The Complainant is Vicky Kalis, United Kingdom, represented by Inbrandgible Limited, United Kingdom (“UK”).
The Respondent is Kingdom Compassion Youth With A Mission, UK, represented by Keystone Law, UK.
The disputed domain name <kingdomcompassion.com> (the “Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 5, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. Upon request of the Respondent, the due date for Response was extended to August 1, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on July 31, 2019.
The Center appointed Ian Lowe, Michael D. Cover, and Andrew D. S. Lothian as panelists in this matter on September 2, 2019. The Panel finds that it was properly constituted. Each member of 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.
The Complainant operates a business under the name Kingdom Compassion, offering training, counselling, education, and care services with a Christian focus and basis. It was started in 2013. It has a website at “www.kingdomcompassion.org” promoting its services. The <kingdomcompasssion.org> domain name was registered on November 28, 2017. The Complainant originally registered the domain name <kingdom-compassion.org> on April 13, 2013, which is currently configured to forward to the Complainant’s website. The dates of creation of each of the Complainant’s domain names were obtained by the Panel from public WhoIs searches.
The Complainant is the proprietor of two United Kingdom registered trademarks: first, number 3048045 “Kingdom Compassion” and device, registered on October 31, 2014 (“the Complainant’s device mark”), as reproduced below:
and, second, number 3289738 word mark KINGDOM COMPASSION, registered on May 25, 2018.
The Respondent is a UK company limited by guarantee incorporated on January 13, 2015, whose full name is Kingdom Compassion Youth with a Mission. The Respondent’s predecessor began in 1985 as a partnership between “Youth With A Mission” (referred to as “YWAM”) and local churches, under the name “The Earls Court Community Project”, to reach out to vulnerable people in the Earls Court area of London. It started providing counselling, counselling training, and pastoral care services in the 1990s.
The Disputed Domain Name was registered on November 23, 2015. It resolves to the Respondent’s website at “www.kingdomcompassion.com” promoting its ministries and other services.
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark in which she has rights, in that the Disputed Domain Name is identical to its KINGDOM COMPASSION word mark registered in 2018, and confusingly similar to the Complainant’s device mark illustrated above, since the bird graphic should be disregarded. She also claims unregistered rights in KINGDOM COMPASSION, acquired through her carrying on business under that name since 2013. As evidence supporting those rights she relies on a Disclosing and Barring Service certificate dated May 22, 2013, indicating the name of her then employer as “Kingdom Compassion” and an email dated May 17, 2013, requesting the placement of an advertisement in a parish magazine promoting her business under the website “www.kingdom-compassion.org”.
The Complainant asserts that the Respondent could have no rights or legitimate interests in the Disputed Domain Name since she has an exclusive right to use her registered trademarks. She denies that the Respondent is commonly known by the name “Kingdom Compassion” since it was known as “The Earl’s Court Community Project” until September 2017 and continued to use that name on its headed notepaper as late as 2018. The Complainant further claims that the Respondent’s use of the Disputed Domain Name is not legitimate, noncommercial, or fair since it generates confusion and diversion of consumers, and that the Respondent deliberately registered the Disputed Domain Name with the purpose of unlawfully diverting Internet users to its website. The Respondent’s choice of domain name is not likely to be a coincidence since it matches the word elements of the Complainant’s device mark and is not a typical, generic term.
Finally, the Complainant alleges that the Disputed Domain Name is being used in bad faith in that it was registered for the purpose of disturbing the Complainant’s business; that it has been intentionally used to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks and services; and that its use tarnishes the Complainant’s mark.
The Complainant suggests that since Youth With A Mission is well versed in trademark registration it is reasonable to infer that the Respondent knew of the Complainant at the time of registration of the Disputed Domain Name and intended to exploit the Complainant’s mark. Since the Respondent is a competitor of the Complainant and registered the Disputed Domain Name after the registration and use of the Complainant’s device mark, the Respondent must have registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business. It deliberately chose the Complainant’s trademark and included it in its entirety in the Disputed Domain Name.
The Respondent does not accept that the Complainant’s device mark is sufficient to give rise to relevant rights in a trademark for the purposes of the Policy, since the design elements of the mark effectively overtake the textual elements in terms of prominence. It also disputes whether the Complainant has acquired unregistered rights in the KINGDOM COMPASSION mark. However, the Respondent accepts that the Complainant’s registered word mark does give rise to sufficient rights in a relevant trademark.
The Respondent produces evidence that it resolved to adopt the name KINGDOM COMPASSION YWAM at a board meeting on February 1, 2012, some two years before the Complainant registered its device mark and six years before it filed its word mark. The Respondent denies that it had any knowledge of the Complainant when it chose the Disputed Domain Name. There is no evidence that she had established any reputation or goodwill in the name by the time of registration of the Disputed Domain Name.
The name was chosen because the Respondent offers services out of a commitment to a community to reflect the values of the Kingdom of God. Far from being fanciful and arbitrary, KINGDOM COMPASSION are descriptive words in the context of the services offered by both the Complainant and the Respondent. The concept of Kingdom is central to Christianity and many of Jesus’ teachings in the Bible describe the Kingdom and its values.
The Respondent points out that by the time it received notice of the current dispute by a letter from the Complainant dated July 13, 2018, it had been giving prominence to its KINGDOM COMPASSION name on its website in place of the “Earls Court Community Project” for over a year and was clearly using the Disputed Domain Name in connection with a bona fide offering of services. The Respondent claims clearly established rights and legitimate interests in respect of the Disputed Domain Name.
For the reasons set out above, the Respondent denies that it either registered or is using the Disputed Domain Name in bad faith. It had no knowledge of the Complainant or its business or any claimed rights in the KINGDOM COMPASSION mark at the time of registration of the Disputed Domain Name. The Respondent chose the Disputed Domain Name not for the purpose of disrupting the business of the Complainant but in good faith having legitimately chosen to adopt the name KINGDOM COMPASSION YWAM in 2012.
The Complainant must demonstrate that, on the balance of probabilities, the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent accepts that the Disputed Domain Name is identical to the Complainant’s word mark KINGDOM COMPASSION registered on May 25, 2018, ignoring the generic Top-Level Domain (“gTLD”) “.com”, and that this is sufficient to meet the threshold requirement of the Policy. The Panel agrees and accordingly finds that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
As will be seen below, the Panel has found, on the balance of probabilities that the Respondent has not registered and is not using the Disputed Domain Name in bad faith. This means that the Complaint is to be denied and it is not necessary to decide whether the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
However, out of deference to the submissions of the Parties, the Panel gives some guidance to the Parties on the approach that it would have adopted had it needed to address this point.
The Policy, paragraph 4(c), sets out a non-exhaustive list of circumstances, if found by the Panel to be proved, that would demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name.
The Complainant states that it has not licensed or authorized the Respondent to use its trademark for any purpose and the Panel would accept that statement, in the light of there being no evidence to the contrary. The Complainant also submits that it is not a coincidence that the Respondent has chosen the Disputed Domain Name, not least as it says that the Disputed Domain Name entirely matches the Complainant’s device mark (except the design element) and that the Complainant has thus made out a prima facie case that the Respondent lacks a right or legitimate interests in the Disputed Domain Name.
Even if the Panel had been able to accept the establishment of a prima facie case, which is by no means certain, the Respondent then has the opportunity to seek to go through the three gateways in the Policy, paragraph 4(c). The Respondent submits that it is able to show that it has rights or legitimate interests in the Disputed Domain Name on all three grounds there set out.
On the evidence before the Panel and on the balance of probabilities, the Panel would have found that, before any notice to the Respondent of the dispute, the Respondent had made demonstrable preparations to use and, in fact, was already using the Disputed Domain Name in connection with a bona fide offering of services.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel notes that the examples listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith registration and use may be found. The critical issue is that there must be a degree of targeting of the Complainant or its mark or, at very least, the Respondent must have had the Complainant or its trademark in mind when selecting the Disputed Domain Name (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
In the present case, the Complainant asserts that registration and use in bad faith may be found in terms of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy and also that the use of the Disputed Domain Name tarnishes the Complainant’s mark. In terms of the critical issue of knowledge and targeting, the Complainant asserts that the Respondent must or ought to have known of the Complainant, because the Respondent has connections to “Youth With A Mission” and is well-versed in trademark registration. The Panel is unconvinced that this submission has any merit on the facts of this particular case, particularly in light of the Respondent’s board minute dated February 1, 2012. This document makes it clear that, as, at that date, the name “Kingdom Compassion (YWAM)” had been selected by the Respondent for its proposed new charity from a range of options. The Respondent’s subsequent board minute dated July 2, 2013, confirms the final decision to adopt such name. The Respondent’s documentary evidence is supported by its submissions as to why the term “Kingdom Compassion” was shortlisted as a possible name. The Respondent explains that each of these words is widely used in scripture and that they have relevance to the Respondent’s ministry. Furthermore, the Complainant’s own Internet search for the term is illustrative of the fact that the Respondent may not be alone in its independent selection of this name, given that such search provides links to talks by Venture Christian Church titled “Kingdom Compassion”.
As at February 1, 2012, the Complainant had yet to commence business as a sole trader under the name “Kingdom Compassion” and the Complainant’s device mark was not filed for a further two years. The Respondent therefore makes a compelling case as to why it selected this name independently of the Complainant or its rights, albeit that it registered the Disputed Domain Name at a later date. The Panel notes that the Complainant’s device mark was registered on October 31, 2014, before the date of creation of the Disputed Domain Name on November 23, 2015. However, the Respondent had demonstrably selected the name “Kingdom Compassion” for its charity some three years earlier and, by 2015, was merely putting its existing plan into place to adopt this name. The fact that the Respondent may not have activated its website at the Disputed Domain Name until 2017 is also not of any particular significance and appears consistent with a requirement to transition to its new name over a period of time.
Even if the Complainant’s device mark had or should have come to the Respondent’s notice at the date of registration of the Disputed Domain Name, the Panel accepts the Respondent’s contention that this mark is relatively weak, given also that the words “Kingdom Compassion” are rendered in small text and almost blend in with the larger graphical depiction of the bird. The Complainant has not demonstrated to the Panel’s satisfaction that such device mark was bolstered to any extent by the existence of unregistered rights. Neither the Disclosure and Barring Certificate nor the single example of the placing of an advertisement in a publication of unknown circulation, both dating from May 2013, are sufficient to establish exclusive secondary meaning in the term “Kingdom Compassion” associated with the Complainant’s counselling service. Furthermore, the Complainant has not shown that its own website at “www.kingdom-compassion.org” was in use to any substantive degree by the date of registration of the Disputed Domain Name and, to the contrary, the Respondent demonstrates by reference to the Internet Archive “Wayback Machine” that there are no captures for the Complainant’s website at “www.kingdom-compassion.org” prior to 2018. The Panel is not satisfied that the Respondent’s registration of the Disputed Domain Name was intended to exploit the Complainant’s rights in the term “Kingdom Compassion”.
In all of these circumstances, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s rights or because it was either intent upon disrupting the business of a competitor or was seeking commercial gain by creating a likelihood of confusion with the Complainant’s mark. The Complainant has also failed to prove on the balance of probabilities that the Respondent’s use of the Disputed Domain Name has tarnished the Complainant’s trademark. Under the Policy, tarnishment refers to unseemly conduct such as linking unrelated pornographic, violent, or drug-related images or information meant to disparage an otherwise wholesome mark (see Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633, and the cases there cited). There is no evidence of any such conduct on the part of the Respondent and, indeed, the Respondent’s use of the Disputed Domain Name appears to be entirely consistent with its original plans to adopt this name for its charitable activities dating back to around a year before the Complainant commenced in business.
In these circumstances, the Panel is satisfied that the Complainant has failed to prove that the Disputed Domain Name has been registered and is being used in bad faith and the Complaint therefore fails.
For the foregoing reasons, the Complaint is denied.
Ian Lowe
Presiding Panelist
Michael D. Cover
Panelist
Andrew D. S. Lothian
Panelist
Date: September 16, 2019