, the majority would in any event have been unable to make a finding of bad faith under the third element of the Policy, for the reasons set out below.”

“The majority does not consider that the Complainant has met its burden of showing that the Respondent registered and used the Disputed Domain Name in bad faith.”

“In particular the majority finds that there is insufficient evidence of bad faith registration of the Disputed Domain Name. As there is inadequate evidence of goodwill and reputation in Canada to support a finding of unregistered rights, there is no basis on which the majority can infer that there is even a likelihood that the Respondent, based in Louisiana at the relevant time, was necessarily aware or should have been aware of the Complainant’s radio service or use of the HMWN acronym or mark.”

“The Panel notes that as a general rule the registration or use of a domain name for the purpose of resale and in particular, the registration of domain names or groups of letters which are generic in nature and which have no trade mark significance is not prohibited per se under the Policy. ”

“It is only when this activity is aimed at taking advantage of another’s trade mark rights in circumstances that import bad faith that the Policy may intervene. It follows that use of such a domain name for pay-per-click advertising on a domain name registrar’s parking site is not prohibited per se under the Policy.”

“In this case the Respondent has permitted the use of pay-per-click advertising at its place keeper site and the links chosen by the site were at least in part religious in nature in that they concerned the following topics: the Hebrew Dictionary, Latin Translation, Hebrew Translation, Hebrew Words, English Greek, Greek Bible Translation, Greek Dictionary, Bible Words, Word Translation and a Bible Dictionary. ”

“However none of these topics appear to compete directly with the Complainant’s broadcasting service, even if they have a religious flavour. ”

“The Respondent suggests that this is not surprising as a consequence of the way in which the advertising engine’s relevance search tools would operate in relation to a term such as HWMN which is a Latin transliteration of a biblical Greek word for “us” or “ours”. ”

“In the majority’s view these links do not demonstrate an obvious attempt to take advantage of the Complainant’s service nor to confuse Internet users into moving to competing services and this is even more so the case in circumstances, as outlined above, that it seems unlikely that the Respondent was aware of the Complainant’s usage of HMWN in Canada. On balance the majority does not consider that these links are indicative of use in bad faith on the part of the Respondent and prefers the Respondent’s explanation of the reason for these links.”

“Finally, the Complainant alleges that the sale offer on the Respondent’s website is indicative of bad faith and that this was the main purpose for registration of the Disputed Domain Name in the first place. The Panel notes that if this had been the case then it would be surprising for the Respondent to have held the Disputed Domain Name for approximately 9 years without approaching the Respondent directly with an offer for acquisition. In the majority’s view this is simply not a credible argument in these circumstances.”

“As a result the majority finds that the Respondent neither registered nor used the Disputed Domain Name in bad faith and the Complaint also fails in relation to the third element of the Policy.”

Nice to see a majority of another panel citing the passage of time as a argument not to respect the claim of the “trademark holder”.

However one panelist filed a dissenting opinion stating:

“I respectfully dissent from the majority decision of the Panel on the basis of the following considerations.”

“The Respondent is a sophisticated domainer registering several four letters domain names in order to use them as landing pages with links to various commercial activities and/or to sell them.”

“All the homepages of the websites corresponding to the 4 letters domain names owned by the Respondent have the same layout, they just change the background colour and the field of the commercial activities they are linking to, except the homepage at the Disputed Domain Name at the time of filing the Complaint.”

“At that time, the homepage at the Disputed Domain Name made reference to the Bible, without explaining why, but as all the other Respondent’s homepages it had links to commercial activities, according to the Complainant and without the Respondent proving contrary.”

“The reference to the Bible is explained in the Response, but in consists of a clear “after-the-fact” explanation.”

“Today the homepage at the disputed domain name has exactly the same layout as all the other Respondent’s homepages, with links to commercial activities and no reference whatsoever to the Bible.”

“While I was wondering why, among all the homepages of the websites corresponding to the 4 letters domain names owned by the Respondent, only the one corresponding to the disputed domain name had a specific reference to the Bible, that is to field of activity of the Complainant and why today the Respondent has changed the content of the homepage at the disputed domain name, deleting all the references to the Bible that were explained in such minute details in the Response, I reached the following conclusions.”

“I find that the first element of the UDRP has been proved, since the Complainant enjoys unregistered trademark rights on the acronym HMWN (used in Internet as showed in the Complainant’s official website at “www.hmwn.net” as well as results of Internet engines searching) and I further find that the Respondent has registered as disputed domain name a 4 letters acronym corresponding to an unregistered trademark of a religious organization, the Biblical reference showing that he knew this acronym was used as a distinctive sign in the religious field, or that he should have known it, since he was and is a sophisticated domainer.”

“In fact several UDRP panel decisions have considered the specific responsibility of sophisticated domainers, by saying that “it is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights” (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Therefore in this Panelist’s view people who make a living from registering vast numbers of domain names must make a reasonable effort to ensure that they are not infringing on the trademark rights of third parties, either registered or unregistered, without engaging in what is usually called “wilful blindness” to the existence of such rights.”

“I also find that the second element of the UDRP has been proved since the Respondent was and is not commonly known as the disputed domain name and has not positively demonstrated that it has legitimate rights or interests in the disputed domain name being the explanation given in the Response a typical after-the-fact explanation.”

“I also find that the third element of the UDRP has also been proved, since the Respondent:”

“- at the time of registering the Disputed Domain Name could not, in this Panelist’s view, have ignored the existence of the unregistered trademark right of the Complainant, otherwise the Biblical reference has no apparent reason other than possibly being pretextual, (since this Panel cannot see how Respondent has proved to have rights or legitimate interests in the disputed domain name based on the after-the-fact explanation provided in the Response), and also in case of accepting such explanation that the pay-per-click landing site at the disputed domain name had religious links chosen automatically by the site itself, the fact that the Respondent is a sophisticated domainer would still lead to his responsibility of checking whether these links, and as a consequence the disputed domain name, were infringing third parties trademark rights;”

“- in using the Disputed Domain Name this Panelist’s assessment is that the Respondent is again acting in bad faith, because the reference to the Bible does not link, for example, to the explanation of the HMWN religious acronym which is provided the Response nor to any other, for, example, definitely noncommercial religious content, but rather to commercial activities from which the Respondent is apparently deriving a benefit. This Panel finds on balance that it is more likely that the Respondent is conducting such activities with a view to capitalising on likely confusion with trademark rights than merely trading on the claimed biblical meaning. The recent change in the relevant webpage, from which all reference to religion has disappeared, would further suggest to this Panelist the bad faith of the Respondent.”

“I am therefore of the view that the Complainant succeeded in proving all three elements of the UDRP.”

“Edoardo Fano”