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Adventist.com Owner Can’t Attack Church’s Mark, Fed. Cir. Says

Aug. 8, 2022, 4:28 PM

Domain-seller Philanthropist.com couldn’t petition to cancel the General Conference Corp. of Seventh-Day Adventists’ “Adventist” trademark registration just because it owned adventist.com and received a legal threat, the Federal Circuit affirmed.

Philanthropist.com said its economic interest in the mark—combined with a cease and desist letter from GCCSDA gave it a “statutory cause of action” to ask the Trademark Trial and Appeal Board to cancel the mark. But the Federal Circuit summarily affirmed the TTAB dismissal of the petition without an opinion, awarding costs to GCCSDA.

The panel appeared to accept GCCSDA’s argument that Philanthropist.com had never used the domain and had no trademark interest, and that letting domain-owners sue based on that alone would “open the floodgates” for petitions to cancel. Philanthropist.com had argued that the required interest in the mark isn’t necessarily tied to having trademark rights, and that its desire to sell the domain “free-and-clear” of any trademark litigation threats gave it a right to contest the mark.

The GCCSDA sent its cease and desist letter demanding transfer of the domain in 2016. It threatened both trademark litigation and a case with international Internet Corporation for Assigned Names and Numbers (ICANN) under the Uniform Domain Name Dispute Resolution Policy (UDRP). Philanthropist.com refused, and GCSDAA filed its UDRP action. While that was pending, Philanthropist.com moved to cancel the church’s Adventist trademark.

ICANN declined to transfer the domain to GCSDAA. It said domain resellers selling domains for their generic value is a legitimate interest, and that the domain wasn’t registered or used in bad faith. The TTAB then ruled in June 2021 that Philanthropist.com couldn’t oppose the church’s “Adventist” mark as generic because merely owning adventist.com didn’t establish any trademark-related interest.

The parties argued before the Federal Circuit on Aug. 4. The panel pushed Philanthropist.com on the issue of whether it would “open the floodgates,” as GCCSDA said, if the court found a “cause of action,” a trademark version of standing. Derek M. Gillis, an attorney for the appellant, denied it would, citing the letter as the impetus. Mark owners should “be careful about the letters they send” and not send them over non-infringing uses if they wanted to avoid a petition to cancel, he told the panel.

GCCSDA said its threat letter didn’t remain in full force forever, and that after it litigated its UDRP action, it had no other justifiable reason to go after Philanthropist.com.

Judges Raymond T. Chen, Tiffany P. Cunningham, and Leonard P. Stark sat on the panel.

Buchanan Ingersoll & Rooney PC represented GCCSDA. Barton Gilman LLP and Savage Law Partners represented Philanthropist.com.

The case is Philanthropist.com Inc. v. General Conference Corp. of Seventh-Day Adventists, Fed. Cir., No. 21-2208, 8/8/22.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Tonia Moore at tmoore@bloombergindustry.com