WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indivision Picasso v. Manuel Muñiz Fernandez [Hereisall]
Case No. D2002-0496
1. The Parties
The Complainant in this proceeding is Indivision Picasso (also called Succession Picasso, or the Picasso Estate), composed of Paloma Ruiz-Picasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso, Bernard Ruiz-Picasso, Claude Ruiz-Picasso, represented by its Court empowered administrator Mr. Claude Ruiz-Picasso, Paris, France.
The Respondent in this administrative proceeding is Mr. Manuel Muñiz Fernandez [mistakenly referred to as Muñiz Hereisall] , a Spanish citizen, living at Malaga, Spain.
2. The Domain Names at Issue
The domain names at issue are <fundacionpicasso.com>, <museopicassomalaga.com>,
The registrar with which the domain names are registered is Iholdings.com.
3. The Proceeding
The Complaint was filed on May 28, 2002 (e-mail), and May 30, 2002 (hard copy). The Registrar Verification Response was received on June 4, 2002. The Notification of Complaint was sent to the parties on June 5, 2002. The Response was filed on June 21, 2002 (e-mail), June 25, 2002 (hard copy). The Panel was appointed and the file was transmitted to it on July 23, 2002.
4. The Parties’ Contentions
A. The Complainant’s Contentions
The Complainant is a French legal entity which gathers all the heirs of the famous deceased painter Pablo Picasso, administered by Mr. Claude Ruis-Picasso.
Mr. Claude Ruiz-Picasso has been empowered by the French Courts to administrate the "Indivision Picasso", also called "Succession Picasso" or "the Picasso Estate". Thus, on behalf and in the name of the Indivision, Mr. Claude Ruiz-Picasso has initiated many trademark registration procedures to protect the name and the signature of Picasso, in order that the Picasso name and signature not be copied or tarnished by persons who might fraudulently benefit from the fame attached to this name.
The Indivision Picasso also initiated many law suits or trademark procedures before Regional or National Industrial Property Offices in order to defend their rights with respect to the name "Picasso".
The corresponding official website of Indivision Picasso is at "http://www.picasso.fr", which lists most of the museums currently involved in showing Picasso works. Museums of the entire world are involved in such exhibitions, as will be the "Museo Picasso de Malaga".
A Spanish citizen, the Respondent to this Complaint has already registered the domain names <museopicassomalaga.com> and <museopicassodemalaga.com>, along with the domain name <fundacionpicasso.com>.
These domain names have been offered for sale after their registration by the Respondent.
The Respondent must have known that the Picasso museum of Malaga is managed by two foundations called "Fundacion Museo Picasso de Malaga" and "Fundacion Paul, Christine y Bernard Ruiz-Picasso", since he also registered the domain <fundacionpicasso.com>.
The domain names at issue obviously imitate the "Picasso" trademark since the words "museo" , "malaga" (or "de malaga") or "fundacion" are not distinctive to museums located in the city of Malaga. The domain names at issue therefore include the element "Picasso" which is the distinctive part of these wordings. There is a likelihood of confusion between "Picasso", on one hand, and "fundacionpicasso", "museopicassomalaga" and "museopicassodemalaga" on the other, as the public would immediately think that those museums and foundation are related to the Complainant.
The Complainant also has rights in the marks "fundacionpicasso" , "museopicassomalaga" and "museopicassodemalaga" themselves.
Since the Picasso museum of Malaga is managed by the aforesaid foundations that are related to the Complainant itself, it follows that the Complainant also has rights in the marks "museopicassomalaga", "museopicassodemalaga" or "fundacionpicasso".
The domain names have been reserved in order to prevent the Complainant, or the managing body of the Picasso museum of Malaga from reflecting the mark in a corresponding domain name.
Lastly, the Complainant contands that he is not making any legitimate use of the domain names at issue and that the Respondent intends to divert consumers and to tarnish the Picasso trademark.
B. The Respondent’s Contentions
The Respondent argues that :
Manuel Muñiz Fernandez is the only owner of the domain names in dispute. There was an error in the registrar Iholdings.com in respect of his name, indicated as Hereisall.
Fundacion Museo Picasso de Malaga is part of the Museo Picasso de Malaga and in this proceeding the foundation does not appear, as it is not represented by the Indivision Picasso, Paul, Christine and Bernard Ruiz-Picasso; the empowered administrator of Indivision Picasso is Mr. Claude Ruiz-Picasso who precisely does not belong to Fundacion Museo Picasso de Malaga. The Respondent does not contest the entitlement of Indivision Picasso to the only and exclusive use of the name "Pablo Picasso" and his signature, works of art created by same or the trademarks created around such name, but the Complainant cannot extend such exclusiveness to any combination of words which include the word "Picasso", as this is not a creation of the Picasso family itself but a surname with a relatively common use in Malaga.
The Respondent alleges that Indivision Picasso has no standing to file the Complaint as it is not related to Fundacion Museo Picasso de Malaga and its trademarks. Moreover, there is no similarity between the trademark "Picasso" and the domain names in dispute. The fact that said domain names contain the word Picasso, the Respondent states, in no way means that there is any possibility of confusion as they are substantially pointing out to the existence of a museum in Malaga which has as a principal aim to exhibit the work of Pablo Picasso, but there should be no confusion between the container and the content.
It must be taken into consideration that there are more than 500 domain names which include the word Picasso.
The Respondent proceeded to register the domain names (June 2000) as a person resident in Malaga, which is the place of birth of Pablo Ruiz Picasso, nearly three years after the constitution of the Fundacion Museo Picasso de Malaga, which was created in October 21, 1997.
The Respondent, as a Malaga citizen, worried about the idleness of the persons who were ruling Fundacion Museo Picasso de Malaga, and as he was desirous to prevent anyone else to take such domain names, he proceeded to register them and created a web with certain content related with the art work of Picasso, content which he was obliged to withdraw and was changed for the explanation which now appears on the website.
The Respondent did not register the domain names in bad faith as he was ready to donate them to the Fundacion Museo Picasso de Malaga as long as he, as a web designer, could intervene in the web designing of the museum. So, the Respondent claims that he did not acquire the domain names primarily for the purpose of selling or renting them.
5. Discussion and Findings
A. Identity or Confusing Similarity between the Trade Mark and the Domain Name
There is no doubt that the trademarks registered by the Complainant and the domain names are not identical. The Panel finds, however, that there is a confusing similarity between the marks of the Complainant and the domain names, that either reproduce the name of the Foundation Picasso or the name of the Picasso Museum.
In both instances, the name Picasso is the distinguishing feature of those names and domain names, since the generic words "foundation" and "museum" are only descriptive. See The J. Paul Getty Trust v. Domain 4 Sale & Company FA0007000095262 (Nat. Arb. Forum July 9, 2000) where it was found that the addition of a descriptive mark like «museum» does not circumvent confusing similarity with the registered marks.
As for the addition of the geographic qualifier "malaga" or "de malaga", the addition of a geographic qualifier to a complainant’s mark does not create a distinct domain name. See The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, FA0205000114354, (Nat. Arb. Forum June 28, 2002) finding that the domain name <chicagofieldmuseum.com> is confusingly similar to complainant’s FIELD MUSEUM mark.
Picasso itself cannot be said to be generic or descriptive in any regard.
The Respondent objects that there are many Picasso domain names: 511 matches for "Picasso" resulted from a domain search done on June 14, 2002. However, some of those domain names have no real match, as e.g. <canadianolympicassociation.com>. There are 9 matches for Museopicasso, with or without ‘Malaga’ or ‘demalaga’, for various second levels, three of which are the domain names in dispute in the present proceedings.
The trademarks of the Complainant are registered mainly for class 12 of the International Classification (vehicles). The fact that Complainant’s trademarks are registered mainly in class 12 has no incidence in the UDRP procedure. Indeed the Rules require solely rights on a trademark. Thus, the administrative panel does not need to examine the contents of a web site to see if the contents are identical or similar to the goods and services covered by the trademark. Rights on a trademark are sufficient.
Moreover, the Panel finds that Picasso is a mark and name which is known worldwide and, as such, will benefit from legislative measures against the dilution of famous trade marks in areas other than the one for which it is registered. Therefore, this mark and the rights to the name "Picasso" deserve protection, be it as registered mark of world fame or as common law trademark, or as name under civil law.
Lastly, the majority of the Panel is of the opinion that the entitlement to the Picasso trademark rests with the Complainant.
In this regard, the majority of the Panel cannot share the objections of the Dissenting Opinion, which it has however carefully considered before rendering this Decision.
B. Rights or Legitimate Interests
The Respondent claims that he has a right to the domain names "as a Malaga citizen, worried about the idleness of the person who were ruling the Foundation of the Picasso Museum". To some extent, his plea is that he has acted as a negotiorum gestor, filling with his domain name registration the gap that also led to a question in the Andalusian Parliament on December 5, 2001 (Exh. 5 of the Response). However, this plea is self-defeating : if the principal for whom the negotiorum gestor was acting requests the transfer of the goods that have been acquired for him by the gestor, the negotiorum gestor has under civil law as under equity principles on constructive trust no property interest to oppose to that request; clearly he cannot claim to act for the principal and claim at the same time to be the owner of the goods, rights or domain names. Thus, the Panel finds that the Respondent has neither right nor legitimate interest on the domain names. Further, the offer of the website for sale shows that no negotiorum gestio was really intended at the onset.
C. Registration and Use in bad Faith
It is certain that the Respondent knew or should have known of the better rights of the Complainants and of the Foundation for a Picasso Museum. The fact that he first offered for sale the website is indicative of bad faith and is contradictory with any idea of negotiorum gestio.
Further, bad faith is eloquently revealed by the text that the Respondent is now publishing on his website, with defamatory and untrue statements, e.g. "that politicians are more interested in travelling to Switzerland (the most expensive country in Europe), in good hotels and the best restaurants (not to mention the executive-class plane fare, salaries, lawyers’ and attorneys’ fees) rather than giving this humble individual [the Respondent] a call and staying at a tea bar of San Agustin Street, the seat of the future Museum".
Finally, the main purpose of the Respondent appears to be related with the assistance he wished to offer for building the website. In his declaration to a notary public of July 27, 2001, the Respondent first corrected a prior mistake made with the registrar, his second surname being "Fernandez" and not "Hereisall", then added his cellular phone number in order for the Picasso Fundation to have a dialogue with him. The Respondent also filed a certificate establishing that he followed courses on Internet and Building of web pages. Now the Respondent himself asserts that he was willing to donate the domain names to the Fundacion Museo Picasso de Malaga "as long as he, as a web designer, could intervene in the web designing of the museum". Indeed, bad faith does not necessarily require a direct pecuniary gain for the Respondent. Forcing the legitimate holder who wants to recuperate the litigious domain names to accept the services proposed by the Respondent and this in exchange eventually for money can also reveal bad faith. This is tantamount to selling or renting the site, thus it is indicative of bad faith registration and use.
In the light of the foregoing, the Panel finds that the domain names <fundacionpicasso.com>, <museopicassomalaga.com>, <museopicassodemalaga.com> are confusingly similar to the trademark and name rights of the Complainant, that the Respondent has no right or legitimate use to them, and that he registered and used them in bad faith. Therefore, the Panel orders that the domain names <fundacionpicasso.com>, <museopicassomalaga.com>, <museopicassodemalaga.com> be transferred to the Complainant.
Dated: August 6, 2002
Respectfully, and after rich discussion with my fellow panelists, I must dissent with the majority, based on the following arguments:
In order to comply with Policy, Paragraph 4(a)(i), a Complainant has to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which it has rights. Complainant has certainly proved that it has rights in the mark PICASSO by presenting the Panel with numerous certificates of registration not only for (mainly) class 12, but also in class 38 (Chilean registration), and even in all 42 classes as per at least one international certificate. All of them pre-date the registration of the domain names at issue.
However, Museo Picasso Malaga or Museo Picasso de Malaga is an existing entity and/or a building in Malaga, Spain, that can be referred to for instance with the expressions museopicassodemalaga and museopicassomalaga.
I do not believe that any use whatsoever, or any inclusion of a trademarked word in a domain name made of a complex expression, such as the domain names at issue, in and by themselves equal to confusing similarity of the domain names to the single-word mark. In fact none of the three domain names – when considered in their entirety and overall impression - are confusingly similar to the single-word mark Picasso, even if this is a famous mark.
The remedy sought in the Complaint is transfer of all three domain names from Respondent to Complainant. There being a risk that the domain names might in fact refer to entities legally different from Indivision Picasso (a Museum and a Foundation), and which might have rights in their names, we should be specially careful that such entities - not present in this proceeding and whose relationship with Complainant has not been clearly explained by it- are not being prejudiced by a Panel´s finding.
In fact, Respondent has denied that the Museum in Malaga or the Picasso Foundation be legally related to Complainant. For its part, Complainant, apart from its somewhat vague allegation that the managing body of the Picasso museum of Malaga is "deriving" from the Complainant, completely fails to explain the legal relationship between the Indivision and the entities in Malaga. (See Complaint, page 10, fifth line from above). In order to prevail, Complainant should have presented the Panel with such an important evidence in this respect.
Obviously, some similarity does exist between the domain names and the mark because of the presence of the PICASSO word in the museopicassomalaga, museopicassodemalaga, and fundacionpicasso domain names. However, I do not believe that Complainant has succeeded in proving that because it has rights in the mark PICASSO, such complex or composite expressions are confusingly similar to the mark. The domain names undoubtedly refer to an entity and/or a building and/or facilities, all of them being distinct from the one-word PICASSO mark.
Complainant Indivision Picasso has not shown any certificates of registration or evidence of use of its mark PICASSO in conjunction with such kind of institutions or facilities. Nor are there evidences in the record showing that Indivision Picasso is the entity (at least in part) governing or controlling such museum, even if some of the Indivision’s members might belong to Fundación Picasso (or more precisely to Fundación Paul, Christine y Bernard Ruiz-Picasso), being this foundation one of the two governing bodies of Museo Picasso Malaga. (See brochure of the Museum at Exhibit No. 8 of the Complaint, at page 14). Nor there are any evidences that Museo Picasso in Malaga has assigned any rights to Indivision Picasso.
Nor has Complainant proved that it is a foundation. To the contrary, a visit to the "http://www.picasso.fr" Web site - at which Complainant itself has directed the attention of this Panel - showed a posting in French stating:
"(Maya Ruiz Picasso, Claude Ruiz Picasso, Paloma Ruiz Picasso, Bernard Ruiz Picasso and Marina Ruiz Picasso) are organized as an indivision, that is under the form of a common property essentially made of the intellectual property rights attached to the work and name of Picasso. They form the Picasso Estate or the ´Picasso Indivision´. The Picasso Estate is not a foundation". (This panelist’s emphasis).
Nor are there evidences of any assignment from Fundación Picasso (either Fundación Museo Picasso de Málaga or Fundación Paul, Christine y Bernard Ruiz-Picasso) to Indivision Picasso (as seen, not a foundation itself).
In sum, Complainant has not succeeded in proving the requirement of Policy Paragraph 4(a)(i), which would have made unnecessary for the Panel to consider the remaining two prongs of the Policy. This be said even if I have not in the least been convinced by Respondent that it has rights or legitimate interests in respect of any of the domain names at issue. To the contrary, and in full coincidence with the reasons expressed by my colleagues of the majority, Complainant has proved both the second prong of the Policy, Paragraph 4(a)(ii), and that Respondent registered and used the domain name in bad faith, Policy, Paragraph 4(a)(iii).
For the reasons above, the complaint should have been denied by the Panel.
Roberto A. Bianchi
Dated: August 6, 2002