WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ColArt Fine Art & Graphics Limited v. Art2Art LLC
Case No. D2000-1410
This is a mandatory administrative proceeding submitted for decision 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 World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules.
The Administrative Panel consisting of one member was appointed on December 21, 2000 by WIPO.
2. The Parties
The Complainant in this administrative proceeding is ColArt Fine Art & Graphics Limited, a private limited company having a principal place of business at Whitefriars Avenue Wealdstone, Harrow Middlesex, HA3 5RH, United Kingdom.
The Respondent in this Administrative Proceeding is Art2Art LLC, a limited liability company located at P.O. Box 8370, Springfield, MO 65801 and 432 Culver Boulevard, Playa Del Rey, CA 90293 United States.
3. The Domain Names and Registrar
Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, Virginia 20170-5139
4. Jurisdiction and Related Matters
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
5. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 17, 2000. The Center dispatched to the Registrar a Request for Registrar Verification on October 29, 2000. On October 31, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by November 27, 2000. The Respondent did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
6. Factual Background
The Complainant owns an art supply business identified by the trademark WINSOR & NEWTON. Winsor & Newton was founded in 1832 and incorporated in 1881. Since then, it has undergone a number of name changes.
Since 1832, Winsor & Newton has been making colors as a leading manufacturer and supplier of quality fine art supplies. As a result of its long-term, world-wide use, Winsor & Newton has developed substantial fame and goodwill associated with its WINSOR & NEWTON trademarks.
Winsor & Newton consistently has led the art supply industry in volume of sales and in the development of new products and colours.
Art supplies sold under the marks WINSOR & NEWTON currently are available at retail locations world-wide, including in the United Kingdom, the United States, Canada, Africa, Asia, Australia, New Zealand, Latin America and the Middle East.
A full range of artists’ supplies is offered under the mark WINSOR & NEWTON, including paints, books and brochures relating to art and art techniques, pens, pencils, crayons, brushes, palettes, easels, erasers, paper, painting canvas, tracing cloth, painting and drawing boards, portfolio cases, dyes, charcoals, modeling clay, wood, paste and wax.
Over the years, Winsor & Newton has had a strong relationship with artists of all levels and abilities and has assumed a prominent role as a supporter of the arts. This sponsorship has resulted in press coverage as well as the prominent display of the mark WINSOR & NEWTON in conjunction with art exhibits. Recently, Winsor & Newton sponsored "The Winsor & Newton Worldwide Millennium Painting Competition." Over 22,500 artists participated in the competition, which culminated in the exhibit "Our World in the Year 2000," displayed at the Mall Galleries in London, the World Trade Centre in Stockholm, and the United Nations in New York.
The Complainant currently owns the following U.S. federal trademark registrations:
WINSOR & NEWTON, Reg. No. 1,140,150, for "paints, colors, paint pigments, oils, varnishes and paint thinners, all for use by artists" and "books relating to art; printed guides to art materials and on the use of art materials; artists’ materials - namely, pens; pencils; crayons; brushes; palettes; easels; rubber erasers; paper; painting canvas; tracing cloth; painting and drawing boards, rulers and pins; pantographs; modeling clay, wood, paste and wax" registered on October 7, 1980 with a first use date of December 31, 1892 (Footnote 1);
WINSOR & NEWTON & Design, Reg. No. 1,621,854, for "artists’ colours and paints; dye stuffs for artistic purposes; varnishes and natural resins for artists’ use" and "artists’ papers and boards; artists’ canvas and canvas boards, pencils, charcoal sticks for drawing and sketching, crayons, pastels, pens, erasers, artists’ brushes, palettes, mixing trays and cups, palette knives, drawing boards, easels, rulers and t-squares, mahl sticks, artists’ sponges, artists’ portfolios, ink for drawing and writing, pencil sharpeners; publications and printed matter, namely, brochures, pamphlets and books relating to artistic techniques and materials and to artists and their work; modeling clay and modeling paste" registered on November 13, 1990;
WINSOR & NEWTON & Design, Reg. No. 2,202,460, for "articles made of leather or imitation leather or plastics, namely, attaché cases, backpacks, school bags, school book bags, shoulder bags, documents cases, fanny packs, waist packs, satchels, holdalls, briefcases, wallets, envelopes made of leather or imitation, pouches made of leather or imitation leather, briefcase-type portfolios for carrying artwork; umbrellas and umbrella covers" registered as of November 10, 1998;
WINSOR & NEWTON, Reg. No. 2,196,965, for "articles made of leather or imitation leather or plastics, namely, attaché cases, backpacks, school bags, school book bags, shoulder bags, documents cases, fanny packs, waist packs, satchels, holdalls, briefcases, wallets, envelopes made of leather or imitation, pouches made of leather or imitation leather, briefcase-type portfolios for carrying artwork; umbrellas and umbrella covers" registered on October 20, 1998.
The Complainant also owns trademark registrations of the mark WINSOR & NEWTON world-wide.
The Complainant has not authorized the Respondent to use the words "Winsor & Newton."
The subject domain name did not resolve to an operational web-site. It was used as a link to the business operated by the Respondent at art2art.com. That web-site sells art supplies.
After the Complainant contacted the Respondent, the link was disabled.
As of October 7, 2000, the subject domain name has not been in use.
The Respondent does not manufacture goods, but offers products manufactured by others, including those of the Complainant. In addition, both parties sell paints, oils, varnishes, books relating to art, pens, pencils, brushes, palettes, easels, paper, canvas, art boards, rulers and t-squares, clay and charcoal.
The Respondent offered to sell the subject domain name to a third party and in response to the Complainant cease-and-desist letter and demand for the transfer of the subject domain name, the Respondent sought compensation for goodwill, lost traffic and customer confusion.
7. Parties’ Contentions
The Complainant relies on its historical use of the name Winsor & Newton and on its trade mark registration. It says that the subject domain name is confusingly similar to its name and mark because the only difference is the addition of the letter "d" in the word "Winsor".
The Respondent presently makes no use of the subject domain name and when it did so, the use led customers to the Respondent. This, the Complainant says is not a legitimate use of the subject domain dame.
The Complainant asserts that bad faith is shown by the Respondent linking the subject domain name to its web-site and by its demand for compensation.
The Respondent made no submission in this proceeding.
8. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
ii) the Respondent has no legitimate interest in respect of the domain name;
iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to a number of decisions of domestic courts. While this is often very helpful, they are not determinative in an ICANN domain dispute proceeding.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The words "Winsor & Newton" have been used by the Complainant or its predecessors for a considerable period of time. It has registered the words as trade marks.
The only difference between the Complainant’s rights and the subject domain name is the addition of the letter "d" in the word "Winsor". Arguably, that is merely a spelling "error". The subject domain name essentially is identical to the Complainant’s name and mark.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The subject domain name presently is not being used, but when it was it led to the Respondent’s competing business. Both actively and passively the conduct of the Respondent leads to an inference that it has no legitimate interest in the subject domain name. In the absence of any explanation by the Respondent, the inference becomes a conclusion.
The Administrative Panel finds that the Complainant has established the requirements of paragraph 4(a)(ii).
C. Bad Faith
Use of a domain name that is confusingly similar or essentially identical to an owner’s name and mark for the purpose of drawing customers to a competing enterprise is bad faith conduct. The fact that the conduct ceases after contact from the owner could exhibit good faith, but the potential for misuse remains.
Demanding compensation for more than its documented out-of-pocket costs directly related to the domain name, is evidence from which bad faith can be inferred. The Respondent sought compensation for its so-called goodwill, lost traffic customer confusion. Prima facie this demand was for more than the costs to which it would have been entitled if it were acting in good faith. This conduct makes the potential for misuse more real and is in itself evidence from which bad faith reasonable can be inferred.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and the findings noted above, the Administrative Panel concludes that the Complainant has proven its case. The Complainant asks that the subject domain name be transferred to it.
The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: December 26, 2000
1. Although the United States Patent & Trademark Office Trademark Text and Image Database continues to list Reckitt & Colman Fine Art & Graphics Limited (the prior name of the Complainant) as the owner of this mark, the change of name to ColArt Fine Art & Graphics Limited has been recorded with the PTO.