WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.
Case No. D2000-1221
1. The Parties
The Complainants in this administrative proceeding are the Pavillion Agency, Inc. ("Pavillion"), 15 East 40th Street, Suite 400, New York, New York 10016, USA Pavillion’s President, Cliff Greenhouse, and Pavillion’s Chief Executive Officer, Keith Greenhouse.
The Respondents are Glenn Greenhouse, an individual, and the Greenhouse Agency Ltd., both located at 15 East 40th Street, Suite 901, New York, New York 10016 USA.
2. The Domain Names and Registrar
This dispute relates to the following domain names: "cliffgreenhouse.com" and "keithgreenhouse.com" (the "Greenhouse Domain Names") and "pavillionagency.net", "pavillionagency.org", "pavilliondomestics.com" and "pavillionstaffing.com" (the "Pavillion Domain Names"), sometimes collectively referred to herein as "the Domain Names".
The Registrar of the Greenhouse and Pavillion Domain Names is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA ("NSI").
3. Procedural History
Complainants filed this administrative proceeding with the WIPO Arbitration and Mediation Center on September 14, 2000, in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
Complainants properly effected payment and the Panel agrees with the Center’s assessment that the Complaint complies with the formal requirements. The Respondents were properly notified in accordance with the Rules, Paragraph 2(a). The Respondents’ failed to file a timely response and is in default under these proceedings. The administrative panel was properly constituted, and this Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence on November 15, 2000.
The parties have made no further submissions.
4. Factual Background
The uncontested facts are as follows:
The PAVILLION Name and Service Mark. Pavillion began using the name and service mark PAVILLION for employment agency services in 1962. Pavillion specializes in the provision and placement of individuals who perform personal services for others such a housekeepers, nannies, butlers, personal assistants and estate managers. As a result of 38 years of operations and significant advertising and promotion, Pavillion has created considerable goodwill in the PAVILLION name and service mark; PAVILLION is well-known to the consuming public of Pavillion’s employment agency services and has developed significant commercial magnetism. Significantly, in 1983, Pavillion obtained a service mark registration in the United States Patent and Trademark Office of PAVILLION for employment agency services, Registration No. 1,256,346 which is valid, subsisting and in full force and effect and has become incontestable. Under the U.S. Trademark Act, Pavillion’s registration serves as conclusive evidence of the validity of the PAVILLION mark, of Pavillion’s ownership of the PAVILLION mark and of Pavillion’s exclusive right to use PAVILLION in commerce in connection with employment agency services. 15 U.S.C. § 1115 (b). Pavillion’s registration also serves as constructive notice of Pavillion’s claim of ownership to the PAVILLION mark and registration for employment agency services. 15 U.S.C. § 1072.
The Keith Greenhouse and Cliff Greenhouse Personal Names. Complainant Keith Greenhouse is the Chief Executive Officer of Pavillion and his brother Cliff is President. Cliff and Keith Greenhouse enjoy considerable goodwill in their personal names CLIFF GREENHOUSE and KEITH GREENHOUSE. In fact, both Cliff and Keith have achieved a certain level of media notoriety, having had their names, as well as the PAVILLION name and mark, appear in such widely circulated publications as The New York Times, The Wall Street Journal, The Daily News, Town and Country, and New York Magazine.
The Activities of the Respondents. Martin Greenhouse (MG) and Glen Greenhouse (GG), the first registrant of the domain names in question and a Respondent herein, operates Greenhouse Agency, Ltd. (GAL). GAL is the second registrant of the domain names subject to this proceeding and a Respondent herein. GAL is an employment agency, which competes with Pavillion.
On November 9, 1999, GG and GAL registered with NSI, without the authorization from Complainants, the Pavillion Domain Names and the Greenhouse Domain Names at issue. Respondents are using the Greenhouse Domain Names to divert Internet traffic to their competing website. For example, if one goes to "www.cliffgreenhouse.com" or "www.keithgreenhouse.com", one is linked not to the Pavillion website but to the competitive GAL website.
Respondents were served with a demand letter setting forth Complainants’ claims but have refused to transfer the Pavillion and Greenhouse Domain Names to Complainants.
5. The Parties’ Contentions
Complainants. Complainants submit that "the two Greenhouse Names copy exactly Cliff and Keith Greenhouse’s personal names in which they have common law service mark rights, and that the Pavillion Domain Names are confusingly similar to Complainants’ trade name and trademark PAVILLION as they consist of the registered mark PAVILLION and the descriptive or generic terms "agency", "staffing", or "domestics"." Complainants believe the public is likely to believe that the Domain Names are related to or associated with Complainants’. Complainants further contend Respondents can demonstrate no legitimate interest in the Domain Names because there exists no relationship between Complainants and Respondents that would give rise to any license, permission or authorization by which Respondents could own or use the Domain Names which incorporate in whole Complainants’ PAVILLION name and service mark, and the Greenhouse brothers’ full names. Further, Complainants argue Respondents have no rights to the mark PAVILLION and no rights in the personal names of the Greenhouse brothers.
Respondents. Respondents have not submitted a Response or any other pleadings, arguments or evidence. As provided by Paragraph 14 of the Rules, this Panel may draw such inferences from Respondents’ default, as it considers appropriate.
6. Discussion and Findings
The Applicable Law and Rules. Paragraph 15(a) of 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".
The burden for the Complainant, under Paragraph 4(a) of the ICANN
Policy, is to show:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The domain name has been registered and used in bad faith.
The choice of law in this matter is simple: because the Complainants and Respondents are all New York residents and do business in New York, this Panel will apply the internal, substantive law of the State of New York, the Federal Trademark Act as applicable in New York, and the Policy and Rules that govern this proceeding.
Confusing Similarity. The expression "confusing similarity" is usually synonymous with the term "likelihood of confusion"; however, under the ICANN Policy and the Rules, "confusing similarity" is not the same as "likelihood of confusion". Whether or not there is likelihood of confusion between a Complainant’s mark or name and a Respondent’s domain name is irrelevant. See Solomon, Two New Tools To Combat Cyberpiracy – A Comparison, 90 Trademark Reporter, 679,688 (Oct. 2000), and cases cited therein including Shirmax Retail Lt’d. v. CES Marketing Group, Inc., AF-0101 (2000); Motorola, Inc. v. Newgate Internet, Inc., WIPO D2000-0079; Gateway, Inc. v. Pixelera.com, Inc., WIPO D2000-0109. The test this Panel must apply is simply a side by side comparison of the Complainants’ mark and name and the Respondents’ Domain Names.
1. The Complainants’ Marks and Names.
This Panel finds the PAVILLION name and mark is a strong, arbitrary and well-known mark for employment agency services and has an established and considerable goodwill. Moreover, Complainants’ incontestable federal registration confers upon it conclusive evidence of the validity of the PAVILLION mark for employment agency services and Complainant Pavillion’s exclusive right to use that mark for such services.
While the evidence of record shows the Keith Greenhouse and Cliff Greenhouse names are well-known, it does not clearly establish that either name has been used as a service mark. To achieve service mark status, the names must be used "…to identify and distinguish the services of one person…from the services of others and to indicate the source of the services…" 15 U.S.C. § 1127 (Definition of "Service Mark"). This is not to say that both personal names have not been used as service marks but only that the evidence submitted here does not, on its face, establish technical service mark use.
Nevertheless, Complainants have submitted that the personal names do function as service marks and this Panel holds, for purposes of the proceeding only that the Cliff Greenhouse and Keith Greenhouse names do act as service marks.
Complainants are entitled to protect the considerable goodwill and esteem developed in their personal names under principles of federal and state unfair competition law and the New York State Right of Privacy Statute. See, e.g., 15 U.S.C. § 1125(a) (false or misleading representation of fact which is likely to cause confusion, mistake, or deceive as to affiliation, connection or association is actionable); New York Civil Rights Law § 51 (any person whose name is used for advertising purposes or trade without written consent has cause of action for injunction and damages). This Panel holds that Complainants’ use and established goodwill in their personal names gives rise to several causes of action for Respondents’ blatant misappropriation of that goodwill and that Complainants’ personal names warrant protection from the confusingly similar use present here.
2. The Similarity of Respondents’ Names and Marks.
The Domain Names at issue either are identical or confusingly similar to the Complainants’ names and marks.
The Complainants’ mark is PAVILLION and the Panel takes judicial notice that it uses the domain name "pavillionagency.com" as its website address. The Respondents’ Domain Names "pavillionagency.net" and "pavillionagency.org" are identical to the Complainants’ PAVILLION domain name, in the ".net" and ".org" generic top level domain name fields, and are confusingly similar to Complainants’ PAVILLION mark. The Respondents’ "pavilliondomestics.com" and "pavillionstaffing.com" are confusingly similar to Complainants’ PAVILLION mark and "pavillionagency.com" domain name. By placing the generic terms "agency", "staffing" and "domestics" after the PAVILLION mark, Respondents have attempted to exacerbate the confusion by suggesting a relationship to Complainants’ type of business.
Respondents’ Greenhouse domain names are identical to Complainants’ personal names.
The Panel notes, parenthetically, that the elements proving likelihood of confusion are also present here, and that if the Panel applied the multivariate test set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2 Cir. 1961), cert. denied, 368 U.S. 820 (1961) and its progeny, there would be a clear finding of likelihood of confusion because of the strength of the Complainants’ marks, the high degree of similarity between the Complainants’ and Respondents’ names and marks, the close proximity of the products and services, and the Respondents’ lack of good faith in adopting the subject Domain Names. Thus, even applying this higher standard, this Panel finds likelihood of confusion here.
Respondents’ Rights or Legitimate Interest in Domain Name. Respondents have not demonstrated any legitimate interest in the Domain Names. Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names. Respondents hold no license, permission or authorization to use the Domain Names. Although outside the scope of what this Panel is asked to decide, it is possible Respondents may have some legitimate interest in using domain names that comprise the surname "Greenhouse". But there can be no doubt Respondents are not entitled to use the personal names of Keith Greenhouse and Cliff Greenhouse.
The Panel determines Respondents have no legitimate interest in the use of the Domain Names.
The Domain Names Have Been Registered and Used in Bad Faith.
The Complainants have shown, and Respondents have not refuted, an absolute
lack of good faith in Respondents’ registration of the Domain Names.
Complainants’ PAVILLION name and mark and the Keith Greenhouse and Cliff Greenhouse names are unique, distinctive and may not be used by Respondents, or anyone else, without violating Complainants’ rights under applicable law. Given such distinctiveness, the familial relationship of one of Respondents to Complainants, and the constructive notice provided by the PAVILLION registration, this Panel holds that the Respondents selected the Domain Names with full knowledge of the reputation of the names and marks and with the intent to cause consumer confusion. That the Greenhouse Domain Names link to GAL’s competitive website is another factor favoring a finding of bad faith. Moreover, because the Pavillion Domain Names comprise generic terms that compel an association with Complainants’ business, this Panel can only conclude they were registered in bad faith. These domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests "opportunistic bad faith". Veuve Cliquot Ponsardin v. The Polygenix Group, WIPO D2000-0163.
The Panel has determined that, under the Policy, the Complainants are entitled to the limited relief which this Panel is empowered to provide. The Panel’s decision is based primarily on the terms of the Policy cited earlier, the submissions of the Complainants, the Respondents’ failure to file a response, the United States Trademark Act, and applicable New York Law relating to unfair competition, service mark infringement, and right to privacy.
For the foregoing reasons, the Panel decides:
(a) that the Domain Names registered by the Respondents are identical or confusingly similar to the service marks and personal names to which the Complainants have rights;
(b) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(c) that the Pavillion and Greenhouse Domain Names have been registered and are being used in bad faith by Respondents.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Pavillion Domain Names be transferred to Complainant Pavillion, that the "cliffgreenhouse.com" domain name be transferred to Complainant Cliff Greenhouse, and that the "keithgreenhouse.com" domain name be transferred to Complainant Keith Greenhouse.
Frank L. Politano, Esq.
Date: December 4, 2000