WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New York Design Center, Inc v. Roberto Pereira
Case No. D2001-0766
1. The Parties
The Complainant is New York Design Center, Inc of 200 Lexington Avenue, New York, NY 10016, USA.
The Respondent is Roberto Pereira of Av N S Copacabana 1137-9, Rio de Janeiro, RJ 22070-010, Brazil.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is <newyorkdesigncenter.com>. The Registrar of the domain name as at the date of the Complaint is Register.com, Inc ("Register.com").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation For Assigned Names And Numbers ("ICANN") on October 24, 1999, the ("Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules For Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999, (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy on June 8, 2001, and by e-mail on June 12, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.
3.3 The Center sent a request for Registrar verification to Register.com on June 12, 2001, by e-mail. Register.com responded to the Center's request by e-mail on June 12, 2001, stating:
(a) that Register.com was the Registrar for the domain name in dispute and that Roberto Pereira was the current registrant of the <newyorkdesigncenter.com> domain name, and that the domain name in dispute was active.
3.4 The Center sent a Complaint Deficiency Notification to the Respondent advising the Respondent of the identity of the actual registrant for the domain name <newyorkdesigncenter.com>, requesting that the Respondent amend the Complaint accordingly.
3.5 On June 13, 2001, the Complainant sent an Amendment to Complaint by e-mail to the Center and to Register.com. The hard copy of the Amendment to Complaint was sent to the Respondent on June 13, 2001.
3.6 Compliance with formal requirements having been satisfied on June 19, 2001, the Center sent on the same day a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by courier, and to both Respondent and Complainant by e-mail.
3.7 The Center received the Response from the Respondent on July 5, 2001, (electronic copy) and July 10, 2001, (hard copy). The Center sent an Acknowledgement of Receipt of Response to the Respondent on July 5, 2001, with an e-mail copy to the Complainant on the same date. The Center advised the Respondent that the Response did not comply with the Rules, Paragraph 2(b) and requested that the Respondent send to the Complainant's representatives a complete copy of the Response (including the annexures) to the postal address provided in the Complaint.
3.8 On July 5, 2001, the Complainant also indicated a desire to file a reply to the Response, acknowledging that "acceptance of the reply is within the discretion of the Panel". The Respondent advised the Center on July 6, 2001, that hard copies of the Response had been sent on July 6, 2001, to the Complainant, and asserted that replies to the Response would not be in accordance with the Rules. On July 6, 2001, the Center sent an e-mail to the Respondent regarding the Center's position on further submissions or "supplemental filings" other than the Complaint and the Response. It advised that parties seeking to file additional submissions should seek consent from the Center.
3.9 The Complainant sent a "Reply" to the Center and to the Respondent which was received by the Center on July 9, 2001, by e-mail and on July 10, 2001, in hard copy.
3.10 The Respondent sent a "Reply of [sic] Complainant's Reply" with hard copy to the Complainant and Center, received by the Center on July 17, 2001.
3.11 The Complainant sent further submissions by e-mail to the Center and to the Respondent on July 12, 2001, and on July 23, 2001.
3.12 The Center appointed the Administrative Panel on July 26, 2001, and sent a Transmission of Case File to the Administrative Panel by e-mail on July 26, 2001. The documentation was received in hard copy by the Panel on July 30, 2001, in Sydney, Australia.
3.13 All other procedural requirements appear to have been satisfied.
4. Factual background
4.1 Activities of the Complainant
The Complainant is a corporation which owns a building at 200 Lexington Avenue, New York, USA known as the "New York Design Center", and provides showroom facilities for the display of furniture and interior design products.
4.2 The Complainant's trade marks
The Complainant is the owner of the service mark "New York Design Center", US Trade Mark reg. no. 1,972,932, registered on May 7, 1996, with first use in commerce in 1983. The Complaint states that this was the time at which the company, originally known as "The New York Furniture Exchange" changed its name to "The New York Design Center". The trademark is endorsed with disclaimers to the words "design center", and is registered in Class 35 (advertising and business) for "providing showroom facilities for the display of furniture and related interior design products". The Complainant also has a registered service mark in the United States for the acronym "NYDC", reg. no. 2368523 in classes 35 and 42 (for which it did not provide a certificate in its evidence), and a website <nydc.com> in which it appears to the Panel that the "New York Design Center" mark and the "NYDC" mark are used together and interchangeably.
The Complaint states that the New York Design Center houses more than 100 showrooms of individual interior design and furniture companies and has exhibited in evidence examples of its Spring 2000 catalogue and "Residential Directory". Although the Complainant has not provided evidence of its advertising expenditure or hits on its "www.nydc" website (which would have provided helpful evidence of its reputation), the Complaint asserts that the New York Design Center "advertises in every American journal catering to interior furnishings on the market with international distribution including Architectural Digest, Elle Décor and House Beautiful". Exhibits to the Complaint provide examples of press clippings confirming the industry's familiarity with the Complainant. The "Residential Directory" shows that the building has housed (and may continue to house - the documents are undated) the New York chapters of the American Institute of Architects (AIA) and the International Furnishings and Design Association ("IFDA"). A press release of the Complainant dated April 17, 2001, announces the 75th anniversary of the opening of the New York Design Center building in 1926, and lists a series of anniversary functions, including a "Designer's Saturday Student Portfolio Day" hosting design firms and students from six New York design schools, a "75th Anniversary Gala Celebration", co-hosted by the publication House Beautiful with proceeds to certain charities; a "Worldstudio Foundation Benefit" hosted by Architectural Digest; and the "9th Annual CONSTRUCTION Competition and Gala Reception" organized by the AIA with another industry organization.
The longevity of the Complainant, the continuity of business in the Complainant's building and its links to industry publications and professional bodies all lend weight to the Complainant's assertions of the strong reputation of its service mark in the interior design industry, locally, nationally and internationally.
4.3 Activities of the Respondent
The Respondent states that he is an associate of the company "3R Propagandas, Promocoes e Publicidade Ltda", with the "official purpose" of "publicity, advertising, and similar services, like media, dissemination, promotion and intermediation". The Respondent has not provided English translations of the Portuguese language documents exhibited with the Response, and the Panel relies on the evidence in both the Response and the Complaint to interpret the documents. The Panel notes that, under paragraph 11 of the Rules, the language of this administrative proceeding is to be the language of the registration agreement, which in this case is English. The Respondent has not sought any alternative determination from the Panel and there is no evidence that the parties have otherwise agreed.
Respondent asserts that it has qualifications in the field of Industrial Design and exhibits to his Response a "Certidao de Conclusao de Curso" in "Desenho Industrial - Habilitacao em Programacao Visual" from UniverCidade, Rio de Janeiro, dated June 25, 2001. It appears Respondent graduated from this course on August 20, 1999. The Response also exhibits a certificate of participation in a seminar on Adobe Print Solutions, dated July 6, 2000. Respondent states that it has developed "countless works for dozens of companies such as Helena Rubinstein, Merck, Repsol YPF etc" and exhibits 4 documents which appear to be advertisements or leaflets. Nothing on these documents indicates the nature of Respondent's work or contribution to those documents.
5. The Complainant's contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name in dispute is identical to the Complainant's "New York Design Center" registered service mark, "the only difference being those inherent to domain names, i.e., the run-on nature of the words and the ".com" tag in the domain name".
5.3 In reference to paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent cannot demonstrate any legitimate interests in respect of the domain name "New York Design Center". Complainant's submissions on legitimate interests and bad faith of the Respondent merge confusingly and are not assisted by their lack of structure and flamboyant language. However, the following is an attempt by the Panel to summarise the thrust of the Complainant's contentions:
(a) Respondent's website had no content and no bona fide offering of goods or services prior to notice to it of this dispute. Respondent's own correspondence (email April 4, 2001, Exhibit E to the Complaint) confirms that <newyorkdesigncenter.com> was not an active website prior to Complainant's correspondence with the Respondence concerning the website (commencing March 22, 2001); and
(b) Respondent's use was not a legitimate non-commercial or fair use of the domain name, but rather, Respondent intended to use the name for commercial gain to misleadingly divert consumers. Respondent's lack of legitimate interest in the domain name is demonstrated by his original assertions that it was involved principally in the design of jewels, which is "completely different from providing showroom facilities for the display of furniture and related interior design products". However, upon creation of his website, "jewels" appears to be only an incidental adjunct to other "services" provided by the Respondent. Website contains title pages "moveis" (translation: furniture) together with "relogios" (watches), "carros" (vehicles) and "joias" (jewellery), with no content behind them. The introductory screen states (Complainant's translation) "This is a site with design of famous and unknown designers. If you are a designer, get in touch with us to have your creations placed in our showroom. If you appreciate beautiful design, come in and feel at ease". The use of the word "showroom", combined with the name of the website and illustration of the "renowned Guggenheim museum, a hallmark New York City building" "seems to be a deceptive ploy to have internet users think they are in fact on the veritable New York Design Center website, located in New York City".
5.4 Respondent's bad faith registration and use of the domain name in relation to paragraph 4(a)(iii) of the Policy is shown again, according to the Complaint, by the fact that the website was not active until just after Respondent notified of this dispute. Complainant asserts that the website "as late of [sic] April 4, 2001 was still completely blank". Yet, less than one week later the website began showing signs of life. And the nature of the website is most troublesome. We had been assured that the nature of Respondent's activities was to be totally different from Complainant's. It was not until Complainant's request that the domain name be transferred to it that the website became active." Respondent's "mimicry" on his website of the "showroom" services for designers offered by Complainant, with Respondent's illustrations of furniture, and links to worldwide architectural and design establishments, confirms that Respondent is intentionally attempting to attract Internet users to his website in a "deceptive ploy to have internet users think they are in fact on the veritable New York Design Center website".
5.5 In support of its assertions, Complainant states in addition:
"If Respondent is desirous of connecting itself to New York through its name, it well may. It may also use the words "Design" and "Center" even in conjunction with one another. What it cannot do is use these names together, as the combination has been trademarked, and is internationally identified in the world of design furnishings as belong to our client. Of course, Respondent knows this. He constructed his website under a particular name and in such a way that the bad faith is glaring, as well as shameless".
6. Respondent's Contentions
6.1 In reference to the element in paragraph 4(a)(i) of the Policy, Respondent does not contest that the domain name is identical to the Complainant's registered service mark. He does however appear to contend that Complainant's trade mark was registered in error or should now be challenged, on grounds that the words are "generic expressions of common use", as evidenced by the following:
(a) the words "New York Design Center" appear in more than 260 web pages found by conducting a search on that string in <google.com>;
(b) "there is a museum with the name New York Design Center, at Thompson Ave., Long Island City, NY, <dside.yucom.be/pag70_03.htm>"; and
(c) other institutions have the same name, as at <hobokenfloors.com/Dcenters.html>, "that work in the field of floor design and interior decoration with no commercial relation to Complainant's New York Design Centre Inc".
Respondent asserts these uses of the mark are without proper authorisation from the Complainant.
6.2 In relation to Paragraph 4(a)(ii) of the Policy and responding to allegations of lack of legitimate interest in the disputed domain name, Respondent asserts that his legitimate interest "can easily be proved". It does not argue that it used or had made demonstrable preparations to use the domain name before notice of this dispute, nor does it argue that it has been commonly known by the domain name. However, it does appear to submit that it is now making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Respondent submits:
(a) the purpose of registering the domain name <newyorkdesigncenter.com> was the goal of "attracting designers - well known or just starting their careers - specialized in the many fields of the design activities. In the site, the designers would constitute a community of professionals for the exchange of ideas, experiences and the promotion of their works". Further, "with these goals in mind, 3R decided to build a site with a name that could show its purposes - being a design center - but also had a sufficiently strong appeal for the interested people and be, at the same time, compatible with the enterprising spirit. It is well known that the city of New York is one of the most important centers in modern design, together with Milan, Tokyo, Paris etc. This is the sole reason for choosing the name."
Respondent asserts "obvious relations between Respondent's business and the disputed domain name".
(b) Response states: "Respondent's website has the objective of showing the work of designers that were interested in the dissemination of their creations in the many areas of design, like; jewelry, clothes, cars, consumer products, not excluding, of course, furniture Complainant, by its turn, describe[sic] itself as a luxurious commercial center focused in selling furniture and related interior design products. As can be seen, there are no means to allege that the website misleads or confuse [sic] its customers". Respondent confirms in his further submissions (July 11, 2001), that his "website divulges designers works in several areas and it does not sell goods" [Respondent's emphasis].
6.3 In relation to paragraph 4(a)(iii) of the Policy, Respondent states:
"About the allegation that Respondent took six months to launch its website, doing this just after the exchange of mail with the Complainant, this can be easily explained.
Respondent needed time to organize the new activity to be developed, and worked with the necessary calm to develop the idea, since this is a site that requires research in many areas of the vast art/science of design. Complainant's unfair pretension just came to haste the launch of the website".
Again, although the Response is not structured clearly according to the criteria set out in the Policy with respect to evidence of bad faith, Respondent appears to submit it has not intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website. As set out in paragraph 6.2(b) above, Respondent asserts there can be no confusion between his website and Complainant's mark, because Respondent is not in the business of "selling" design products, rather, it merely displays various designers' goods on his website.
7. Discussion and Panel Findings
7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy.
7.2 Domain Names identical or confusingly similar to Complainant's Marks.
The domain name in dispute, <newyorkdesigncenter.com>, is identical to the mark "New York Design Center" owned by the Complainant. The Panel agrees with the Complainant that the run-on of words and the ".com" gTLD suffix serve no relevant distinguishing purpose.
The Respondent appears to contest the Complainant's rights in the mark, both in the United States, Brazil, and internationally. The trade mark registration is current and valid in the United States. The Complainant on any view has rights in the words "New York Design Center" used as a trademark or service mark. Respondent cites, in his supplementary submissions following his Response, the WIPO decision in First American Funds, Inc. v Ult.Search, Inc, Case No. D2000-1840. That case is not on all fours with this one. First, over 40 U.S. trademarks were registered or pending which consisted of or included the words "First American", many of which fell within the broad category of financial services. In contrast, a trade mark search through Register.com, which could easily have been conducted by Respondent (and which, as Complainant points out, should have been conducted under Register.com's rules prior to registering the domain name), shows that there is no other identical mark to "New York Design Center" in any class, either in the United States, Europe or Canada. Further, a strong dissenting opinion in the "First American" matter argued:
"The Panel's authority to act and the parameters within which it may act are carefully circumscribed by the Policy and by the Uniform Rules. Nowhere in the Policy or the Uniform Rules is the Panel asked to consider in its analysis the number of parties who have registered a trademark identical or similar to that registered by the Complainant or who use business names similar to that of the Complainant, nor in what fields of commerce or in what geographic areas such trademark registrations are effective or in which such businesses are engaged.
I believe that this omission not only was intended, but also is practical and effective. The Internet knows no geographic boundaries."
Further, the Complainant has been quite vigilant in protecting its trademark, as evidenced by its actions with respect to use by Epson America, Inc, and by Hoboken Floors, although Panel's investigation in this respect confirms Complainant's contention that use of the mark by Hoboken Floors was descriptive, and not use as a trade mark.
Respondent's citation of the <dside.yucom.be/pag70.03.htm> address leads to a directory of international design museums linked to a Belgian design website titled "D Side 4 Design". It appears that the website creator has simply obtained the incorrect address for the New York Design Center, listing it at Thompson Avenue, Long Island City, U.S.A. Complainant's online AOL Yellow Pages search exhibited to his Reply confirms this.
The Panel's search for "new york design center" using the Google search engine (the same search as the Response refers to in paragraph B.3.) returned 454 items. The Complainant's site is the first item. Other than the Respondent's site, all other sites in the first 20 items of the search refer to the Complainant, most containing links to the Complainant's <nydc.com> website. The Complainant asserts, and the Panel's investigations tend to confirm, that the "thousands" of references to the New York Design Center on the web referred to in the Response at paragraph B.3. refer without exception to furniture or design companies which have showrooms in the New York Design Center building.
If Respondent's contentions were to be contested in a trade mark litigation in the appropriate jurisdiction, it is the Panel's view that these website references to the "New York Design Center" are not uses as trade or service marks which might weaken Complainant's rights in its trade marks. They are simply indicating the location of businesses at the New York Design Center.
The fact that the Complainant's trade mark is not argued by the Complainant to be a famous mark which has acquired trade mark status worldwide, nor that the mark is registered in Brazil, is not relevant. The Policy simply requires (in 4(a)(i)) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant has convincingly established this.
It remains, therefore, for Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
7.3 The Respondent has no rights or legitimate interests in the domain names
Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent's rights or legitimate interests in the domain name.
For purposes of paragraph 4(c)(i), Respondent cannot demonstrate use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. His website had no relevant content prior to notice of this dispute.
In relation to paragraph 4(c)(ii), Respondent has not demonstrated that it has been commonly known by the domain name.
In relation to paragraph 4(c)(iii), Respondent's attempts to demonstrate a legitimate use of the domain name, without intent for commercial gain to misleadingly divert consumers to his business are not credible:
- e-mail correspondence from the Respondent, translated by the Complainant and exhibited to the Complaint, asserts that as at March 23, 2001, the Respondent's "enterprise" was for "publicity, marketing, graphic design". Later correspondence (March 30, 2001 and April 4, 2001), from the Respondent's legal counsel in Brazil, Tavares & Co Intellectual Property, suggests that the Respondent's activity was as a "design firm", "principally related to design of jewels";
- currently, the Respondent's website has little content but contains references to "furniture", "watches", "cars" and "jewels", with no content. The copy on the title page (see paragraph 5.3(b) above) implies that consumers have access to this "virtual" showroom to browse at leisure. His "links" page has 3 buttons: "Casa Shopping", "cursos de design" (a link to a directory of design courses and design establishments) and "philippe starck" (no content). The "Casa Shopping" page refers to a shopping centre located on Av. Ayrton Senna in Rio de Janeiro, with further pages showing centre layout, directory of retailers, product illustrations, contact details and so on;
- the addition to the website, after commencement of this dispute, of the "Casa Shopping" pages and content concerning a particular shopping centre which apparently houses a number of furniture retailers or design establishments, belies Respondent's contention that there is no similarity between his and the Complainant's businesses. The only content of substance on Respondent's website concerns a shopping centre which houses, among other things, retailers in the design industry. While the Respondent's connection to this shopping centre is not known, it is a reasonable assumption that it has some commercial link with the centre, for example, as his publicity consultant.
- the use by the Respondent of the meta tags "New York Design Center" and "new york design center" in the source code for his web site persuades the Panel that the Respondent plainly intends for commercial gain to misleadingly divert consumers to his website.
As with the decision in Sydney Opera House Trust v Trilynx Pty Limited Case No. D2000-1224, in which it was stated that "there is only one Sydney Opera House", there is only one "New York Design Center". It is in New York. The Respondent resides in Brazil. The Respondent has qualifications in the area of design. The New York Design Center is well-known in the design industry both in the United States and internationally, as evidenced in its listings in international directories of design centres, coverage in internationally-distributed design industry publications and its own publicity. The Respondent should therefore have been aware of the existence and reputation of the Complainant, and does not deny it. The Panel does not accept Respondent's argument that it used the words "New York" legitimately because it is one of several world centres of design excellence. The Respondent is apparently in the business of design, but has nothing to do with New York. It has given to the Complainant mixed messages as to precisely what commercial endeavours it intended to conduct using the disputed domain name. The Respondent has shown no credible evidence apart from his qualifications and the existence of the website itself of any legitimate commercial endeavours in the area of design.
The Panel therefore finds that, by using the domain name <newyorkdesigncenter.com>, Respondent intended for commercial gain to misleadingly divert consumers to his business and has shown no legitimate interests in the domain name. Accordingly, the Complainant has established paragraph 4(a)(ii) of the Policy.
7.4 The domain name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith.
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:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
Register.com's Service Agreement contains a rule that it is the responsibility of the applicant for registration of a domain name to determine whether its domain name registration infringes or violates someone else's rights. Register.com provides a link to a trade mark search site. A search for the exact mark "New York Design Center" would have confirmed quickly that the mark was a registered trademark in the United States owned by the Complainant.
The Panel in the Sydney Opera House decision Case No. D2000-1224 cited the decision SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport (FA94956) in which a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name.
The Respondent, if following Register.com's rules in its Service Agreement with Register.com, should have conducted a trade mark search. That search would have shown the Complainant's interest in the disputed mark. Further, Panel's investigations show that in a rudimentary search of the world wide web, Respondent would have encountered numerous listings and references to the Complainant.
Respondent's design background, together with his use of the identical words to the Complainant's "New York Design Center" service mark, the ease of discovering the Complainant's rights in the mark, Respondent's lack of credible connection with the city of New York other than that it being one of the world centers of design excellence, the structure and content of Respondent's website with the deceptive similarity of the "CasaShopping" website pages to the Complainant's services, and Respondent's failure to demonstrate credibly any real business in commercial design prior to this dispute, result in an irresistible implication of opportunistic bad faith. The Respondent's website shows that it is making or attempting to make forays into a similar industry to that of the Complainant. The Panel finds that the only credible purpose of the Respondent in registering and using the domain name <newyorkdesigncenter.com> must have been intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to some sort of affiliation or endorsement of the Respondent's website or of products or services on his website. The use of the Complainant's name and mark in the Respondent's site's meta tags are corroborative of the Panel's conclusion that the Respondent's registration and use of the domain name in dispute was in bad faith.
Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been established by the Complainant. The Panel therefore orders, in accordance with paragraph 4(i) of the Policy, that the domain name <newyorkdesigncenter.com> be transferred by Register.com to the Complainant, New York Design Center, Inc.
Philip N. Argy
Dated: August 15, 2001