WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sandra Berler v. Kert Clyma
Case No. D2003-0737
1. The Parties
The Complainant is Sandra Berler of Chevy Chase, Maryland, United States of America, represented by Venable, LLP, United States of America and the Respondent is Kert Clyma of Vernal, Utah, United States of America (collectively, "the Parties").
2. The Domain Name and Registrar
The disputed domain name <sandraberlergallery.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2003. On September 22, 2003, the Center transmitted by email to eNom Inc. ("eNom") a request for registrar verification in connection with the domain name at issue. The Center confirmed that the Respondent is listed as the registrant and 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 October 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on October 23, 2003.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 10, 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 facts relevant to the current dispute are set out in the Complaint. Considering the evidence and the fact that Respondent failed to file a response, the Panel finds the following facts to have been established.
Complainant has operated a world-renowned gallery (SANDRA BERLER GALLERY) specializing in photography for thirty years. The gallery has held over 150 public exhibitions with accompanying mailings to approximately 2000 people. Thus over the years an estimated 300,000 people have attended Sandra Berlerís gallery. Complainant, in her capacity as an art dealer and by virtue of her gallery, is a founding member of The Association of International Photography Art Dealers, Inc. ("AIPAD"), the leading international photographers association, in which she has been an active member for over 18 years. Also, the SANDRA BERLER GALLERY is a member of the Art Table and the Art Dealers Association of Washington, D.C. In addition to exhibitions at her gallery, Complainant has also been the curator of exhibitions at the Lafayette College, Brown University and the Tartt Gallery. She has lectured widely on photography at institutions including Brown University, American University, Mt. Vernon College, The Smithsonian Institution, The Corcoran Gallery, The United Nations, The Queen Elizabeth Cruise Liner, and in Europe. Pursuant to two searches, no other "Sandra Berler" was identified in the art field (Google™ search engine) and no other "Sandra Berler" was found in the United States (using "www.knowx.com").
Respondent operates a hard core pornographic site by which he sells pornographic movies, pictures and live sex shows. His use of <sandrabaerlergallery.com> directs the public to that site. Respondent registered the Domain Name shortly after Complainantís registration of it lapsed. On June 16, 2003, Complainant, through her attorney, made a written demand to the registrant of the Domain Name to have it transferred to her. That demand was ignored.
5. Partiesí Contentions
Complainant asserts common law trademark rights in the mark and trade name SANDRA BERLER GALLERY insofar as she has used that name in commerce for 30 years. She also claims to have common law trademark rights in her name Sandra Berler. According to Complainant her name has acquired secondary meaning by using it in conjunction with the Sandra Berler Gallery, exhibitions at the Gallery, advertising for the Gallery, providing lectures, and her active involvement in professional associations.
Complainant also asserts that the Domain Name is identical to her common law trademark, SANDRA BERLER GALLERY despite the fact that it eliminates the spaces in between the words and adds the word .com. According to Complainant, Respondentís use of the Domain Names is likely to cause confusion as to an association or affiliation by and between Complainant and Respondent and, thus, infringes Complainantís trademark rights. Complainant also asserts that the lapse in her domain name registration is not a bar to this action.
Complainant further alleges that Respondent has no rights or legitimate interests in the Domain Name for reasons that include: (1) Respondent operates a hard core pornographic site so his business has no connection with Complainantís mark; (2) Complainant never licensed Respondent to use Sandra Berlerís name; (3) Respondent is not an authorized dealer of Complainant, nor is he affiliated or associated with her in any manner; and (4) the pornographic images displayed on Respondentís site have no connection whatsoever with Sandra Berler or the SANDRA BERLER GALLERY. Without such connections, Complainant concludes that Respondent has no legitimate interests in <sandraberlergallery.com> and, thus, the Domain Name should be transferred to Complainant.
According to Complainant, using <sandraberlergallery.com> which directs the public to Respondentís pornographic website creates in the publicís mind an impression of improper sponsorship, affiliation, or endorsement by and between Respondent and Complainant. Complainant further claims that Respondentís use of her name in conjunction with the pornographic site is a great embarrassment to her and those people innocently seeking her gallery. Thus, for the average person to be unwittingly exposed to such a hard core site is a violation of their right not to be involuntarily exposed to pornography. In addition, using Complainantís name also violates her rights of publicity. Even if ultimately a visitor to Respondentís website realizes it is not affiliated with Complainant, initial confusion has occurred which is a violation of her rights. Complainant also claims that Respondentís site is replete with violations by Respondent of Complainantís copyrights.
Complainant argues that Respondent registered the Domain Name in bad faith insofar as it registered a domain name confusingly similar to Complainantís name to attract Internet users to its pornographic site for commercial gain. Complainant demanded in writing that Respondent cease violating the Complainantís trademark rights and turn over the Domain Name to Complainant. Respondent ignored the demand. Thus, Respondent has knowledge of the infringing nature of their conduct and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 14(a) of the Rules provides that in the event of default, the panel "may draw such inferences therefrom as it considers appropriate." Paragraph 15(a) of the Rules instructs that "[a] panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable." Here, because Respondent failed to file a response, it is therefore appropriate to draw adverse inferences of fact against him. Notwithstanding the fact that Respondent did not contest Complainantís assertions or file a response, Claimant still bears the burden of proving the essential elements of her claim. In that regard, paragraph 4(a) of the Policy directs that Complainant must prove each of the following to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant bases her claim on an allegation that she holds rights to a common law trademark under United States trademark law, rather than on a registered trademark. It is uncontroverted that Complainant has used her name (Sandra Berler) and her galleryís name (SANDRA BERLER GALLERY) in commerce for 30 years. Such uses include a substantial number of art exhibits at the SANDRA BERLER GALLERY, exhibits outside the gallery throughout the United States, sizeable advertising, professional association activities, and lecturing throughout the world. By virtue of such use, the Panel is satisfied that Complainant has demonstrated common law rights in both Sandra Berler and SANDRA BERLER GALLERY. See Collections Etc., Inc. v. RaveClub Berlin, WIPO Case No. D2002-0698.
The uncontroverted evidence shows that <sandraberlergallery.com> is identical, if not confusingly similar, to the Complainantís mark SANDRA BERLER GALLERY. That the Domain Name eliminates the spaces in between the three words constituting the mark and adds ".com" does not render the domain name dissimilar to Complainantís mark. See Barry Diller v. Internetco Corp., WIPO Case No. D2000-1734 ("it [is] by now well-settled that the addition of a top level domain and the dropping of a space are irrelevant for the purposes of a domain name mark analysis"). Thus, Complainant has satisfied the first requirement of the Policy.
B. Rights or Legitimate Interests
It is uncontested that Respondent is not (1) commonly known by the Domain Name, (2) an authorized art dealer of Complainant, (3) affiliated or associated with Complainant in any manner, and/or (4) a licensee of Complainant. See Nintendo of America, Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449 (finding no legitimate interests in <pokemonl.com> where Complainant has not authorized Respondent to use POKEMON mark and the Respondent has no independent rights in the mark). Furthermore, the pornographic images displayed on Respondentís site do not have any connection with Sandra Berler or the SANDRA BERLER GALLERY. See Kay Smyth and Galway Walking Club v. Yuen Wei, WIPO Case No. D2003-0100 ("Turning to the alleged bona fide offering, the fact that the services offered by the Respondent cannot by any stretch of the imagination be linked to the type of services actually offered, and the fact that those services are not offered under that name (i.e., the URL containing the Domain Name is the only place where the Internet user will see the words "Galway Walking Club") or that any link to the Galway area or even to Ireland is made leads the Panel to reject the Respondentís contention.")
The only apparent purpose for registering the Domain Name is to lure unwitting consumers to Respondentís pornographic website for commercial gain and to tarnish Complainantís marks. It is well settled that such a use cannot constitute a legitimate right or interest for the purposes of the Policy. See, e.g., Barry Diller v. Internetco Corp., WIPO Case No. D2000-1734.
Respondent has failed to invoke any circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (once complainant makes a prima facie showing that respondent lacks a legitimate interest, the burden of production shifts to respondent to rebut that prima facie showing). Therefore, Complainant has satisfied the second requirement of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís website or location, or of a product or service on the website or location.
Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith." This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2003-0003, at paragraphs 7.4 to 7.6.
For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148. The Panel is satisfied in this case that the Respondentís conduct falls within the circumstance identified in Paragraph 4(b)(iv) of the Policy.
That Respondent registered the Domain Name in bad faith is evidenced by the fact that the Domain Name lacks any connection with his business but is identical, if not confusingly similar, to Complainantís marks SANDRA BERLER GALLERY and Sandra Berler. Furthermore, Respondent registered the Domain Name shortly after Complainantís registration of that Domain Name lapsed. The date of registration tends to indicate that Respondent selected a domain name of a successful and long-standing business having a domain name registration that had lapsed recently, to divert the public to its pornographic website. Respondent did not "invent" the Domain Name, rather the intent was to use an established and now available domain name to leverage the goodwill that was previously associated with it and belonging to Complainant. The small interval of time between Complainantís lapse and Respondentís registration is further evidence of Respondentís bad faith registration." See BAA plc v. Spektrum Media Inc., WIPO Case No. D2000-1179 ("The Respondent took advantage of the Complainantís failure to renew a domain name that must have been known by the Respondent to refer to transport services to and from Heathrow Airport, an enterprise with which he had no connection. The inference that he intended to deal with the name in some way to the detriment of the Complainant is inescapable.").
Respondent is also using the Domain Name in bad faith despite a written notice of his infringing activity and a demand to cease using it. Respondent is using the Domain Name of a well-established business to increase traffic to his pornographic site for commercial gain -- to sell hardcore photos, videos and live sex shows. The association of a confusingly similar domain name with a pornographic website is itself evidence of bad faith. See, e.g., Prada S.A. v. Mr. Juno Kim, WIPO Case No. D2003-0757. In addition, however, Respondentís use of SANDRA BERLER GALLERY and Sandra Berlerís name in conjunction with a pornographic site to create in the publicís mind an impression of sponsorship, affiliation, or endorsement is embarrassing to Complainant, tarnishes her reputation and that of the gallery and, thus, constitutes further evidence of bad faith usage. Schauman Wood Oy v. Schaumanwood.com Meta Search, WIPO Case No. D2001-1145 ("Respondentís use of the site to display "Cybererotica" is offensive and derogatory to the Complainant and its customers who would be confused when accessing the Respondentís website").
Accordingly, Complainant has satisfied the third requirement of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Harrie R. Samaras
Date: November 24, 2003