UCKG Helpcentrev Brown [2005] DRS 02551 (21 July 2005) 

Nominet UK Dispute Resolution Service

DRS 02551

UCKG HELPCENTRE v. PETER BROWN

Decision of Independent Expert

1.	Parties: 

Complainant:	UCKG Helpcentre
Country:		GB

Respondent:		Peter Brown
Country:		GB

2.	Domain Name:

uckg.org.uk (“the Domain Name”)

3.	Procedural Background:

The complaint was entered into Nominet’s system on 14th April 2005.  Nominet validated the complaint and informed the Respondent by letter dated 22nd April 2005, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 17th May 2005 to submit a Response. A Response was received on 17th May 2005; and a Reply from the Complainant was submitted and received on 25th May 2005. During the first few weeks of June the parties participated in a confidential mediation process, but in accordance with Nominet’s practice I have not seen any of the mediation materials and do not know what went on, save that (regrettably) it did not result in a mediated settlement of the Complaint.

On 21st June 2005 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 (“the Policy”). The fee was duly paid on 1st July 2005.

On 5th July 2005 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert with effect from 8th July 2005.

4.	Outstanding Formal/Procedural Issues (if any):

None.

5.	The Facts:

‘UCKG’ stands for ‘Universal Church of the Kingdom of God’. The Complainant is a UK registered charity (Charity Number 1043985).

The Nominet WHOIS search with which I have been provided shows that the Domain Name, uckg.org.uk, was registered by or on behalf of the Respondent on 9th December 2004.

The URL http://www.uckg.org.uk currently displays a single HTML page entitled “Who are UCKG? - An information resource: the Universal Church of the Kingdom of God” with hypertext links to various sites and materials concerning, and generally antagonistic to, the Complainant. It also contains a link to the Complainant’s own site at http://www.uckg.org.

I note from the materials contained in the Annexes that the Respondent also publishes an identical site at http://www.aboutuckg.co.uk (aboutuckg.co.uk being registered on the same date, 9th December 2004).

6.	The Parties’ Contentions:

Complainant:

The Complainant requests that the Domain Name be transferred to it on the basis of the following submissions:

“THE COMPLAINT
1. The Complainant
1.1. The Complainant a registered charity whose full name is the Universal Church of the Kingdom of God. It is known principally as UCKG and it has rights in that name. See Appendix 1 for the Complainant’s letter-headed paper showing its style of use of UCKG. 
1.2. The Complainant is a Church. It is also very much more. The Complainant is committed to helping people overcome their difficulties in life through faith and action. It takes a practical approach to such problems through a large number of community-based initiatives. It offers the following services free of charge to all, regardless of age, race or religion:
• Lectures, seminars and meetings to teach and practice on relevant subjects. Audiences may vary from 5 to 5,000. 
• One-to-one spiritual counselling. 
• Life coaching, career and relationship guidance. 
• Personal attention in crisis situations at home, hospital or prison. 
• Skills and learning training centres. 
• A 24-hour helpline. 
• Food distribution. 
• Donations to other charities (e.g. Crisis and Barnardos). 
• Youth groups. 
• Film screenings. 
• Blood pressure testing and blood donations.
1.3. All of these activities are carried out under the name UCKG. In particular, the Complainant provides its services through help centres which are known as, and are promoted as the UCKG HelpCentre. 
1.4. Further details about these services can be found in the “Community” and “Training Centre” sections of the Complainant’s website www.uckg.org. Extracts from the website are at Appendix 2. See also the leaflet published by the Complainant “You too can be happy” at Appendix 3. 
2. The Complainant’s Rights 
2.1. First, the Complainant is a charity registered with the Charity Commission (no. 1043985) under the name The Universal Church of the Kingdom of God (see Appendix 4). 
2.2. Secondly, the Complainant registered the domain name uckg.org with www.register.com on 30.10.99 and has been using the site since then (see Appendix 5). 

2.3. Thirdly, the Complainant has made extensive use of the name UCKG since 1995 and has thereby acquired exclusive rights in that name. 
2.4. The Complainant started using the name UCKG since 1995. Since then it has made extensive use of that name, in particular in connection with the services set out under para 1.2 above. All of this activity has been carried out under and by reference to the name UCKG and the Complainant’s website www.uckg.org. 
2.5. The Complainant’s headquarters is a large a prominent building at 232 Seven Sisters Road, London N4. It clearly displays the name UCKG and the Complainant’s website address and can be seen from three main roads (see photographs at Appendix 6). 
2.6. Since 1995 the Complainant has spent in excess of £1.5 million on advertising. Annual advertising expenditure figures are set out at Appendix 7. 
2.7. Appendix 8 provides a further breakdown of advertising expenditure from 2002 until 2005. This shows substantial expenditure in particular with the Complainant’s website, newspapers (e.g. The Guardian, ThEvening Standard, The Birmingham Post, The Voice and numerous local other newspapers); on billboards and posters; cinema advertisements; radio (e.g. LBC, Capital, Liberty, Choice FM); printed leaflets and a video promoting the Complainant’s work. See also Appendices 9 to 20 for sample invoices. 
2.8. Appendices 21 to 34 are samples of advertising materials including leaflets distributed by the Complainant and a promotional video. It can be seen that all these advertisements prominently refer to the name UCKG and most refer to the web address www.uckg.org. 
2.9. The effect of all of this advertising and promotional activity has been to identify the name UCKG with the Complainant in the minds of the public. As a result of this extensive use of the name UCKG, the Complainant has built up and owns a valuable goodwill and reputation in the name UCKG. That name is now very well known and refers exclusively to the Complainant. The Complainant has thereby acquired exclusive rights in the name UCKG. 
2.10. A further effect of all this adverting and promotional activity is that the Complainant’s website at www.uckg.org is also extremely well known to the public as the website of the Complainant, UCKG. 
2.11. The Complainant is also in the process of obtaining a registered trade mark consisting of the name UCKG. 
3. The Abusive Registration 
3.1. The Respondent has registered the disputed Domain Name uckg.org.uk. He has also set up a website at www.uckg.org.uk – i.e. the same address as the Complainant’s well known website, with the addition of a “.uk” suffix. See Appendix 35 for a printout from this website. 
3.2. It can be seen from the Respondent’s website that he was fully aware of the Complainant and its work at all material times. He chose the Domain Name so as to refer specifically to the Complainant and its well-known website. 
3.3. The Domain Name is an Abusive Registration for the following reasons. 
3.4. The Domain Name is effectively identical to the Claimant’s name UCKG (with the addition merely of the suffix “org.uk”). 
3.5. Likewise, the Respondent’s website address is virtually identical to the Complainant’s website address (with the addition merely of the suffix “.uk”). 
3.6. The Respondent has even included on his website a logo that is very similar to the Complainant’s logo. Compare the Complainant’s logo shown at Appendix 36 with the logo on the Respondent’s website at Appendix 35. 
3.7. The website itself contains untrue defamatory and damaging comments about the Complainant. There is no indication on the website of any legitimate interest or reason that the Respondent may have for making such unfair attacks on the Complainant. The Complainant is unaware of any legitimate interest that the Respondent may have. For example, the Respondent does not claim that he has been the victim of any of the things that he accuses the Complainant of. It therefore appears that the Respondent’s actions are purely malicious (there is no other apparent explanation for his actions). 
3.8. The Respondent’s use of the Complainant’s name UCKG, as part of the Domain Name, and on his website, is calculated to confuse and deceive members of the public into thinking that the Respondent and/or his website are connected with the Complainant in some way or that the Respondent is or is responsible for or controls the Complainant. 
3.9. The Complainant first became aware of the Respondent’s website in March 2005, when a pastor from another branch of UCKG (Mr Wagner Paiva) wrote to the Complainant saying that he had mistaken the Respondent’s website for the Complainant’s website. A copy of his letter is at Appendix 37. No doubt other people, whom the Complainant is not aware of, have been likewise confused and deceived. And so long as the Respondent continues to hold the Domain Name, such confusion and deception will inevitably continue. 
3.10. For all of the above reasons, the Respondent’s registration of the Domain Name has caused and continues to cause the Complainant considerable harm and damage. It jeopardises the valuable work which the Complainant performs in the community. It puts at risk not just the charitable objectives of the Complainant, but also those whom the Complainant seeks to help. And it appears that the sole purpose of the Respondent is to harm the Complainant and those whom it seeks to help.”
As will be apparent from the above, the Complaint was accompanied by no less than 37 appendices, including a VHS video.

Respondent:

The Respondent disputed that the Domain Name should be transferred to the Complainant on the basis of the following submissions:

“PREAMBLE 
1) I received notification that a complaint had been entered against the domain name www.uckg.org.uk the 22nd April 2005. This is my response to that complaint. 
2) I confirm that I am an individual and that my name is Peter Brown. I confirm that I have no connection with any religious organisation or campaigning organisation. At all times in my dealings with the domain name www.uckg.org.uk I have acted in my individual capacity and I continue to do so. At no time in my dealings with the domain name www.uckg.org.uk have I received any income or funding nor do I expect to do so. 
3) I object to the complaint and – should the complaint be entered for an expert decision - I ask that the Expert does not grant the Complainant the remedy that it has asked for. In this response I set out my reasons for so requesting. 
BACKGROUND 
4) The Complainant is the UK arm of a large Pentecostal Church named The Universal Church of the Kingdom of God which operates in 85 countries. In the UK the Complainant is registered under the name “THE UNIVERSAL CHURCH OF THE KINGDOM OF GOD” and is a Registered Charity (Appendix 3). The Complainant had an income of £5.5million in the 12 months ending 28 February 2003 (Appendix 4). 
5) I registered the domain name www.uckg.org.uk on 9th December 2004 (Appendix 5) to exert my own freedom of speech and for the purposes of fair criticism of and to encourage wider understanding and debate about the ethos, policies and activities of the Complainant. A copy of the site published at www.uckg.org.uk is attached at Appendix 6. At that time, as now, I believe this to be fair use under section 4(b) of the Nominet DRS Policy. 
6) The Complainant contacted me offering me information about its work and has invited me to visit it to see its work (Appendix 7). At no time has the Complainant expressed concern about the information published at www.uckg.org.uk nor has it asked me to change or alter any of the information. The Complainant had not suggested a transfer of the domain before this complaint. The Complainant was aware of the registration and had been content with the site as published and with my registration of the domain www.uckg.org.uk 
THE COMPLAINT 
7) The complaint focuses on two areas. Firstly the Complainant contends that it has “exclusive rights” in the name UCKG. Secondly it contends that my registration of the domain www.uckg.org.uk is abusive and claims my actions were “purely malicious” and are causing “considerable harm and damage”. 
8) I do not dispute that the Complainant uses the acronym of ‘UCKG’, being the first letters of the words that make up its full name. 
9) However, I do not accept that the Complainant has “exclusive rights” in the acronym UCKG. The complainant is only able to rely on its use of the acronym over time. 
10) I entirely reject the Complainant’s belief that the registration was abusive. My registration was not malicious nor was the domain name registered in bad faith or with any malicious intent. At no time have I ever sought to mislead members of the public or cause any distress. I registered the domain name www.uckg.org.uk to exert my own freedom of speech and for the purposes of fair criticism of the Complainant and to encourage wider understanding and debate about the ethos, policies and activities of the Complainant. 
11) The Complainant contends that I chose the domain name so as to refer specifically “to the Complainant and its well-known website”. I chose www.uckg.org.uk since I was writing a website solely about the Complainant for reasons stated in paragraph 10 above. This seemed logical. 
12) The Complainant says it is in the process of registering the acronym UCKG as a trademark. I was able to ascertain at the point of registration that no such protection was in place. As far as I am able to ascertain that remains the current situation (Appendix 8). 
13) The Complainant makes allegations of ‘passing off’, in other words that I registered www.uckg.org.uk to pretend to others that my site was connected to the Complainant. This has never been my intention. Within the first paragraph of the website I clearly state: “What is this website? This website is about UCKG, the Universal Church of the Kingdom of God. Their official website can be found at www.uckg.org This website brings together information on UCKG from across the internet so that you can learn more about UCKG, read what others have said and be informed.” (See Appendix 9). Further, I provide a live link to the Complainant’s website. The page title is “Who are UCKG?” The encoded page title is “About UCKG Universal Church of the Kingdom of God”. All of these serve to make it completely clear what the site is and what my intentions are in creating the site and therefore in registering the domain name www.uckg.org.uk There is no room for any confusion in the mind of any visitor as to what he or she is viewing. 
14) The Complainant asserts that there is no indication on the website of any legitimate interest in registering the domain or in creating the site. This is also untrue. I state clearly: “Who runs this website and why? I'm Pete. I started this website after encountering UCKG members … (who)… refused to tell me what UCKG stood for ... So I decided to do my own research. … I hope that this site will help you make up your own mind about UCKG.” (See Appendix 10). This makes it completely clear who I am, what I am doing and why I am doing it. I do have a legitimate interest as a responsible member of the public in the activities of any large and powerful organisation such as the Complainant. I do not accuse the Complainant of any wrongdoing. Instead I invite people to make up their own minds by reading the materials that are referenced from the site (for which I am not responsible). 
15) Based on its assertions mentioned in paragraphs 13 and 14 above the Complainant has convinced itself that my actions “are purely malicious” and that “there is no other apparent explanation for (my) actions”. This is clearly untrue, for reasons that I state in paragraphs 13 and 14 above. 
16) The Complainant contends that my use of the domain name www.uckg.org.uk “is calculated to confuse and deceive members of the public into thinking that (I) … am connected with the Complainant … or that (I am)… or is responsible for or controls the Complainant”. This is impossible since I state immediately on the site (and always have done so) that I am not connected to the Complainant in any way. I clearly state that I am an individual. I clearly state why I wrote and published the site and what my reasons for doing so. To suggest that casual visitors to the website at www.uckg.org.uk might deduce that an individual might control a large Pentecostal church with an annual income of £5million seems to be stretching a point. 
17) The Complainant provides evidence from one individual (a Pastor in the Complainant’s own organisation) who claims to have visited www.uckg.org.uk and who claims to have been temporarily confused into thinking he was viewing the Complainant’s web site. This needs to be set in context. This was one isolated case in many hundreds of visits over several months (Appendix 11). 
18) It is wrong to suggest that a casual visitor to the site located at www.uckg.org.uk might assume it is run by the Complainant or somehow connected to it. www.uckg.org is a large site containing over 1100 different pages and articles as well as sound files, pictures and an active discussion forum and presumably enjoys many hundreds of visitors daily. By contrast my site is one page of plain HTML and always has been. In the very first paragraph of my site I explain clearly that it is not the official site of the Complainant and I offer a live link to the Complainant’s site. At no point do I mislead visitors and nor do I have any reason to do so. I clearly explain who I am and what the site is for. Compare Appendix 12 and 13 which contain indexes of each site and word frequencies.
19) On the balance of probabilities based on my assertions in this response and based on the fact that I clearly state who I am and what my motivation is as well as offer visible and active links direct to the Complainant’s website I do not believe that there can be any confusion on the part of members of the public between the sites located at www.uckg.org.uk and www.uckg.org
20) In support of this assertion, I confirm that in nearly six months of operation I have not received one contact through the site from any members of the public who thought that they were contacting the Complainant or viewing material issued by the Complainant. 
21) Furthermore, I have received several contacts through the website from former employees of the Complainant as well as both former members and current members of the Complainant’s congregation (Appendix 14). Their contact with me makes it completely clear that they at no time had believed that they were viewing a site operated by or connected with the Complainant. They understood the site to be what it is. 
22) The Complainant asserts that “no doubt other people … have been likewise confused and deceived” yet is unable to provide evidence of this. 
23) The Complainant contests that as long as I own www.uckg.org.uk “confusion and deception will inevitably continue”. This is unlikely as such confusion does not currently occur. No ordinary member of the public could be confused into thinking that he or she was viewing the Complainant’s website. I confirm that – if I am allowed to do so - I intend to continue using the site for the same purposes as I have done so since its registration. These are detailed in paragraph 10 above. 
24) The Complainant claims that my ownership of the domain name www.uckg.org.uk has caused the Complainant “considerable harm and damage”. The Complainant has not provided any evidence of this “harm and damage”. 
CONCLUSION 
25) The Complainant asserts that my ownership of the domain name www.uckg.org.uk “jeopardises the valuable work that …(it)… does in the community”. It is a total exaggeration for the Complainant to state that this is so and that my site might harm its charitable objectives. There are hundreds of other pages on the Internet in criticism of the Complainant (see examples in Appendix 15) as well as newspaper articles but the Complainant is not able to exploit the DRS procedure to silence or delete these. The Church must be judged by its actions, and its own goodwill and reputation. None of these are unfairly affected by the information which I have linked to www.uckg.org.uk nor by the act of my registering that domain name for such fair purposes. I do not believe that the Complainant’s rights or goodwill are diminished by my actions. Members of the public must draw their own conclusions from the information that I provide links to. 
26) From the content and tone of the complaint I can therefore only surmise that the purpose of the complaint is to stifle any criticism of the Complainant and to take over the domain name to prevent any wider debate about the Complainant’s activities and ethos. 
27) I request that I am allowed to continue as I have done so until now and to be able to offer a place where debate on the Complainant’s activities can be begun and members of the public can be informed to make their own decisions.” 

The Complainant’s Reply:

The Complainant’s reply to the Response was as follows:

“1) The Complainant has no wish to stifle legitimate discussion of the Complainant and its charitable works, as is suggested by the Respondent. However, the Complainant would point out that the Respondent’s claim to a neutral standpoint is undermined by the one-sided selection of articles linked to the www.uckg.org.uk homepage. 
2) The Complainant set out in its Complaint its grounds for contending that the Respondent’s ownership of the domain name www.uckg.org.uk is liable to result in confusion. It stands by those grounds. 
3) The Complainant further submits that even if the contents of the homepage at www.uckg.org.uk do successfully disabuse internet users visiting the website of any belief that the website is operated by the Claimant (as the Respondent contends), that does not mean that the Respondent’s registration is not abusive. This is because it is plain that internet users are deliberately misled prior to their arrival at the website. 
4) The Respondent acknowledges that he chose the domain name www.uckg.org.uk because it seemed the “logical” domain name for a website offering up critical views relating to the Respondent. It is obvious why he thought the domain name so appropriate: it enabled him to gain access to a stream of internet users who wished to visit the Claimant’s website (as opposed to a website operated by anyone else). The Respondent did this by making use of the distinctiveness and goodwill residing in the Complainant’s unregistered trade mark UCKG. But he had no right to take advantage of the distinctiveness and goodwill of the trade mark in this way. 
5) The tactic of registering the domain name www.uckg.org.uk thus gave the Respondent an unfair and illegitimate platform from which to express his critical view of the Complainant, thereby unfairly disrupting the Complainant’s charitable works. The tactic is no different from, and no less impermissible than, that adopted by a shopkeeper who runs a shop with signage prominently emblazoned with the word “HARRODS” and just before each sale informs customers that the shop has no connection with the famous Harrods of Knightsbridge. The shopkeeper misleads customers in order to further his own ends. In doing so, he diminishes the distinctiveness of the famous Harrods brand and tarnishes the reputation of that brand by association. 
6) In support of the foregoing contentions the Complainant relies upon:
a) the Decision of the Appeal Panel in Case DRS 00389 (Hanna-Barbera Productions, Inc v. Graeme Hay) in connection with the Domain Name <scoobydoo.co.uk>, at paragraph 14: 
“the Panel is unanimous in the view that the purpose of paragraph 4.b [of the DRS Policy] is to dissuade people from taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or criticism. The clear meaning of the Rule is that such a registration is prima facie abusive, unless the Respondent can show otherwise.” 
b) the Decision in Case DRS 00048 (Pharmacia AB v. Steve Wagstaff) in connection with the Domain Name <pharmacia.org.uk>, where at paragraphs 14 and 15, it was said: 
“14. The Expert finds that Respondent’s primary purpose in registering the Domain name was to disrupt the Complainant’s business by unfairly diverting users seeking information on the Complainant and its products to his criticism site, thereby taking unfair advantage of the Complainant’s mark.
15. The site’s disclaimers and warnings that it is an “independent critique” of Pharmacia and Monsanto are ineffective in undoing the unfair advantage gained by the Respondent in using the Complainant’s mark. In the Expert’s opinion, these disclaimers are also insufficient to prevent an internet user incorrectly concluding, even fleetingly, that the site and the Domain Name are somehow endorsed by these companies as a forum for criticism or otherwise connected with these companies.” ”

7.	Discussion and Findings:

Matters in issue

At the heart of this Complaint is a matter which I have no jurisdiction to resolve. Judging by the material selected by the Respondent for inclusion on his site, he is clearly seeking to suggest that the Complainant is a potentially dangerous religious cult which should not be taken at face value. The Complainant is understandably concerned at this suggestion and regards it as “untrue defamatory and damaging”. I am not deciding who is correct on this issue and nothing in this Decision should be taken as support for either party’s view.

The only matters I have to decide are those set out in the Policy. Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant’s Rights

The Respondent does not dispute that the Complainant uses the acronym ‘UCKG’, but he does not accept that the Complainant has exclusive rights in that acronym. He says that ‘the complainant is only able to rely on its use of the acronym over time’ and points out that the Complainant does not own any UK registered trade marks.
Under paragraph 1 of the Policy, “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

It follows that the fact that the Complainant owns no registered trade marks (as correctly pointed out in paragraph 12 of the Response) is not fatal to the Complaint – unregistered rights in the nature of goodwill or reputation built up through use of the acronym ‘UCKG’ in the UK would be sufficient. First, ‘UCKG’ is not wholly descriptive of the Complainant’s business. Second, the Complainant has adduced a significant amount of quantitative and qualitative evidence demonstrating long-standing use of its name in the UK. Third, the Respondent does not point to any other organisations which use the acronym UCKG. Fourth, UCKG is part of the Complainant’s name as registered with the Charity Commissioners. Fifth, the Complainant has registered and used the domain name uckg.org since 1999 and 2000 respectively.

I am satisfied that for present purposes the acronym UCKG would be taken to refer to the Complainant. Perhaps the clearest indication of the Complainant’s rights is the way in which the Respondent himself uses the acronym UCKG: “Who are UCKG? … This website is about UCKG … This website brings together information on UCKG from across the internet … Here are some articles about UCKG … etc.” In his response the Respondent admits that he chose the Domain Name because he was writing a website solely about the Complainant (“This seemed logical”). In combination with the evidence of use put forward by the Complainant, this is in my view unequivocal evidence of the Complainant’s common law rights in the acronym UCKG.

For these reasons I am satisfied that the Complainant owns Rights in the designation UCKG. I am further satisfied that this name is identical to the Domain Name (ignoring, as I am required to do, the first and second level suffixes).

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out in Paragraph 4(a) of the Policy. It seems to me that the key paragraphs of the Policy engaged by this Complaint are paragraphs 3(a)(i)(C), 3(a)(ii), 4(a)(i)(C) and 4(b). They provide as follows:

“3(a)(i)(C) … that the Respondent has registered or otherwise acquired the Domain Name primarily … for the purpose of unfairly disrupting the business of the Complainant”

“3(a)(ii) …that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant”

“4(a)(i)(C) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has … made legitimate non-commercial or fair use of the Domain Name”

“4(b) Fair use may include sites operated solely in tribute to or in criticism of a person or business.”

In a nutshell, the Complainant alleges that the Respondent’s ownership and control of the Domain Name gives him “an unfair and illegitimate platform from which to express his critical view of the Complainant” (para 5 of the Reply). The Respondent’s alleges “that the purpose of the complaint is to stifle any criticism of the Complainant and to take over the domain name to prevent any wider debate about the Complainant’s activities and ethos.”

The Complainant’s evidence of alleged actual confusion based on the content of the website is unimpressive. At Appendix 37 is a letter from Mr Wagner Paiva (a pastor from another branch of UCKG) in which Mr Paiva says of the Respondent’s site “It appeared to be the UCKG site because of the name and even the logo and I was very confused for a while. It took a while for me to realise that it wasn’t the site I was looking for.” Having seen the Respondent’s site, I have to agree with the Respondent’s submission that – with no disrespect intended to Mr Paiva – no one looking at the site could be confused for very long about the ownership of the Complainant’s website.

However, the content of the site (which can be changed very easily) is not the whole of the picture. As the DRS Appeal Panel has pointed out in Case DRS 00389 Hanna-Barbera Productions, Inc v. Graeme Hay, the confusion which arises simply from the Respondent’s adoption of a domain name comprising, without addition, the acronym ‘UCKG’ must also be taken into account:

“In the view of the majority of the Panel, in the context of a tribute site, the vice is in selecting a domain name, which is not one’s own name, but which to one’s knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other.  For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise. In this case the domain name could have been “ilovescoobydoo.co.uk”, for example.  

Taking the Domain Name in these circumstances arguably amounts to impersonation of the owner of the name or mark. Substantial numbers of people will have visited the Respondent’s website (the Respondent admits to a total of over 37,000 visitors to his site) believing that they were visiting the site of the Complainant, a phenomenon sometimes referred to as “initial interest confusion”.  Prior to the posting of the disclaimer, those visitors might well not have been disabused. The fact that the Respondent was selling official merchandise may have encouraged those visitors in their belief that they were visiting an authorised/licensed site. Notwithstanding the Respondent’s denial of any advantage, the Panel is of the view that on the balance of probabilities there must have been an advantage to the Respondent of some kind. Whether or not that ‘advantage’ has led to financial gain is irrelevant. The question is as to whether the advantage he has taken has been fair.”

…

The Panel is unanimous in taking  the view that, taking all that into account, such a use as the Respondent has made of the Domain Name cannot be fair. Impersonation can rarely be fair. … In the hands of the Respondent and his network of 550+ email users the Complainant’s name and mark is out of the Complainant’s control. To that extent its goodwill is outside its control. An email user may bring the name into disrepute. The widespread unauthorised use of the Domain Name in this way may well dilute the distinctiveness of the Complainant’s trade mark rights. In the Panel’s view these are all matters, which the Panel is entitled to take into account when considering whether registration and/or use of the Domain Name has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights. The risk is a present risk and arises both from what the Respondent has done and will, to a greater or lesser extent, continue to do, if permitted to retain the Domain Name. ”

The Panel concluded that the above reasoning applied irrespective of who bore the burden of proof (the same cannot necessarily be said of the passage quoted by the Complainant at paragraph 6 of its Reply, which turns on the different wording of the relevant part of Version 1 of the DRS Policy).
There is also the question of disruption of the Complainant’s activities. Quite apart from the disruption caused by ‘initial interest confusion’ as cited above,  I regard the content of the site as potentially disruptive to the Complainant and in particular its fund-raising activities. As regards the content of the Respondent’s site, he contends in his Response that he has no intention of causing disruption: “I do not accuse the Complainant of any wrongdoing. Instead I invite people to make up their own minds by reading the materials that are referenced from the site (for which I am not responsible)” (para 14 of the Response). In this regard I think the Respondent is not being entirely candid. First, the text on the site itself suggests that the Complainant is voracious in its fund-raising but opaque about “why it was collecting money and where it would be spent”. Second, the Respondent can choose which materials he includes in the links on his site, and his selection is almost universally critical of the Complainant, its finances and its motives. The implicit suggestion of the Respondent is that the public should not give money to the Complainant until they have read all of the ‘bad press’. 
I then turn to the question of ‘fair use’: is it fair for the Respondent to use the domain ‘uckg.org.uk’ for his criticism site? Even under Version 2 of the DRS Policy the DRS Appeal Panel has taken a hard line on respondents who choose domain names incorporating the Complainant’s name without adornment. In DRS 02193 GuideStar UK -v- Wilmington Business Information Limited the Panel held as follows:
“Registering as a domain name, the name of another (without any adornment), knowing it to be the name of that other and intending that it should be recognised as the name of that other and without the permission of that other is a high risk activity insofar as the DRS Policy is concerned. Ordinarily, it would be tantamount to impersonating the person whose name it is. 
Rarely will it be the case that deliberate impersonation of this kind will be acceptable under the DRS Policy.   Various decisions under the DRS Policy have condemned such practices …
… The fact, if it be a fact, that the Domain Name is being used as part of a URL for a protest site is not of itself indicative of fair use.  Paragraph 4.b of the DRS Policy merely indicates that such a use may constitute fair use.  Much will depend upon all the surrounding circumstances, including in particular the identity of the domain name itself.  A finding of fair use will be much more likely in relation to a ‘-sucks’ domain name e.g. guidestarsucks.co.uk.”
It will be appreciated from the GuideStar and ScoobyDoo decisions I have quoted above that the question of fairness is relative rather than absolute. A tribute or criticism site which could fairly be published under the domain name “ilovescoobydoo.co.uk” may be unfair when published under the domain name “scoobydoo.co.uk”; and what is fair for “guidestarsucks.co.uk” may be unfair for “guidestar.co.uk”. By the same token what is fair for “aboutuckg.co.uk” (the Respondent’s other domain name) may be unfair for “uckg.org.uk”. Not without hesitation, I have concluded that the Respondent’s use of uckg.org.uk does not constitute fair use in this sense – or at any rate, not sufficiently fair use to justify the confusion and disruption liable to be caused. I appreciate that this does not fall far short of the conclusion that fair use can never be made of a domain name which is identical with the Complainant’s name, but I find myself driven to this conclusion by the strong indications of the Appeal Panels in ScoobyDoo and GuideStar which I have set out above.

This does not mean it is unfair per se for the Respondent to criticise the Complainant’s activities, or that he can be prevented from doing so using another domain name – it just means that he will not be able to continue doing so using the .uk domain which would most naturally lend itself to the Complainant organisation’s use and which would be likeliest to be the first guess of internet users who were interested in contacting the Complainant. In this connection I am reminded of the reasoning in DRS 00104 British Board of Film Classification v. Bulletin Board for Film Censorship:

“Fifthly the Respondent urges Nominet to dismiss the Complaint on the grounds that it is motivated by a desire to stifle criticism and debate, and that to order the transfer of the Domain Name would be "to deprive the thousands of regular visitors to our site of their freedom of speech and association". In the UK the Respondent undoubtedly enjoys the right of freedom of expression, safeguarded under Article 10 of the European Convention of Human Rights and the Human Rights Act 1998. Of course, that right is not unqualified and is subject to legitimate and proportionate legal restraints including the UK laws of intellectual property infringement and defamation. The Respondent seeks for obvious reasons to portray this Complaint as an attempt by the Complainant to "censor" the Respondent's criticism of censorship, but that is not in my view an accurate characterisation. As the Complainant rightly points out, the requested transfer of the Domain Name would not "stifle or censor criticism. That criticism can and will, no doubt, continue but under another non-abusive domain name reference". I reject the Respondent's claims accordingly.”

It seems to me that the same reasoning applies here. I bear in mind of course that the considerations set out above and in paragraphs 3 and 4 of the Policy are illustrative and non-exhaustive. The ultimate question for my consideration is whether, on the evidence as a whole, the Complainant has discharged the burden of proving that the Domain Name (i) was not registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and (ii) has not been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights. For the reasons I have set out above, I am satisfied that the Complainant has discharged its burden and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision:
Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, uckg.org.uk should be transferred to the Complainant.

______________________	July 21st, 2005 
         Philip Roberts	Date