JW.org Sues TheJW.org and Loses

In their complaint to WIPO, Jehovah’s Witnesses described their Pennsylvania corporation as being a nonprofit supporting its worldwide religious, education and charitable activities.  They claimed that they have been using the JW trade mark since 1931 in connection with providing educational services and associated materials relating to the tenets of the religious group. They are owners of registrations of the trademark in several jurisdictions worldwide, including the United States. They have also registered the jw.org domain name since 1999. Jehovah’s Witnesses claim the jw.org website averages more than 2 million visitors per day.

On the other hand, the respondent (the owner of thejw.org), is simply an individual located in the United Kingdom who registered the domain name on February 5, 2020. It contains content critical of the Jehovah’s Witnesses.

The Complaint

Jehovah’s Witnesses contended that thejw.org is identical or confusingly similar to jw.org. They claimed that the respondent had no rights or legitimate interests in respect of the disputed domain name. 

Specifically, Jehovah’s Witnesses claimed that the respondent had no legitimate or fair use of the disputed name because it impersonates jw.org for the purpose of misleading and diverting internet users in searches and educational services and materials to thejw.org. Jehovah’s Witnesses also contended that thejw.org does not in any way signal to potential visitors that the website contains critical content. They also contended that the use of the definite article “the” in thejw.org and in their slogan signals nothing about critical content and only serves to mislead potential visitors into believing that thejw.org is jw.org or “the” one and only Jehovah’s Witnesses website.

In regards to bad faith, Jehovah’s Witnesses relied upon the decision in Netblocks Group v Collin Anderson in contending that the use of thejw.org to impersonate jw.org for the purpose of misleading and diverting internet users “constitutes registration and use in bad faith, which cannot be cured by the content of the respondent’s website.” 

TheJW.org’s Response to the Complaint

The individual in the United Kingdom who owns thejw.org domain name contended that the did not register thejw.org in order to impersonate Jehovah’s Witnesses. In fact, he contended that Jehovah’s Witnesses, in their teachings and theology view the definite article “the” as significant, and that he had chosen to use the definite article in thejw.org in order to parody their teachings. 

He asserted that the did not register thejw.org for commercial purposes as it’s not a commercial website and it does not have a donation page. 

He further contrasted the daily internet traffic of 2 million visitors per day with the handful of daily visitors to his website. He contended that it would be immediately obvious to members of the public and Jehovah’s Witnesses on visiting the website that it is not the official website of Jehovah’s Witnesses.

WIPO’s Findings and Decision

Sebastian M.W. Hughes was the sole panelist assessing this complaint. At the outset, Hughes found that Jehovah’s Witnesses have rights in the acquired use and registration of jw.org.  He also found that thejw.org includes the entirety of the trademark prefaced by the word “the”. Therefore Hughes accepted that thejw.org is confusingly similar to jw.org. The central issue, however, is whether the owner of thejw.org is making a legitimate non-commercial or fair use of his domain name.

In principle, non-commercial free speech supports a claim to a legitimate interest of a domain name. This claim must be genuine and non-commercial, and not found to be primarily use for cybersquatting, commercial activity, or tarnishment. In fact, even when one has created a domain name for legitimate criticism, and is used for genuine non-commercial free speech, it can create an impermissible risk if the domain name is identical to a trademark. Conversely, if the domain name contains the trademark and a derogatory term, such as jwsucks.org for example, the owner of such a trademark has a legitimate interest in using the trademark as part of the domain name of a critical website if such use is non-commercial, genuinely fair, and not misleading or false.  And sometimes, a limited degree of incidental commercial activity is permissible to offset registration or hosting costs associated with the domain name and website.

Hughes found that thejw.org‘s criticism of jw.org is genuine and non-commercial, is not a pretext for cybersquatting, commercial activity or tarnishment. Thejw.org is not identical to the trademark jw.org as it is prefaced by the word, “the” but neither is the use of the word “the” derogatory.  Hughes did dispute the respondent’s evidence that the use of “the” in thejw.org would be readily understood by internet users as parody, especially those who are not Jehovah’s Witnesses. Hughes also criticized Jehovah’s Witnesses reliance on the decision in Netblocks Group v Collin Anderson as that decision involved identical domain names.

Before reaching his decision, Hughes referred to WIPO Case No. D2022-0473 which made use of an “impersonation test” considered against other factors such as “the genuineness and nature of the criticism or commentary, the possible pretextual nature of the respondent’s website, the commercial or non-commercial aspects of the respondent’s website, the nature of the domain name itself including any additional terms or plays on words, the use of disclaimers, and other factors that could inform whether the use of the domain name is for bona fide non-commercial criticism, or to take advantage of a trademark in bad faith or abusive way for the benefit of the respondent. In so doing, he took a holistic approach assessing the totality of factors in this case and found in favor of thejw.org‘s claim to a right or legitimate interest in the use of the disputed domain name.

Jehovah’s Witnesses were required to pay WIPO $1500 in administrative fees to review and decide this case.