DECISION

No Greater Joy Ministries v. Name Administration Inc. (BVI)

Claim Number: FA0409000326235

PARTIES

Complainant is No Greater Joy Ministries (“Complainant”), 1000 Pearl Road, Pleasantville, TN 37033.  Respondent is Name Administration Inc. (BVI) (“Respondent”), represented by John Berryhill, of Dann, Dorfman, Herrell, and Skillman P.C., 1601 Market Street, Suite 2400, Philadelphia, PA 19103.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <nogreaterjoy.com> registered with Domain Name Sales Corp.

PANEL

Each of the undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David A. Einhorn (Chairperson), Honorable Paul A. Dorf and Alan L. Limbury as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 13, 2004; the Forum received a hard copy of the Complaint on September 17, 2004.

On September 13, 2004, Domain Name Sales Corp. confirmed by e-mail to the Forum that the domain name <nogreaterjoy.com> is registered with Domain Name Sales Corp. and that Respondent is the current registrant of the name.  Domain Name Sales Corp. has verified that Respondent is bound by the Domain Name Sales Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 12, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@nogreaterjoy.com by e-mail.

A timely Response was received and determined to be complete on October 12, 2004.

On October 25, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn (Chairperson), Honorable Paul A. Dorf and Alan L. Limbury as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

[a.] Complainant is the owner of federal service mark application #78/399,612 for NGJ (stylized).

[b.] Complainant contends that it has a common law trademark in the United States in the name NO GREATER JOY because it has conducted business under that trade name in 32 states, and business by mail in all 50 states.

[c.] Complainant owns the domain name <nogreaterjoy.org>, whereas Respondent has registered <nogreaterjoy.com>.  Complainant has used its Web site to provide free Christian religious teaching and instruction, and to advertise books and audio media.  Respondent uses its domain as a search portal to provide links on web material related to religion.

[d.] Complainant alleges that Respondent uses the <nogreaterjoy.com> domain name to promote services based on web traffic intended for Complainant’s website.

B. Respondent

[a.] Trade names are not protected by the UDRP.

[b.] Service mark applications do not, in themselves, create service mark rights.

[c.] The term NO GREATER JOY is not identical or similar to the NGJ stylized mark which is the subject of Complainant’s service mark application.

[d.] Prior to the notice of dispute, Respondent was using the domain name for a bona fide offering of goods and services.

[e.] Respondent alleges that it has not made any attempt to pass itself off as the Complainant, and has no interest in selling the domain name to Complainant or to any other party.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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

Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights.  We find that Complainant has not established that it owns any rights cognizable by the Policy.

Complainant refers to a pending service mark application for the NGJ (stylized) mark.  The term NGJ (stylized) is neither identical to nor confusingly similar with the term NO GREATER JOY.  Further, a mere service mark application, in and of itself, does not create service mark rights.  See Razorbox Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (wherein it was found that a mere pending trademark application did not provide Complainant with the requisite rights to grant it standing under the Policy).

Complainant claims common law rights deriving from use of the term NO GREATER JOY as a trade name, in that Complainant has allegedly conducted business in 32 states, and by mail in all 52 states.  Use of a term as a trade name, without more, does not establish common law rights for a mark in connection with goods or services.  See Global Marketing Communications Ltd. V. Lee Bong Kim, FA 304832 (Nat. Arb. Forum Sept. 23, 2004) (wherein the Panel found that “Complainant has used the trade name for approximately two years which without further evidence is insufficient to establish common law rights in a mark.”).

Use of the term NO GREATER JOY by Complainant as a trade name is insufficient to satisfy Policy ¶ 4(a)(i).  See Diversified Mortgage, Inc. v. World Time Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002)(finding that the Policy makes clear that its rules are intended only to protect trademarks, registered or common law, and not mere trade names).

Because this Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain name or whether Registrant registered or used the domain name in bad faith.

DECISION

As Complainant has failed to establish the requirements of Policy § 4(a)(i), Complainant’s requested relief is hereby DENIED.

David A. Einhorn, Panelist (Chairperson)

Honorable Paul A. Dorf, Panelist

Alan L. Limbury, Panelist

Dated:  November 8, 2004

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