WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geert Hofstede v. Sigma Two
Case No. D2003-0646
1. The Parties
The Complainant is Geert Hofstede, Emeritus Professor, Maastricht University, AN Velp, Netherlands ("the Complainant").
The Respondent is Sigma Two, Apple Valley, California, United States of America ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <geert-hofstede.com> ("the Domain Name") is registered with Stargate.com ("the Registrar").
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on August 13, 2003, and in hard copy form on August 18, 2003. On August 18, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2003. The Response was filed with the Center on September 9, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 23, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant claims to be (and the Respondent affirms that he is) a distinguished, international, academic scholar.
The Complainant is the registrant of the domain names <geerthofstede.com> and <geerthofstede.nl>.
The Respondent registered the Domain Name on March 21, 2003, having attended a Masters Degree course at a university in the United States where he studied the Complainantís work.
The Domain Name is connected to a site operated by the Respondent which is entitled "The International Business Center Ė Supporting Global Business" and which deals extensively with aspects of the Complainantís work.
5. Partiesí Contentions
The Complainant has availed himself of the Online Complaint Filing Form. The form breaks the substance of the Complaint down into three sections dealing with the three matters that a complainant is required to prove under paragraph 4(a) of the Policy. The Complainant has completed those three sections as follows:
Paragraph 4(a)(i) of the Policy
"Geert Hofstede (trademark registration applied for in Benelux). The existing domain names are <geerthofstede.com> and <geerthofstede.nl>. Professor Geert Hofstede is a distinguished international scholar and author of books used in management education."
Paragraph 4(a)(ii) of the Policy
"The Respondent is unknown to Professor Geert Hofstede and has no license agreement with Professor Geert Hofstede."
Paragraph 4(a)(iii) of the Policy
"The Respondent uses the almost-similar domain name to attract visitors to his "International Business Center" pages, suggesting a non-existing link between his activities and a celebrity in the field."
The Respondent contends that at the time of acquisition of the Domain Name on March 21, 2003, he was unaware of the Complainantís trademark application and he was also unaware that the Respondent had ever regarded his name as a trademark, given that, to the best of the Respondentís knowledge, the Complainant had never previously used either of the symbols TM or ® in association with his name.
Nonetheless the Respondent does acknowledge that the Complainant is a distinguished international academic scholar and author who has conducted significant research on world culture.
The Respondent acknowledges that he does not have the benefit of any licence from the Complainant to use the Complainantís name but he contends that a legitimate interest in the Domain Name does exist on the basis that the Respondent is using the Domain Name for legitimate, non-commercial, fair use purposes, that being the intended use when he purchased the Domain Name in March 2003.
The Respondent contends that the purpose has been exclusively to educate international college students and worldwide business people for the academic research work of the Complainant.
When the Respondent acquired the Domain Name he knew that the Complainant already owned the domain name <geerthofstede.com> and believed that the Domain Name "would be an excellent opportunity to develop an independent educational resource for information on Dr Hofstedeís renowned work."
The Respondent points out that he does not offer any consumer service or product at his website connected to the Domain Name. He contends that his use of the Domain Name is without intent for commercial gain or to misleadingly divert consumers.
The Respondent denies that the Domain Name was registered in bad faith and is being used in bad faith. He denies any intention to imply, suggest or create the impression of an affiliation between the Complainant and his website. He goes on: "in fact, the domain in dispute, <geert-hofstede.com>, was selected specifically to attract visitors interested in the academic research work of Dr Hofstede and to share with those visitors independent viewpoints, information and ideas on his work."
The Respondent says that far from there being any indication on the site that might suggest it had anything to do with the Complainant, the site contains hyperlinks directing visitors away from the website and to the Complainantís personal website and to that of his son.
The Respondent annexes to the Response photocopies of some of his web pages. They include a disclaimer of any association with Dr Hofstede.
The Respondent contends that "the use of the domain <geert-hofstede.com> was to obtain, maximise search engine placement rankings for the independent website. And, that said website should be considered in the same purview as a "fan website", as it is in fact a tribute to work and value of Dr Hofstede." The Respondent refers to the fan website at "www.beachboys.com" which he contends is an obvious use of a trademarked name, yet it is in the hands of an independent agent not affiliated with the Beach Boys and the site features a disclaimer.
The Respondent contends that this not for profit use of the Domain Name constitutes fair use.
Finally, the Respondent relates all the various examples of bad faith registration and use set out in paragraph 4(b) of the Policy and contends that none of them are applicable with regard to the use that he is making of the Domain Name. He closes by saying "Respondent respectfully reaffirms his rights to the disputed domain for use in a non-commercial, education manner under the doctrine of fair use."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is the Complainantís name (albeit with a hyphen between his first name and his surname) and is intended to represent his name.
While the Respondent says that he was not aware that the Complainant regarded his name as being a trademark, it is to be noted that the extracts from the Respondentís website which are annexed to the Response identify the Complainantís name as a trademark. The site features a trademark notice reading "Geert Hofstede TM is a trademark of Dr Geert Hofstede."
It may be that this was added ex post facto in recognition of the Complainantís claim in the Complaint to trademark rights in his name. Nonetheless it does seem a somewhat strange thing to do if one is denying the existence of any relevant trademark rights.
Trademark rights in respect of personal names is an area where panelists have differed from time to time, but more often than not, where a Complainant has traded under and by reference to his name and to a significant degree over a number of years panelists have accepted that he is likely to have developed a reputation and goodwill in respect of his name sufficient to give rise to unregistered rights.
In this case the Complainant has produced none of the information normally provided to establish unregistered rights. All he has done has been to make a bare unsupported assertion to those rights. Ironically, the support comes from the Response. On the evidence of the Respondent (including the extracts from the Respondentís website) it is plain that the Complainant is a very distinguished author/scholar in his chosen field and with an established reputation. In addition to being an author, it appears that he also provides consultancy services under and by reference to his name.
In the circumstances, and whether or not it is right that the Panel should accept at face value the Respondentís acknowledgement of the Complainantís trademark rights, the Panel finds that the Complainant has unregistered trademark rights in his name.
Given that the Domain Name is substantially identical to the Complainantís name and is intended to represent the Complainantís name, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Whatever may have been the Respondentís intentions when he acquired the Domain Name, the fact is that taking someone elseís name precisely because it is that personís name and then using it without adornment as a domain name is on its face a course of action calculated to lead to confusion. Inevitably, a not insignificant proportion of visitors to the site will believe the site to be a site organized by or endorsed by the person whose name it is. The fact that the site may feature a disclaimer is to no avail. By then, the confusion has occurred.
Clearly, nobody is going to visit a website at "www.geert-hofstede.com" unless they are particularly interested in Geert Hofstede or his work. While it may be that some people will not give it a momentís thought as to who is responsible for the site on the basis that all they are really interested in is learning about Geert Hofstede and his work; nonetheless, a not insignificant number of those visitors will be people who will assume that it is an official site of some kind. In the case of a domain name such as <kodak.co.uk> a very high proportion of Internet users is likely to believe that the domain name will connect to a Kodak site. In the case of a domain name such as the Domain Name, the proportion will not be as high, but nonetheless will still represent a significant number of people.
The Panel finds it impossible to accept that the deliberate use of somebodyís trademark in this way can be regarded as fair use. There is nothing fair about it at all. For those who are deceived, it is tantamount to impersonation.
Where the site in question is a protest site, the damage to the Complainant is easy to see. Where the site is a tribute site (and the site connected to the Domain Name is closer to being a tribute site) the damage is not so easy to see. Nonetheless in the view of the Panel the potential damage still exists. The potential for damage lies in the fact that the Complainantís reputation and goodwill is out of his hands and rests with the Respondent. Why should it be fair for a complainant in these circumstances to have to rely upon the goodwill of the respondent, which might vary from day to day?
In all the circumstances the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For precisely the same reasons the Panel regards the Respondentís acquisition and use of the Domain Name as constituting registration and use of the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
If, as the Respondent claims, his use of the Domain Name has been an entirely non-commercial use, then his use clearly does not fall within any of the categories of bad faith registration and use set out in paragraph 4(b) of the Policy. However, the nature of the Respondentís site, which is described as "International Business Center" and which is expressed to be supporting global business, is a strange one for a non-commercial site. Moreover, the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are merely examples. The list of examples in paragraph 4(b) is not an exhaustive list.
The Panel takes the view that for someone to take someone elseís trademark for a domain name without that personís permission and precisely because it is that personís name/trademark and to use it to connect to a website dealing with that person and/or his work is abusive on the basis that it will inevitably lead to confusion of Internet users. It does not fall within the scope of the examples in paragraph 4(b) of the Policy simply because, on the evidence of the Respondent, it is for a non-commercial purpose. The Panel has some doubts over the alleged non-commercial nature of the Respondentís activity, but, more to the point, sees no reason why the ambit of the Policy should be restricted to commercial abuses.
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith. In so finding the Panel accepts that the Respondent may genuinely have believed that confusion was unlikely. However, the Panel is in no doubt that the natural consequence of what the Respondent has done has been to deceive Internet users.
For all the foregoing reasons, namely that the Domain name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel orders that the Domain Name, <geert-hofstede.com>, be transferred to the Complainant.
Date: October 7, 2003