WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

San Francisco Museum of Modern Art v. Joshua S. Drapiewski

Case No. D2000-1751

 

1. The Parties

Complainant is the San Francisco Museum of Modern Art, located in San Francisco, California.

Respondent is Joshua S. Drapiewski, an individual located in San Francisco, California.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is "sfmoma.com" ("Domain Name").

The registrar is Network Solutions, Inc.

 

3. Procedural History

This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules"), which apply to the Domain Name.

The complaint was submitted on December 16, 2000. Respondent was sent notice of this action but has not submitted a response. Respondent was declared to be in default on January 19, 2001.

On April 12, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge, Nels T. Lippert and Barbara Solomon as Panelists.

 

4. Factual Background

Complainant is a world-famous museum of modern and contemporary art based in San Francisco, California. Complainant's permanent collection consists of over 18,000 works including a collection of digital art works presented via Complainantís website at "www.sfmoma.org".

Complainant has been using the SFMOMA mark to promote its services since approximately 1989. SFMOMA is an abbreviation for Complainantís full name, San Francisco Museum of Modern Art. An example of Complainantís use of the SFMOMA mark can be seen on its stationery and envelopes.

Complainant has been using the "sfmoma.org" domain name to promote its services since September 1995. Complainant has been frequently referred to as SFMOMA in the media.

Respondent is the owner of a website promoting the artistic value of street graffiti. The website is located at "www.hifiart.com". Respondent registered the challenged domain name "sfmoma.com" on June 19, 1998. Shortly thereafter, and continuing to this day, Respondent has directed Internet traffic from the challenged domain name to his graffiti website at "www.hifiart.com".

According to statements by Respondent to the media in July 1998, Respondent registered the challenged domain name upon realizing that Complainant had registered the domain name "sfmoma.org", but not "sfmoma.com". Respondent is quoted in a magazine article as stating "Iím basically trying to put my foot in the door for graffiti artists and trying to forcefully open peopleís eyes to see this art, and if it takes people unknowingly coming to my site . . .." (emphasis added). The same magazine article indicates that Respondentís Internet traffic nearly tripled after he began using the domain name "sfmoma.com".

 

5. Partiesí Contentions

Complainant contends that the Domain Name is identical to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith as a deliberate attempt to trade on Complainant's mark.

By failing to file a response, Respondent has not denied those contentions.

 

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(1) 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; and

(2) that the respondent has no rights or legitimate interest in the domain name; and

(3) that the domain name has been registered and used in bad faith.

A. Confusing Similarity

Complainant has demonstrated prior rights in the mark SFMOMA based on use. Georgia Gulf Corp v. The Ross Group, ICANN D2000-0218 (WIPO 2000) (recognizing common law rights as basis for UDRP complaint). The second-level domain name registered by Respondent is identical to Complainantís SFMOMA mark. Therefore, Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.

B. Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, Respondent used the Domain Name to direct traffic to a site located at "www.hifiart.com". The Panel has noted that, at some time after notice of this dispute, Respondent apparently added a disclaimer to the "www.hifiart.com" website that "HIFIART" is not "The San Francisco Museum of Modern Art." This Panel finds that the disclaimer in the "www.hifiart.com" website does not militate against the confusing similarity of the Domain Name to the Complainant's SFMOMA mark or the fact that Respondent uses the Domain Name solely to direct traffic to the "www.hifiart.com" site and thus has no rights or legitimate interest in the Domain Name.

Other decisions recognize that consideration of good faith is a key issue in determining whether use is bona fide under the policy. See World Wrestling Federation Entertainment, Inc. v. Rift, ICANN D2000-1499 (WIPO 2000)("not all use prior to notice of the dispute can qualify as bona fide use"). As explained in Ciccone v. Parisi, ICANN D2000- 0847 (WIPO 2000), intentionally infringing use should not be viewed as bona fide use:

We . . . conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.

Here, the evidence indicates that Respondent intentionally selected and used the Domain Name to create confusion and to use that confusion to direct traffic to his site. There is no contrary evidence to indicate that the use was bona fide or any other basis for finding rights or legitimate interests in the Domain Name. Therefore, we find that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

C. Bad Faith Registration and Use

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondents] have registered or [Respondents] have 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 that complainant, for valuable consideration in excess of [Respondentsí] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondents] have registered 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 [Respondents] have engaged in a pattern of such conduct; or

(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on [Respondentsí] website or location."

As specifically noted in the Policy, the circumstances of bad faith are not limited to the above. See, e.g., Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO, February 18, 2000); 3636257 Canada v. eResolution.com, D2000-0110 (WIPO, April 10, 2000).

Respondent's statements to the media show that he deliberately registered and used the Domain Name to direct traffic to his site based on confusion with Complainant's name and mark. The Record also shows that traffic to his site increased dramatically after he adopted the confusing Domain Name, proving that he deliberately registered the Domain Name to derive benefit from Complainant's rights. It also appears that Respondent's site includes links to commercial sites with adult content.

Accordingly, we find that Complainant has met its burden under Paragraph 4(a)(iii) of the Policy.

 

7. Conclusion

We conclude that the Domain Name is confusingly similar to a mark in which Complainant has prior rights, that the Registrant lacks any right or legitimate interest in the Domain Name, and that the Domain Name was registered and used in bad faith. Therefore, Complainant's request for transfer of the Domain Name "sfmoma.com" is granted.

 


 

Mark V. B. Partridge
Presiding Panelist

Nels T. Lippert
Panelist

Barbara Solomon
Panelist

Dated: April 25, 2001