The registrant of the domain Churchofchrist1914.com was hit with a UDRP, that was filed by a church in the Philippines.
The Complainant is Iglesia Ni Cristo (Church of Christ), Philippines, that describes itself as an independent Christian church, founded in 1914, which maintains nearly 7,000 congregations and missions grouped into more than 160 ecclesiastical districts in 157 countries and territories.
The Respondent submits that it created and utilized the name “Church of Christ 1914” in line with religious beliefs and to advance and disseminate what according to it are the pure teachings of God to all of mankind. It maintains that the terms “Church of Christ” and the year 1914 have an important meaning from a religious perspective. The Respondent explains that it began the process of establishing its identity through multiple steps. First, it needed a name to distinguish itself, so it avoided the term “Iglesia Ni Cristo” to avoid confusion with the Complainant, and created its organization in the United States.
In our opinion, the Respondent’s response is not 100% convincing, but a three member panel examining the evidence ordered the domain to remain with the Respondent:
There is no evidence in the case file showing that the Complainant is using “1914” as part of its official name. As mentioned above, the evidence submitted by the Complainant shows that it is using the name “Iglesia Ni Cristo (Church of Christ)”, without “1914” appended to it, and there is no evidence that “1914” has become a distinctive identifier that the public associates with the Complainant’s services.
Full details on the decision for Churchofchrist1914.com follows:
The domain transfer was denied.
Iglesia Ni Cristo (Church of Christ) v. Henry Perez, OPHIRFA
Case No. D2020-12561. The Parties
The Complainant is Iglesia Ni Cristo (Church of Christ), Philippines, represented internally.
The Respondent is Henry Perez, OPHIRFA, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <churchofchrist1914.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2020, 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 May 27, 2020, 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 amended Complaint on May 29, 2020.
The Center verified that the Complaint together with the amended 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 June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent sent an email communication to the Center regarding the proceeding on June 4, 2020 and a request to extend the response due date on June 5, 2020. The response due date was accordingly extended by the Center to July 4, 2020. The Response was filed with the Center on July 3, 2020.
The Center appointed Assen Alexiev, Paul M. DeCicco, and John C McElwaine as panelists in this matter on August 10, 2020. 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.
4. Factual Background
The Complainant describes itself as an independent Christian church, founded in 1914, which maintains nearly 7,000 congregations and missions grouped into more than 160 ecclesiastical districts in 157 countries and territories. The corporate turnover of the organization, generated from voluntary contributions of its four million members worldwide, was AUD 218.51 million in 2019.
The Complainant has provided evidence that it owns two registered trademarks:
– the combined trademark with registration No. 4/2012/00001102 for IGLESIA NI CRISTO CENTENNIAL 1914 2014, registered in the Philippines on April 25, 2012 for goods and services in International Classes 14, 16, 18, 20, 25, 35, and 41;
– the combined trademark with registration No. 4/2016/00009366 for IGLESIA NI CRISTO (CHURCH OF CHRIST) SCHOOL FOR MINISTERS, registered in the Philippines on March 24, 2017 for goods and services in International Classes 14, 16, 18, 20, 25, 35, 38, 41, 44 and 45; and
The Complainant has established local affiliates in Cyprus in 2006 under the name “Church of Christ 1914”, in Guatemala in 2016 as “Iglesia de Cristo 1914”, in the State of Missouri, the United States, in 1992 as “Church of Christ Philippines 1914”, in Spain in 1986 as “Iglesia De Cristo (Filipina 1914)”; and in the State of Arizona, the United States, in 1994 as “Iglesia Ni Cristo – Church of Christ 1914”.
The Complainant’s main website is located at the domain name <iglesianicristo.net>, registered in 1999.
The disputed domain name was registered on November 29, 2019. It resolves to a religious website with the title “Church of Christ 1914 Ministries”.
5. Parties’ Contentions
A. Complainant
The Complainant states that it has operated in the Philippines under the name “Iglesia Ni Cristo” since July 27, 1914. When it began expanding to other countries in 1968, it started using the name “Iglesia Ni Cristo 1914” (and its English translation, “Church of Christ 1914”) in print media, television, and the Internet in order to differentiate itself from similarly named organizations. According to the Complainant, it has built a reputation around the name “Iglesia Ni Cristo 1914” (and its corresponding translations, including “Church of Christ 1914”) as an identifier that is attributable specifically to it as a distinct and unique organization in relation to religious services, and this name has become a well-known mark distinguishing the Complainant’s services in several countries in which it is present.
The Complainant submits that the disputed domain name is identical to the Complainant’s service mark “Iglesia Ni Cristo 1914”, when it is translated from Filipino to English. According to the Complainant, domain names comprising translations of service names are usually found to be identical or confusingly similar to the translated trademark. Alternatively, the disputed domain name is also identical to the Complainant’s service mark “Church of Christ 1914”, under which the Complainant has also provided religious instruction and services.
The Complainant concedes that the disputed domain name omits the first part of the name commonly used by the Complainant (“Iglesia Ni Cristo”), and only uses the name “Church of Christ”. It also concedes that neither the name “Iglesia Ni Cristo”, nor “Church of Christ”, in and of themselves, are distinct enough to be attributed to the Complainant. However, the addition of the term “1914” to the disputed domain name makes it likely that it would be incorrectly affiliated with the Complainant, even though there may be other groups and denominations named “Church of Christ”, because the Complainant has built a substantial reputation by emphasizing the significance of the year it was founded, which is a major part of the its doctrine and belief and makes it distinct from other religious organizations that may be similarly named. This is also the reason why the Complainant is registered in several countries as “Church of Christ 1914” or versions thereof. Specifically, when the country already has an organization named “Church of Christ” or “Iglesia Ni Cristo” registered in their database of religious or charitable societies, the Complainant makes itself distinguishable and unique from these pre-existing groups by inserting “1914” in the name of its local legal entity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it has never been authorized by the Complainant to use the mark “Church of Christ 1914”, and is not commonly known by the disputed domain name. Before registering the disputed domain name, the Respondent was more commonly known by the name OPHIRFA. The Complainant further submits that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to mislead and divert consumers. Rather, the Respondent’s website solicits online donations. The Complainant also notes that the Respondent has not replied to the Complainant’s letter dated May 16, 2020.
The Complainant contends that the disputed domain name was registered and is being used in bad faith, as the Respondent is using it to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, producing a misplaced sense of attribution to the Complainant. The use of a domain name cannot be fair if it suggests affiliation with the trademark owner, and where the domain name consists of a trademark plus an additional term, UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.
The Complainant points out that the Respondent’s website at the disputed domain name solicits donations under the name “Church of Christ 1914” which is likely to confuse readers and affiliate its website with the Complainant.
The Complainant adds that the Respondent knew or should have known of the Complainant’s service mark, as Mr. Rolando Dizon, the person behind the Respondent’s website and the prominent figure featured in many of the videos uploaded on it, was a former Minister in the Complainant’s organization who was assigned in the United States, where he is likely to have had knowledge that the Complainant operates under the name “Church of Christ 1914” in the states of Arizona and Missouri.
B. Respondent
The Respondent submits that the disputed domain name is distinct from the Complainant’s name and service mark and is not confusingly similar to them. According to it, what truly distinguishes the Complainant’s organization and its services is only the name “Iglesia Ni Cristo”, while the year 1914 is a strong part of the Complainant’s beliefs, it is not part of its official name to differentiate itself. The Complainant’s official name is “Iglesia Ni Cristo”, and the phrase “Church of Christ” is inside parentheses as an English translation of the Complainant’s official name. The Respondent contends that translating the words “Iglesia Ni Cristo” in English does not make the Complainant the owner of the phrase “Church of Christ” or of the phrase “Church of Christ 1914”, and the phrase “Church of Christ” is not owned and cannot be solely owned by the Complainant. The Respondent asserts that the Complainant has not provided evidence that it has changed its name to “Iglesia Ni Cristo (Church of Christ)” and acquired sole ownership of the name “Church of Christ 1914”. Even in the United States, the Complainant utilizes the Tagalog form of its name. The Respondent further points out that the Complainant refers to its members as “INC members” or “Iglesia Ni Cristo members,” and the Wikipedia entry for the Complainant only highlights the name “Iglesia Ni Cristo” and shows that “1914” is a belief. The Respondent states that the Complainant does not own and could not solely own the number 1914 as a matter of common sense, and 1914 is not a unique year to the Complainant, but is important to other organizations as well.
The Respondent submits that it created and utilized the name “Church of Christ 1914” in line with religious beliefs and to advance and disseminate what according to it are the pure teachings of God to all of mankind. It maintains that the terms “Church of Christ” and the year 1914 have an important meaning from a religious perspective. The Respondent explains that it began the process of establishing its identity through multiple steps. First, it needed a name to distinguish itself, so it avoided the term “Iglesia Ni Cristo” to avoid confusion with the Complainant, and created its organization in the United States. The Respondent notes that numerous organizations utilize the term or believe in the term “Church of Christ” and the year 1914, but none had service marks with those names together, so the Respondent decided its name was to be “Church of Christ 1914 Ministries” and chose the shortened name “Church of Christ 1914” to reduce typing. The Respondent searched the name “Church of Christ 1914” in the United States Internal Revenue Service, the United States Patent and Trademark Office and in the Texas database, and the search results showed the name was distinct and available for use. The Respondent created a YouTube page in January 2019 to utilize the term “Church of Christ 1914” and “Church of Christ 1914 Ministries” to proclaim its message, followed by a Facebook page in March 2019. The Respondent added the name “Church of Christ 1914 Ministries” as a doing business as name to its name “OPHIR Foundation of America” in Texas in May 2019, and registered the doing business as name to its charitable solicitation registrations, as required in the states the Respondent is operating in. The Respondent decided to create a website and chose the disputed domain name since it was available and shorter than the full doing business as name. The purpose was to provide a distinct website for all the Respondent’s supporters and to spread the teachings as part of the Respondent’s religious cause. The Respondent states that individuals can provide, if they choose, donations and offerings to further this non-profit cause of spreading the teaching as a public good and not toward the benefit of any one individual.
The Respondent maintains that it does not deceive anyone into thinking it is the Complainant, and that it promotes a different set of beliefs to distinguish itself from the Complainant, since the Respondent emphasizes the importance of the name given to the Savior, and promotes the name of God. The Respondent’s website does not contain any of the Complainant’s information to misinform people into thinking the Respondent is the Complainant, and uses a different and distinct logo. When an option on the offering page is selected, it specifically tells the user the money goes towards “Church of Christ 1914” or “Church of Christ 1914 Ministries” to advance the beliefs in that location. The Respondent’s organization is a non-profit entity that has a religious cause as one of its many purposes. As a non-profit, none of the proceeds go to the benefit of any individual and if the organization were to disband, the assets should be disbursed to other non-profit organizations. The Respondent has a United States Internal Revenue Service approved determination for non-profit causes, meaning the Respondent’s organization provides a public good and is not using funding for financial gain.
The Respondent notes that Mr. Dizon, mentioned by the Complainant, moved to the Respondent’s group since he aligned better with the religious cause and beliefs of the Respondent’s organization.
The Respondent asserts that it did not register the disputed domain name to sell it to the Complainant or to prevent the Complainant from using its trademark since the disputed domain name is different from the Complainant’s name “Iglesia Ni Cristo”. The Respondent also maintains that it did not register the disputed domain name to disrupt the Complainant’s business.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant bases its Complaint on two Philippine trademarks that are combinations of stylized images and words.
The first combined trademark with registration No.4/2012/00001102 contains stylized images of the Earth and a burning torch over it, encircled by the words IGLESIA NI CRISTO CENTENNIAL 1914 2014. Each of the word elements of this trademark is disclaimed.
The second combined trademark with registration No.4/2016/00009366 contains stylized images of a shield with a burning torch and a book over it on which the text “Exodus 18-21” is written, with a seven-point star above them. These images are encircled by the words IGLESIA NI CRISTO (CHURCH OF CHRIST) SCHOOL FOR MINISTERS placed between two concentric rings. The word elements of this trademark are entirely disclaimed as well. The Complainant has not referred to any other trademark registrations.
As summarized in section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. However, where the trademark registration relied upon by a complainant entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.
In view of this practice and the fact that all word elements of the two trademarks referred to by the Complainant are explicitly disclaimed, the Panel finds on balance that the Complaint must fail.
In addition to its reference to the two trademarks discussed above, the Complainant also contends that it has built a reputation around the name “Iglesia Ni Cristo 1914” and its English translation “Church of Christ 1914” as an identifier that is attributable specifically to it as a distinct and unique organization in relation to religious instruction and services, and this name has become a well-known mark distinguishing the Complainant’s services in several countries in which it is present.
The Complainant has provided evidence that it has used the name “Iglesia Ni Cristo (Church of Christ)” in printed media, on the Internet and on various occasions. However, the Panel is not satisfied by the evidence that the name “Church of Christ” has itself become distinctive of the Complainant. Even if the Complainant has extensively used this English translation of its Tagalog name “Iglesia Ni Cristo”, it is a common English phrase, and its use does not of itself show that the phrase has acquired a secondary meaning distinctive of the Complainant, in the absence of evidence that this use has in fact led to its being regarded as a trademark by the relevant public. The Complainant has not provided such evidence. On the contrary, it admits that it has not acquired exclusive rights to this phrase, and in view of the 2000-year history of Christianity and of the existence of various Christian churches in this long period of time, the Panel accepts that no such exclusive rights have arisen.
The Complainant has submitted evidence that it has established local affiliates in a number of jurisdictions, which affiliates include the number “1914” as part of their name. However, the Complainant provides no evidence of such trademark use, and in particular, use of a mark that includes the numbers “1914.” The closest piece of evidence is the Guatemalan business name registration for “Church Of Christ 1914”. However, business name registrations are not sufficient by themselves to establish unregistered trademark rights. See WIPO Overview 3.0, Section 1.3:
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
There is no evidence in the case file showing that the Complainant is using “1914” as part of its official name. As mentioned above, the evidence submitted by the Complainant shows that it is using the name “Iglesia Ni Cristo (Church of Christ)”, without “1914” appended to it, and there is no evidence that “1914” has become a distinctive identifier that the public associates with the Complainant’s services.
In view of the above, the Panel reaches the conclusion that the Complainant has not established that the phrase “Church of Christ 1914” has acquired a secondary meaning attributable to the Complainant and that the Complainant does not have unregistered trademark rights in this phrase that would support the Complainant’s standing under the UDRP in this proceeding.
Therefore, the Complaint must fail.
B. Rights or Legitimate Interests
In view of the Panel’s conclusion under the first element, the issue of rights and legitimate interests does not need to be addressed.
C. Registered and Used in Bad Faith
In view of the Panel’s conclusion under the first element the issue of bad faith does not need to be addressed.
7. Decision
For the foregoing reasons, the Complaint is denied.
Assen Alexiev
Presiding PanelistPaul M. DeCicco
PanelistJohn C McElwaine
Panelist
Date: September 2, 2020
