LeitsätzlichesEine der größeren Schwierigkeiten bei den WIPO-Schiedsverfahren, in denen sich der Respondent nicht zu Wort melden muss, liegt darin, als Antragsteller den erforderlichen "Bad Faith" (etwa: Böswilligkeit) des Gegners darzulegen. Es reicht nicht aus, dazu lediglich die Behauptung etwa einer Weiterleitung zu einer kommerziellnr oder rufschädigenden Seite zu behaupten, sie müsste auch dargelegt werden. Als starkes Indiz für Böswilligkeit im zu entscheidenden Fall wirkte jedoch die Tatsache, dass der Respondent schon aus einer Vielzahl anderer Fälle als cybersquatter bekannt war.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2003-0600
Entscheidung vom 24. September 2003
1. The Parties
The Complainant is B. R., .. U.K..
The Respondent is so so domains ..., United States of America.
2. The Domain Name and Registrar
The disputed domain name <bridgetriley.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2003. On August 1, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On August 4, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, informing that so so domains is the current registrant of the domain name, and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 5, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2003. In accordance with the Rules, paragraph paragraph 5(a), the due date for Response was August 28, 2003. . The Respondent did not submit any response. Accordingly, the Center notified the Respondentâ€™s default on August 29, 2003.
The Center appointed Arne Ringnes as the sole panelist in this matter on September 9, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph paragraph 7.
4. Factual Background
This case concerns the domain name <bridgetriley.com>
4.1 The Complainant, Bridget Riley is a contemporary pictorial artist. The Complainant, who is domiciled in the United Kingdom, became famous in the 1960s for her paintings known as Op art, the school of art that exploits optical phenomena to make a work appear to flicker, pulsate or move. Her black and white optical pattern paintings have been described as a hallmark of the period. Since the 1960s she has achieved worldwide recognition as a contemporary artist.
The Complainantâ€™s key works include:
Drift No.2 (1966)
Nineteen Greys (1986)
Winter Palace (1981)
Set Fair 2 (1990)
The Complainantâ€™s works have been regularly exhibited in solo and group exhibitions. Over the years she has exhibited in many countries, including UK, Ireland, USA, Australia, Japan, Germany, Israel and France. The Complainant remains at the forefront of the contemporary art world and currently has a large solo exhibition of her paintings at the Tate Britain in London, the National Gallery of British Art which itself is one of the worldâ€™s leading art galleries.
The Complainant does not have registered trademark protection for the mark BRIDGET RILEY.
The Complainant has registered a number of domain names comprising of BRIDGETof BRIDGET RILEY including the following:
They are all registered in the name of BRS Limited, except for <bridgetriley.net>, <bridgetriley.org> and <bridgetriley.info> which are registered in the name of Bridget Riley. BRS Limited is Bridget Rileyâ€™s trading company. Complainant states that all rights in the name Bridget Riley and exploitation of those rights are controlled by the Complainant.
4.2 The domain name was registered by Pro--Life Domains. "Barry, John" was listed as administrative and technical contact. According to Complainant, the domain name was being used to directly access the website at the domain name <abortionismurder.org>, a website registered to an organization called abortionismurder.org, containing anti--abortion material.
Whilst the domain name was registered in the name of Pro--Life Domains, the Complainant received an e--mail on May 14, 2003, from the email address listed for the administrative and technical contact, John Barry, with the subject "bridgetriley.com":
You can buy this domain for $999 at JimFox.com Cheers."
The Complainantâ€™s representatives wrote to the sender of the e--mail on May 19, 2003, stating, inter alia, that the Complainant was prepared to agree to buy the domain name for US$999 on the condition that the registrant immediately removed the link from the domain name to the "www.abortionismurder.org" site and refrained from using the domain name or any similar domain name comprising or consisting of the name Bridget Riley. In addition the Complainant would only agree to buy the domain name on the conditionthe condition that it was first transferred to Complainant and the purchase money was held by the Complainantâ€™s legal representatives until completed.
The Complainantâ€™s representatives received the following response via e--mail on May 20, 2003, from the same email address:
"After you make payment via jimfox.com put in for a transfer at Directnic. I have to be paid first. Cheers, John."
Around July 21, 2003, the Complainant noticed that the link to the "www.abortionsmurder.org" site had been removed and replaced by a direct link to the website at "www.jimfox.com." At the same time it was also noted that the registrant had changed its name from Pro--Life Domains to Dom 4 Sale Inc. The address and phone number of this registrant is the same as that of Pro – Life Domains, whereas the contact details for Dom 4 Sale Inc. is Domain For, Sale with a different email address.
According to the Complaint, the website accessed by "www.jimfox.com" (transcript of the site "www.jimfox.com" has not been submitted as evidence) offers to sell domain names. . On the site it is offered the sale of domain names at a price of US$999 and to put the name of the domain name in the subject line of the paypal payment. Following the link to "www.PayPal.com",," the information on this website states that "PayPal is the authorized payment processor for [lists same e--mail address as for Dom 4 Sale Inc.]" and that payment shall be made to this email address.
The Complainant was not satisfied after viewing the website "www.jimfox.com" that it was a legitimate site or that payment on the site would guarantee the transfer of the domain name. The Complainantâ€™s legal representatives responded by e--mail to the author of the e--mail, whom Complainant believes to be John Barry, reiterating the terms upon which the Complainant was prepared to purchase the domain name, stating that it would only agree to the transfer through Direct NIC and that payment would only be made to the registrant once confirmation was received that this was completed.
Following this e--mail, on May 22, 2003, the Complainantâ€™s legal representative received a phone call from "John",," the registrantâ€™s representative, during which the registrant made it clear that the only way he would transfer the domain name to the Complainant was if he first received payment through "www.jimfox.com".."
The domain name registrantâ€™s details changed again on August 3, 2003, to so so domains, who is the Respondent in this case. The contact details, including the address, telephone and e--mail, remain the same as that of Dom 4 Sale Inc.
5. Partiesâ€™ Contentions
(1) Trademark Rights
The Complainant contends that although the Complainant does not have registered trademark protection for the mark BRIDGET RILEY, the mark has sufficient reputation and goodwill to successfully assert unregistered trademark rights, which, for example, if considered in the UK courts would be sufficient to sustain an action for passing off and if considered in the US courts would be sufficient to sustain an action for trademark infringement. In this respect, Complainant also refers to Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, and Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.
Furthermore it is contended that the Complainant clearly uses the name Bridget Riley in a trademark sense to identify her goods as originating from Bridget Riley and that the Complainant has demonstrated commercial exploitation of the mark through the exhibition and sale of her paintings and prints under the mark.
(2) Identical Domain Name
The domain name registered by the Respondent is identical to the Complainantâ€™s trademark. The addition of the ".com" suffix to the mark to form the domain name does not change the likelihood of confusion with the Complainantâ€™s mark.
(3) No Rights or Legitimate Interests in Respect of the Domain Name
The Complainant has not authorized or consented to the use of the domain name by the Respondent or any prior owner of the domain name, in particular Pro--Life Domains which the Complainant asserts is clearly connected with the Respondent, so so domains. Further, the Respondent is not known by the domain name and therefore cannot rely on paragraph paragraph 4(c)(ii) of the Policy. The Complainant is not aware of any individual, business or organization connected with the domain name, the Respondent or previous registrants, who or which is commonly known as Bridget Riley.
(4) Registered and Being Used in Bad Faith
The Complainant submits that the Respondentâ€™s primary purpose for acquiring the domain name was to sell the domain name registration to the Complainant for valuable consideration in excess of its out--of--pocket expenses. In this respect Complainant contends that the domain name is being used to divert users to the website at "www.jimfox.com" which offers domain names for sale for US$999. This is not a bona fide offering of services under paragraph paragraph 4(c)(i), but a clear attempt to offer the domain name for sale. Here, Complainant also refers to the communication with John Barry given account of in para 4.2 above. The Complainant considers that the sum of US$999 far exceeds Respondentâ€™s out--of--pocket expenses relating to the domain name.
Further, Complainant contends, in light of the fact that the new registrant so so domains, and Dom 4 Sale Inc. have the same e--mail address as well as the fact that the entities so so domains, Dom 4 Sale Inc. and Pro--Life Domains have the same address and telephone number, that all of these entities are one and the same. Domain names registered by John Barry (under a selection of different names including Best Domains, Domains for Sale, Buy This Domain, Domain World and now Pro--Life Domains and Dom 4 Sale Inc.) have been the subject of numerous UDRP proceedings, all of which have resulted in rulings against the Respondent. Inter alia, Complainant argues that Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677 is of particular relevance, as the facts and circumstances were extremely similar and in which the e--mail address referred to is the same as the e--mail address of the present Respondent. In this respect it is alleged that the Respondentâ€™s representative John Barry is a notorious cybersquatter engaged in a pattern of registering domain names in bad faith.
It is further contended as bad faith use that whilst the domain name was registered by Pro--Life Domains, it was being used to directly access the website at "www.abortionismurder.org",," a website registered to an organization called abortionismurder.org. The website is an extremely graphic and radical anti--abortion campaign site. No goods or services are offered at the site and these activities are not within the provisions of paragraph paragraph 4(c)(i) of the Policy. The use made of the domain name in this manner cannot be considered a legitimate non--commercial or fair use under paragraph paragraph 4(c)(iii) of the Policy. There is a clear intention to take advantage of the Complainantâ€™s goodwill and reputation in her name to divert internetInternet users to the website and thereby associate the Complainant with a cause that she has neither endorsed nor has any connection with, and it is likely to tarnish the Complainantâ€™s name in the eyes of a large proportion of the public.
The Respondent did not reply to the Complainantâ€™s contentions.
6. Remedies Requested
The Complainant requests the Administrative Panel to issue a decision that <bridgetriley.com> be transferred to the Complainant.
7. Discussion and Findings
A. Identical or Confusingly Similar
Under paragraph paragraph 4(a)(i) of the Rules, the Complainant shall prove that she has rights in a trademark and that the domain name in question is identical or confusingly similar to the trademark.
This case concerns the domain name <bridgetriley.com>, which is identical to the name of the Complainant – Bridget Riley. Thus the question to be discussed is whether Complainants name is to be regarded as a "trademark" under the Rules. BRIDGET RILEY is not registered as a trademark, but this is not a requirement in order for such a right to exist, see the decision in Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.
The protection of personal names under the UDRP is discussed in the Report of the Second WIPO InternetInternet Domain Name Process, dated September 3, 2001, under paragraphs 181--184. It is pointed out that relevant factors are (i) the distinctive character or notoriety of the name and the requirement that the domain name must be "identical or confusingly similar" to it; (ii) the relationship between this distinctive character and use of the name in connection with goods or services in commerce; and (iii) the location of the parties and the bearing that this may have on the acquisition of unregistered trademark rights. It is further held that panels in many cases have emphasized – with respect to the distinctiveness of the name – whether the name enjoys widespread notoriety and fame in the relevant field of commerce. In line with this, panels have also focused on whether the person in question is sufficiently famous in connection with the services offered by the complainant. It is held that using a personal name in association with certain goods or services can create distinctiveness and a secondary meaning in the name. With respect to applicable law, this would depend on the facts of the case, including the location of the parties.
Based on this analysis, the Panel will base its considerations in this matter on the legal understanding that under the Rules, personal names may enjoy protection against identical or confusingly similar domain names if the name has sufficient notoriety and distinctive character in connection with the goods offered by complainant. Further, given the fact that the Complainant is domiciled in United Kingdom, the Panel is of the opinion that Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 is of particular reference and guidance to this matter.
Jeanette Winterson is a well--known author, and she contended that she had achieved international recognition and critical acclaim for her works, and that the use of her name had come to be recognized by the general public as indicating an association with words written and produced exclusively by her. Accordingly, she alleged that she has common law rights in the mark. The Panelist in this case thoroughly discussed the position under United Kingdom law based on applicable decisions of the English Courts and concluded in paragraph paragraph 6.12 that "in the Panelâ€™s view trademarks where used in para.4a of the Policy is not to be construed by reference to the criteria of registrability under English Law [the ELVIS PRESLEY case] but more broadly in terms of the distinctive features of a personâ€™s activities. In order words, akin to the common law right to prevent unauthorized use of a name." Based on this, the panel found that under English Law, Jeanette Winterson would have a cause of action to prevent unauthorized use of the mark JEANETTE WINTERSON in passing–off, and this was sufficient to establish a trademark right under paragraph paragraph 4 of the Rules.
The facts in the present case are close to the facts in the Winterson case. Thus, the Complainant – Bridget Riley – is a world famous contemporary artist who over the 40 40 years of her career has built up substantial reputation in her name. Amongst the evidence submitted is an article published on the Tate Britain website, which says that
"a major exhibition devoted to the work of Bridget Riley will open at Tate Britain in June 2003. . Bridget Riley is one of Britainâ€™s most respected artists and one of the few contemporary painters with a truly international reputation. . Her distinguished and singular career encompasses 40 years of uncompromising and remarkable innovation."
Other articles submitted as evidence express that Bridget Riley has a prominent place in the history of post war art, and that her work has been exhibited widely in Europe, Japan and Australia and also that Bridget Riley has long been United Kingdomâ€™s leading exponent of Op art. Her works are the subject of a number of publications.
Based on this, the Panel concludes that the name Bridget Riley has sufficient notoriety, distinctiveness and goodwill in connection with the artworks of the artist to enjoy protection as a "trademark" under the Rules and that the Complainant has rights in it.
Accordingly, Complainant has proved the first element under the Rules.
B. Rights or Legitimate Interests
Under paragraph paragraph 4(a)(ii) of the Rules Complainant shall prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Panelist finds that the Complainant has not authorized or consented to use of the domain name by the Respondent, nor that the Respondent is commonly known by the domain name. Thus, the second condition under the Rules is proved by Complainant.
C. Registered and Used in Bad Faith
As the third condition for succeeding in the claim, the Complainant shall prove that the domain name <bridgetriley.com> has been registered and is being used in bad faith. The Complainant has submitted a number of arguments to support its contention that this condition is proved. Some of these arguments are not sufficiently substantiated. Especially the Panel will point out that Complainant has not submitted any evidence showing that the domain name was used to direct users to the website "www.abortionismurder.org.". The Panel can only rely on facts that are substantiated by written evidence and can therefore not take into consideration the arguments which are based on the alleged link to "www.abortionismurder.org.".
The Panel is of the opinion that the relevant starting point in the examination of whether the domain name <bridgetriley.com> is registered and used in bad faith, is the fact that a person under the name "John" has offered to sell the domain name for a sum of US$999. The Panel finds that it is likely that this amount exceeds the out--of--pocket costs directly related to the domain name. Accordingly, this offer – which has been repeated – is a bad faith use as defined in paragraph paragraph 4(b)(i) of the Rules. Further, it is sufficiently evidenced that the person making this offer was the registrant at the time the offer was made, namely Pro--Life Domains. In this respect the Panel refers to annex 2 to the Complaint, showing that the contact details of the registrant Pro--Life Domains was Barry, John with the same email address as the "John" who made the offer. On this basis, the Panel concludes that it is proved that Pro--Life Domains should be identified with John Barry.
However, as the Respondent in this case is so so domains, and not Pro--Life Domains, this finding does not evidence that the Respondent has acted in bad faith in connection with the acquisition and use of the domain name. The Panel will not discuss whether the Respondent has acquired the domain name in bad faith and whether the acquisition of the domain name with the knowledge that it has been used in bad faith previously, amounts to bad faith use under the Rules. This is because the Panel finds it sufficiently evidenced that the respondent and the former entities registered as holders of the domain name – Pro--Life Domains and Domain 4 Sale Inc. should be regarded as one and the same person with respect to the application of paragraph paragraph 4 of the Rules. The basis for this finding is firstly that the address and telephone number stated in the contact details for each of the holders are the same. Secondly, the e--mail addresses of Dom 4 Sale Inc and the Respondent are the same. Thirdly, this e--mail address corresponds to the address that John Barry requested that payment for the domain name <bridgetriley.com> should be made to. Fourthly, John Barry is an individual known for his cybersquatting activities and has on numerous occasions been found to have registered and used domain names in bad faith. There is no doubt that John Barry has shown a pattern of registering and using domain names in bad faith.
On the balance of facts in this case, the Panel finds that the changing of registrants of the domain name, from Pro--Life Domains to Domain4 Sale Inc. and then to so so domains, may be a smokescreen in order to obscure the actual holder of the domain name – namely John Barry. Even if these names are different legal entities (there is no evidence to shed light on this), the Panel finds it likely that both the registration and use of the domain name is controlled by John Barry. Hence, the Panel concludes that Respondent has registered and used the domain name in bad faith.
Accordingly, the Complainant has proved the third condition under the Rules.
For all the foregoing reasons, in accordance with Paragraphs Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bridgetriley.com>, be transferred to the Complainant.