The UDRP involving the domain name CatholicAnswers.com is an interesting case; Catholic Answers, Inc. is a California-based corporation that sought to get this 2001 domain registration.
The Complainant registered the mark CATHOLIC ANSWERS in 2013 but claims it used the mark as far back as in 1986.
Meanwhile, the Respondent is a company based in Barbados, operating MyBible.com and a slew of other domains related to the Christian faith:
catholicism.com, catholiccounseling.com, catholichigh.com, catholicholycards.com, catholicmagazine.com, catholicmass.com, catholicpendants.com, catholicpopes.com, catholicreading.com, catholicretreats.com, catholicrosarybeads.com, catholicsocialservices.com, catholicsongs.com, catholicteachings.com, romancatholicschool.com, thecatholicchurch.com, traditionalcatholicism.com, catholicapologetic.com, catholicappeal.com, catholicarts.com, catholicbibles.com, catholiccamp.com, catholicconversion.com, bibleanswers.com, christiananswer.net, genesisanswers.com, god.com, religion.com, christians.com
This is an impressive domain list, indeed. The Complainant attempted to claim that WHOIS records indicate that the domain CatholicAnswers.com was acquired by the Respondent as late as in 2022.
Apparently, that’s not the case. The Respondent, Blue Nova, Inc., acknowledged that it’s the continuation of the domain’s prior registrant, Vertical Axis. So now we know who is behind the domain name God.com!
The Respondent was represented by ESQwire.com, a premium sponsor of our publication. The three member panel at the Forum (NAF) ordered the domain CatholicAnswers.com to remain with the Respondent.
The domain transfer was denied.
Catholic Answers, Inc. v. Blue Nova Inc.
Claim Number: FA2210002014576
PARTIES
Complainant is Catholic Answers, Inc. (“Complainant”), El Cajon, California, United States, represented by Tiffany Salayer of Procopio, Cory, Hargreaves and Savitch LLP, San Diego, California, United States. Respondent is Blue Nova Inc. (“Respondent”), St. Michael, Barbados, represented by Jason Schaeffer of ESQwire.com, P.C., Cherry Hill, New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is catholicanswers.com, registered with GoDaddy Online Services Cayman Islands Ltd.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Steven M. Levy, Gerald M. Levine, and David E. Sorkin (chair), Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 3, 2022; Forum received payment on October 3, 2022.
On October 4, 2022, GoDaddy Online Services Cayman Islands Ltd. confirmed by email to Forum that the catholicanswers.com domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
An Amended Complaint was received from Complainant on October 5, 2022, with Respondent’s name and contact information substituted for that of the privacy registration service identified in the initial Complaint.
On October 5, 2022, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@catholicanswers.com. Also on October 5, 2022, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
The proceeding was stayed by agreement of the parties pursuant to Forum Supplemental Rule 6(b); the stay was subsequently lifted, and a timely Response was received and determined to be complete on December 12, 2022.
On December 27, 2022, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed David E. Sorkin as chair of the Administrative Panel (the “Panel”) and Gerald M. Levine and Steven M. Levy as Panelists.
Having reviewed the communications records, the Panel finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant publishes a magazine and website and provides other goods and services under the CATHOLIC ANSWERS name and mark. Complainant’s founder began publishing tracts in 1979. Complainant states that together with its affiliates, licensees, and predecessors in interest, it has used CATHOLIC ANSWERS as a trademark since at least as early as August 1986. Complainant owns a United States trademark registration issued in 2013 for CATHOLIC ANSWERS in standard character form, along with similar and related registrations in Canada and other jurisdictions.
Respondent is the registrant of the disputed domain name catholicanswers.com. Complainant states that Respondent registered the domain name on July 4, 2022. The domain name currently redirects to mybible.com, a website that contains information and links regarding the Bible. Complainant alleges that Respondent receives commissions when users click on advertisements displayed on that site. Complainant states that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark.
Complainant contends on the above grounds that the disputed domain name catholicanswers.com is confusingly similar to its CATHOLIC ANSWERS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent is a Barbados company with members in Barbados and Canada. Respondent owns a vast portfolio of domain names, in some instances hosting them with domain name parking services from which Respondent receives a share of the advertising revenue they generate. Respondent states that since 2001 it “has amassed a large portfolio of generic and descriptive religious related domain names.” These include mybible.com, at which Respondent created a website in 2012, and the disputed domain name catholicanswers.com, which was registered or acquired by Respondent’s predecessor in interest Vertical Axis, Inc. on or around July 3, 2001. Respondent also owns many other domain names registered between 2001 and 2007 that include the word “Catholic,” including catholicism.com, catholiccounseling.com, catholichigh.com, catholicholycards.com, catholicmagazine.com, catholicmass.com, catholicpendants.com, catholicpopes.com, catholicreading.com, catholicretreats.com, catholicrosarybeads.com, catholicsocialservices.com, catholicsongs.com, catholicteachings.com, romancatholicschool.com, thecatholicchurch.com, traditionalcatholicism.com, catholicapologetic.com, catholicappeal.com, catholicarts.com, catholicbibles.com, catholiccamp.com, and catholicconversion.com. Other domain names owned by Respondent include bibleanswers.com, christiananswer.net, genesisanswers.com, god.com, religion.com, and christians.com.
Respondent states that it selected the disputed domain name because it was a combination of two generic words to which it believed no party could claim exclusive rights. Respondent notes that Complainant created newsletters and pamphlets in 1986 and had a local radio show, but did not create a landing page or website until 1997. Respondent contends that Complainant did not have trademark rights as of July 3, 2001, and that Respondent had no knowledge of Complainant or its mark until May 2022, when it received an unsolicited offer from a representative of Complainant seeking to purchase the domain name. It simply replied that the domain name is not for sale.
Complainant’s earliest trademark registration is its United States registration for CATHOLIC ANSWERS that issued in 2013 with a claimed first use date of August 1986. Respondent notes that Complainant’s 2017 application to register CATHOLIC ANSWERS LIVE was initially refused on the basis that the term was merely descriptive, and was granted only after Complainant was able to demonstrate acquired distinctiveness under section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). In support of that application, Complainant represented that the CATHOLIC ANSWERS LIVE mark “ha[d] become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” Respondent contends that Complainant thereby acknowledged that the CATHOLIC ANSWERS LIVE mark initially was merely descriptive.
Respondent further asserts that Complainant’s use of the CATHOLIC ANSWERS mark through 2001 (or, at least, its online use of the mark) was limited and largely descriptive, and that Complainant did not begin using the mark as a brand until much later. Respondent notes that Complainant declined to register the disputed domain name catholicanswers.com in 1995, when it registered the domain name catholic.com, and that Complainant delayed taking any action with regard to the disputed domain name for the past 21 years; Respondent argues that these circumstances suggest that Complainant did not believe that Respondent’s registration and use of the disputed domain name were in bad faith or that Complainant had been targeted.
FINDINGS
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith. The Panel declines to enter a finding as to whether Respondent lacks rights or legitimate interests in respect of the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has demonstrated its ownership of rights in the CATHOLIC ANSWERS mark by virtue of it having been registered on the Principal Register of the United States Patent and Trademark Office. The disputed domain name catholicanswers.com incorporates Complainant’s registered CATHOLIC ANSWERS trademark, omitting the space and adding the “.com” top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant’s mark. See, e.g., Bayard, Inc. v. Kwesi Arko, FA 1806386 (Forum Oct. 15, 2018) (finding catholicdigestt.com confusingly similar to CATHOLIC DIGEST); Technologies Sensopia Inc. v. BLUE NOVA INC., FA 1725217 (Forum June 9, 2017) (finding magicplan.com confusingly similar to MAGIC PLAN). The Panel considers the disputed domain name to be identical or confusingly similar to a mark in which Complainant has rights.
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The third element set forth in paragraph 4(a) of the Policy requires Complainant to show that the disputed domain name was registered and is being used in bad faith. To satisfy this requirement, Respondent’s registration or acquisition of the domain name must have been targeted at Complainant or its mark. See, e.g., Sinclair Finance Co. v. Nathaniel Young / SumValley, FA 1835985 (Forum May 3, 2019). This assessment is fact-specific; relevant factors include
(i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.1.1 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant did not register the CATHOLIC ANSWERS mark until many years after Respondent’s claimed 2001 acquisition of the disputed domain name. There is some evidence that Complainant commenced use of the phrase as a trademark in the United States prior to that date, but not to an extent that such use would have been likely to come to Respondent’s attention, particularly in view of it being located in Barbados and Canada (as represented by Respondent). In a declaration signed by its domain administrator, Respondent has denied having any knowledge of Complainant or its mark prior to May 2022, a denial that is entirely consistent with the evidence before the Panel. This evidence includes Respondent’s claim, made in its declaration, that Respondent has registered “many other religious related domain names” that use generic terms including some that include the words “Catholic” or “answer.”[i]
Further, Complainant alleges that the disputed domain name was “created” on July 4, 2022. Respondent states in its declaration that the domain name was in fact registered or acquired by Respondent’s predecessor in interest on or around July 3, 2001.[ii] Respondent also provides screenshots of historical whois records, but these list only various privacy registration services as the registrant and also show that the domain name was held at four different registrars over its lifespan. The Panel would have found it helpful to have documentary evidence supporting Respondent’s claim that it acquired the domain name in 2001, and notes that such evidence likely is within Respondent’s exclusive control and possession. See, e.g., Edelman Shoe, Inc. v. Hulmiho Ukolen / Poste restante, FA 1630741 (Forum Aug. 27, 2015) (drawing adverse inference from absence of evidence likely known only to one party); Valeant International Bermuda v. DNS Administrator, FA 1573544 (Forum Sept. 15, 2014) (same).
In preparing the Complaint that it submitted on October 3, 2022, Complainant appears to have relied upon the whois record as it stood on or before September 20, 2022. In that whois record, a privacy registration service was listed as the registrant; July 3, 2001 was listed as the “creation date”; and July 4, 2022 was listed as the “updated date.” (An undated screenshot of this whois record appears in the Annex to the Complaint, along with whois records for two unrelated domain names that have no apparent relevance to this proceeding and may have been included by mistake.)
The whois record was updated on September 21, 2022, to openly identify Respondent instead of a privacy registration service as the registrant. Respondent was also identified as the registrant in the registrar’s verification email of October 4, 2022, which was forwarded by Forum to Complainant on that date.
Complainant submitted an Amended Complaint at Forum’s request on October 5, 2022, substituting Respondent for the privacy registration service but retaining the assertion that the domain name was “created” on July 4, 2022.
The Panel acknowledges the difficulty in determining the acquisition date of a domain name that is registered in the name of a privacy registration service, particularly when there are indications that it may have changed hands over the years (i.e., multiple registrars). However, Complainant’s allegation that the domain name was “created” on July 4, 2022, apparently based upon a misreading of an outdated whois record, is contradicted by statements in Respondent’s declaration. Furthermore, Complainant had corresponded with Respondent regarding a possible purchase of the domain name on May 26, 2022, more than a month earlier — and Respondent had identified itself within that correspondence as the registrant of the domain name.
Based upon a review of the Complaint and its supporting annexes, there simply does not appear to be evidence that Respondent targeted Complainant or its mark when it acquired the disputed domain name. Respondent’s evidence is also somewhat lacking, but the Panel considers Respondent’s asserted timing of its acquisition of the disputed domain name; its claimed lack of knowledge of Complainant’s mark at the time of such acquisition; its claimed pattern of owning other religious-themed domain names; and the limited distinctiveness of the CATHOLIC ANSWERS mark in relation to the service of providing information on religion, and notes that none of the WIPO Overview factors set forth earlier appear to be present in this case.
The Panel is troubled by shortcomings in both parties’ submissions, particularly those described above, but ultimately finds that Complainant has not carried its burden of proving, by a preponderance of the evidence, that the disputed domain name was registered and is being used in bad faith.
DECISION
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the catholicanswers.com domain name REMAIN WITH Respondent.
David E. Sorkin, Chair
Steven M. Levy, Panelist
Gerald M. Levine, Panelist
Dated: December 30, 2022
[i] Respondent asserts ownership of these other domain names in its declaration but the Panel would have preferred to see whois records or other documentary evidence identifying Respondent as the registrant to support this claim. Of its own accord, the Panel conducted whois lookup searches for these additional domain names and found that they are held at the same registrar used for the disputed domain name but that their initial registration dates vary from 1994 to 2007. And all use whois privacy, thus leaving their ownership unclear, although most or all of them redirect to Respondent’s mybible.com website. The Panel is therefore left to rely on the statements made in the aforementioned declaration.
[ii] There is no submitted evidence of the relationship between Respondent and its claimed predecessor in interest, Vertical Axis, Inc., or of the name change to Blue Nova Inc. So, again, the Panel has only the written statement in the declaration to rely on rather than any documentary evidence.
