WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Blackshear v. Christ-Centered Mall, Inc.
Case No. D2002-0736
1. The Parties
The Complainant in this proceeding is Thomas Blackshear, an individual whose address is Colorado Springs, Colorado 80906, United States of America. The Complainant is represented in this proceeding by Joshua Kaufman, Esq., Venable, Baetjer and Howard & Civiletti LLP, N.W., Washington, D.C. 20005, United States of America.
The Respondent in this proceeding is Christ-Centered Mall, Inc., a company whose address is Fort Myers, Florida 33906, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <thomasblackshear.com>.
The registrar for the disputed domain name is Intercosmos Media Group, Inc. d/b/a directNIC.com, 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
The resolution of this dispute will be in accordance with the provisions of the Uniform Domain Name Dispute Resolution Policy (the "Policy") and Rules (the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Center," the "Supplemental Rules").
The Complaint was filed on August 2, 2002, by e-mail, and on August 5, 2002, in hard copy. On August 5, 2002, the Center sent a Request for Registrar Verification to the Registrar, pursuant to which the Center received a verification from the Registrar on that same date. The Center noticed that the Complainant had made a mistake in identifying the disputed domain name registrant and the registrar.
On August 7, 2002, the Center notified Complainant by e-mail of the deficiencies (wrong name of registrant and registrar) in the Complaint. In response, the Amended Complaint was filed on August 14, 2002, by e-mail, and on August 16, 2002, in hard copy.
On August 19, 2002, the Center forwarded a copy of the Complaint and the Amended Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On September 8, 2002, the Center received a response from Respondent by e-mail, and on September 11, 2002, in hard copy.
The Administrative Panel submitted a Declaration of Impartiality and Independence on September 11, 2002, and the Center proceeded to appoint the Panel on September 12, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is September 26, 2002.
4. Factual Background
Complainant in a well-known American painter whose artwork in originals and prints has been sold throughout the United States for decades.
Respondent, an art gallery specializing in religious artwork, is listed as the registrant of the disputed domain name. The record of registration was created on February 26, 2001. Respondent has used the disputed domain name to direct Internet users to a web site at another of Respondent's domain names, <christcenteredmall.com>, through which Respondent offers for sale artwork created by various artists, including Complainant.
Complainant sent two letters to Respondent on January 18, 2002, and January 29, 2002, demanding that it cease violating Complainant's copyrights and transfer the disputed domain name to Complainant. In each case, Respondent failed to respond.
5. The Parties’ Contentions
- Complainant is one of America's foremost artists, and consumers have learned to identify Complainant's name with his artwork, thus creating a secondary meaning in his name. This secondary meaning is enhanced by the extremely successful marketing of his artwork in prints and collectibles throughout the United States at many galleries and stores.
- Complainant has achieved common law trademark rights in his name, Thomas Blackshear.
- The disputed domain name, <thomasblackshear.com>, is identical to Complainant's trademark.
- Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant's sole authorized licensee of his name is Willits Design International, Inc., and Complainant has in no way licensed or authorized Respondent to use the name. Respondent's use of Complainant's mark misleads the public to believe that there is an association or affiliation between them. Respondent's web site contains many violations of Complainant's copyright.
- Respondent registered and is using the <thomasblackshear.com> domain name in bad faith. Respondent knew in advance of its registering of the disputed domain name the value of Complainant’s mark and name, and that was the only reason for Respondent's registration. That registration denies Complainant the opportunity to use his trademark and name on his own web site.
- The domain name in question, <thomasblackshear.com>, is used only as a redirect to the Complainant’s principal commercial web site, <christcenteredmall.com>, where, without authority or right, Complainant’s works are offered for sale in violation of his copyrights, trademark rights, publicity rights and Lanham Act rights.
- Complainant has sent Respondent two letters demanding that Respondent cease violating the Complainant’s copyrights and trademark rights and turn over the domain name (Exhibits I1 & I2 of the Amended Complaint) and, in bad faith, both have been ignored. A letter pursuant to 17 U.S. CA 512 has been served upon the ISP for the Complainant demanding the removal of the infringing artworks, photograph and text which appear on the web site (Exhibit J1 of the Amended Complainant). As such, Respondent has knowledge of the infringing nature of its conduct.
- The day after the Complaint was filed, Respondent changed the domain name registrar and the domain name registrant information, more evidence of bad faith.
- Respondent is a legitimate art gallery which sells Christian–related art prints and sculptures, created by various artists including Complainant, through the Internet.
- Respondent's web site corresponding to the disputed domain name displays images of Complainant's art prints and sculptures published only by The Greenwich Workshop, with whom Respondent has obtained a dealership arrangement.
- Complainant does not own trademark rights in his name.
- Respondent has rights and legitimate interests in the disputed domain name. Before any notice of this dispute, Respondent was using the disputed domain name in connection with a bona fide offering of goods and services (i.e., art prints and other related variety store merchandise). Respondent does not need permission from Complainant to sell artwork which Respondent legitimately purchases from a publishing house authorized by Complainant, namely The Greenwich Workshop
- Respondent did not intend to divert Complainant's customers. The disputed domain name points to web sites at Respondent's other domain names <777art.com> and <christcenteredmall.com> where it is clearly stated that Respondent is a reseller of Complainant's artwork (Complainant's copyright is affixed on all of his works) along with others.
- Respondent did not register the disputed domain name in bad faith. Respondent has not offered to sell the name to anyone, including Complainant. Respondent has not registered the name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Respondent has not registered the name primarily for the purpose of disrupting the business of a competitor. By using the name, Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's alleged mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product on that web site.
- Respondent's switching of domain name registrars and formal ownership and Respondent's refusal to respond to Complainant's letters are not evidence of bad faith registration and use of the disputed domain name, but were done for convenience and because Respondent believed Complainant's claims to lack merit.
6. Discussion and Findings
For Complainant to prevail and to gain transfer of the disputed domain name <thomasblackshear.com>, Complainant must prove, per Paragraph 4(a)(i), (ii) and (iii) of the Policy, the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
Complainant concedes that he does not own a valid registration of a THOMAS BLACKSHEAR trademark in the United States or anywhere else in the world. Instead, Complainant claims that he holds trademark rights in that name at common law.
THOMAS BLACKSHEAR is Complainant's name, and many prior panels ruling under the Policy have held that certain famous individuals have established common law trademark rights in their names. See for example Mick Jagger v. Denny Hammerton, NAF Case No. FA95261 (September 11, 2000), Daniel C. Marino, Jr. v. Video Images Productions, et. al., WIPO Case No. D2000-0598 (August 2, 2000) and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000). Those rights are dependent on the individual having created a secondary meaning in his or her name with respect to a given field through long and noteworthy performance.
In this case the Complainant, asserting that he has been a well-known and respected artist for decades, claims a secondary meaning in his name in connection with paintings and drawings. In its Response, Respondent denies that Complainant has established such rights. However, Complainant has produced uncontested evidence that he has achieved a certain notoriety in the art world and beyond with his artwork appearing with appropriate credits in a variety of media, including art galleries, famous magazines and United States postage stamps (see the Complaint’s "trademark" section and Exhibits C1, C2 and D).
Furthermore, Respondent’s many exhibits attesting to the broad market for Complainant’s artwork reinforce the Panel’s view that Complainant has long since established strong common law trademark rights in his name (see Response Annex 6).
The disputed domain name <thomasblackshear.com> differs from Complainant's trademark, THOMAS BLACKSHEAR, only in regard to the addition of the gTLD ".com" and the absence of a space between the given name and surname. Prior Policy panels have held uniformly that the inclusion of a gTLD such as ".com" is immaterial in determination of identity between trade or service marks and domain names. See for example Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 (December 18, 2000) and MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204 (December 8, 2000). Furthermore, panels have said almost unanimously that the elimination of spaces between words is not pertinent in such a determination. See Laerdal Medical Corporation v. Locks Computer Supply, WIPO Case No. D2002-0063 (April 18, 2002): "The use of one word or two words in a trademark or a domain name is also irrelevant as long as the two words forming the one word are the same.")
Accordingly, the Panel finds that Complainant has proven that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant contends that Respondent never received permission, consent or a license from Complainant to use the Complainant's trademark, THOMAS BLACKSHEAR. While Respondent agrees that it had no direct prior dealings with Complainant and thus no license to use that trademark, Respondent does claim to have a license, through an agreement with a third party, to sell Complainant's artwork. As such, Respondent asserts that, as determinative evidence of its right and legitimate interest in the disputed domain name per Paragraph 4(c)(i) of the Policy, before any notice of this dispute Respondent was using the disputed domain name in connection with a bona fide offering of goods (namely, the authorized resale of works by various artists).
The Panel is struck by the similarity between this case and Frederick M. Nicholas, Adminstrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673 (September 27, 2000). In the latter case, the administrator for the estate of a famous artist sought a transfer of a domain name identical to that artist's name from an art gallery, which used the domain name in connection with a web site promoting the authorized resale of that artist's works. In that three-person panel decision, two panel members held for the respondent as to its rights and legitimate interests in the disputed domain name based on respondent's "fair use" of the name pursuant to Paragraph 4(c)(iii). The decision noted that "…this conclusion [should] not be construed to mean that every use of the artist's name to sell his or her works would be a fair use, so that this decision should be limited to the facts of this particular case where the respondent gallery makes clear on the website that it is not the artist's site and that it is a commercial art gallery selling the works of this particular artist."
Respondent in this case has not quite satisfied those conditions because, although its web site makes it clear that it is not Complainant's site, Respondent does not restrict its sales to "works of this particular artist." Instead, Respondent has asserted repeatedly that it does indeed sell the works of other artists at the web site to which the disputed domain name is directed. In discussing bad faith, the Nicholas panel supra also added in its decision that, "[t]here is no allegation or suggestion that anything other than Mr. Francis' art is available at the site." Respondent has not satisfied this condition which the Panel finds is necessary. Thus, even if the Panel accepts that Respondent's proposition that it is authorized to resell Complainant's works, Respondent is effectively using Complainant's trademark to sell not only those works (theoretically to Complainant's benefit) but also competing products (apparently not to Complainant's benefit and possibly to his detriment). As such, Respondent's actions constitute neither a "fair use" of the disputed domain name nor a "bona fide offering" of goods under that name. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002) ("…using the contested domain name…in the exact same field of endeavor as the Complainant…can not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.").
Respondent does not contend that it is commonly known by the disputed domain name (Paragraph 4(c)(ii) of the Policy) nor present any other argument that it has rights or legitimate interests in that name. While Complainant bears the burden of proof under Paragraph 4(a)(ii) of the Policy, the Panel recognizes the difficulty in proving a negative and, taking into account Complainant's prima facie showing that Respondent has no such rights or interests coupled with Respondent's failure to present sufficient evidence per Paragraph 4(c), the Panel concludes that Complainant has carried that burden.
The Panel thus finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Although it was not required to do so because the complainant failed to satisfy Paragraph 4(a)(ii) of the Policy, the Nicholas, supra panel majority also considered whether there was sufficient evidence to conclude that the respondent in that case registered and used the contested domain name in bad faith. It rejected the argument that elements of Paragraph 4(b)(iv) of the Policy (provided as a specific circumstance giving rise to sustain a finding of bad faith) were satisfied partly because, again, there was no showing that works by other than the instant artist were offered for sale. The panelist issuing the dissenting opinion in that case writes that he would have found that those elements had been met, stating "…because the Domain Name is identical to the SAM FRANCIS marks, Respondent has intentionally attracted consumers by creating the impression that the website "www.samfrancis.com" is sponsored or authorized by the artist."
In evaluating the facts in this case, where Respondent does offer the works of other artists at its site, the Panel concludes that Respondent, fully aware of the notoriety of Complainant's name, has intentionally attracted consumers to Respondent's web site for the purchase of those works (as distinct from Complainant's works, which Respondent also hopes to sell) by creating the false impression that they are sponsored or endorsed by Complainant.
Thus, the Panel finds that the elements of Paragraph 4(b)(iv) of the Policy apply in this case and that Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds the disputed domain name, <thomasblackshear.com>, is confusingly similar to Complainant’s common law THOMAS BLACKSHEAR trademark. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered and is using the disputed domain name in bad faith because Respondent's intent in registration and use of that name was to profit commercially from the likelihood of a false impression of sponsorship or endorsement of Respondent's goods by Complainant.
In accordance with Paragraph 4(i) of the Policy and Section 15 of the Rules, the Panel orders that the disputed domain name, <thomasblackshear.com>, be transferred from Respondent, Christ-Centered Mall, Inc., to Complainant, Thomas Blackshear.
Dennis A. Foster
Dated: September 26, 2002