WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Picasso Estate v. Yours
Case No. DBIZ2002-00032
1. The Parties
Complainant is the Picasso Estate, administrated by Claude Ruiz-Picasso and having as right holders Claude Ruiz-Picasso, Paloma Ruiz-Picasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso and Bernard Ruiz-Picasso, with offices at Picasso Administration, 7 Place Vendôme, 75001 Paris, France, represented by Henri Michel Reynaud, European Trademark Attorney, Bloch & Associés, with offices at 2, Square de líAvenue du Bois, 75116 Paris, France.
Respondent is Yours, having as address Brahmslaan 47, Eindhoven, AK 5654nw, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <picasso.biz> (the Domain Name), registered on March 27, 2002, with 007 Names, Inc. of Bridgewater, New Jersey, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Complainantís complaint on April 25, 2002 (electronic version), and April 29, 2002 (hard copy). The Center verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the STOP), the Rules for Start-up Trademark Opposition Policy (the STOP Rules), and the Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the WIPO Supplemental STOP Rules). The formal date of the commencement of this administrative proceeding is May 23, 2002.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 23, 2002, to Respondent and to the Registrar, Notification of Complaint and Commencement of the Administrative Proceeding, via fax, courier and e-mail, using the following contact details:
Tel : +31.402513247
Fax : +31.402573540
Email : email@example.com
The Notification was also sent to the same adddress, but in the Netherlands, because the country of the Respondent is wrongly listed, presumably by the Respondent, as USA in the contact details of the Registrar.
5654 AK Eindhoven
The Center advised that the response was due by June 12, 2002. However, Respondent did not submit any response. Consequently, the Center issued a Notification of Respondent Default on June 26, 2002.
On July 16, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glasí Statement of Acceptance and Declaration of Impartiality and Independence on July 17, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on July 18, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules and WIPO Supplemental STOP Rules.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
According to the information accessible on Complainant's web site, located at "http://www.picasso.fr/"Complainant is the legal entity who is in charge of the management of the intellectual property and personality rights underlying the late Pablo Picasso's life and work, on behalf of the artists' present heirs.
Complainant is the owner of numerous trademark registrations in various countries for the trademark "PICASSO". Copies of certain trademark registrations are attached to the complaint. These are:
- the Community trademark nį 614867, registered on April 26, 1999, for the word mark "PICASSO", to designate goods of class 12;
- the Community trademark nį 765586, registered on June 18, 1999, for the word mark "PICASSO", to designate goods and services of classes 9, 16 and 42; and
- the Community trademark nį 879015, registered on September 9, 1999, for the word mark "PICASSO", to designate goods of classes 33, 34 and 36.
It appears from the file that Complainant did not contact Respondent prior to filing its complaint.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainantís trademarks.
The Domain Name does not resolve to any web page.
5. Partiesí Contentions
According to Complainant, the Domain Name is identical to the Complainantís "PICASSO" trademarks. Furthermore, Complainant claims that is solely entitled to register or use any trademarks, copyrights or domain names including the name "PICASSO" and any of the artworks made by Pablo Picasso. Complainant also alleges that under these circumstances, Respondent obviously attempted to attract for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on the web site or location.
Consequently, Complainant requires the transfer of the Domain Name registration.
Respondent did not submit any response.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP directs that Complainant must prove each of the following:
(1) that the Domain Name registered by Respondent is identical to the trademark or service mark in which the Complainant has rights; and,
(2) that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered or is being used in bad faith.
The Domain Name is <picasso.biz>.
"PICASSO" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant, which is moreover not contested by Respondent.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.
However, in its complaint, Complainant has decided not to address this issue as a specific point, but rather to claim that it is the only one entitled to own, manage or authorize the registration or use of any rights linked to Pablo Picasso's name, work, life, image and likeness. Nevertheless, it is the duty of this Panel to determine, given the elements submitted and the circumstances, whether Respondent has a right or legitimate interest in respect of the Domain Name.
By not submitting a Response, Respondent has failed to invoke any circumstance, which could demonstrate, pursuant to Paragraph 4(c) of the STOP, any rights or legitimate interests in the Domain Name.
Therefore, and in light of the arguments and the evidence brought by Complainant, the Administrative Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Domain Name.
c. Registration or Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
1. "PICASSO" is a trademark of Complainant, and the name of a worldwide famous artist. Indeed, "PICASSO" is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent could have been unaware of the rights vested therein when registering the Domain Name.
The choice of a domain name incorporating the trademark "PICASSO" illustrates Respondentís eagerness to identify with and be identified with this renowned artist. It is therefore obvious that when registering the Domain Name, Respondent knowingly chose a name that is identical to the trademark of Complainant, thereby intentionally creating a situation that is at odds with the legal rights and obligations of the parties.
In view of these elements, the Panel finds that, by registering the Domain Name, Respondent has intentionally attempted to attract Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location.
2. When registering the domain name, Respondent used false information. Indeed, the name used by Respondent is merely "yours". In addition, Respondent used an address that refers to a location in The Netherlands, stating at the same time that its country is the Unites States.
3. Respondent did not file any response, failing thereby to invoke any circumstance that could demonstrate its good faith in the registration or use of the Domain Name.
In conclusion and in view of the above, it is the Panelís opinion that Respondent registered the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name <picasso.biz> registered by Respondent is identical to the trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP, the Administrative Panel requires that the registration of the Domain Name <picasso.biz> be transferred to the Picasso Estate.
Dated: July 22, 2002