Antonio de Felipe v. Registerfly.com
Case No. D2005-0969
1. The Parties
1.1 The Complainant is Antonio de Felipe, Madrid, Spain, represented by UBILIBET, Spain.
1.2 The Respondent is Registerfly.com, New Jersey, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <antoniodefelipe.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
3.1 A Complaint in the Spanish language was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2005. On September 12, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 16, 2005, eNom 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 Complaint was submitted in English according with the language of registration agreement, on October 11, 2005. 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”).
3.2 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 27, 2005.
3.3 In accordance with the Rules, Paragraph 5(a), the due date for Response was November 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2005.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 5, 2005. The Panel finds that it was properly constitued. 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.
3.5 The Center appointed the Panel in compliance with Paragraph 7(c) of the Supplemental Rules and, under Paragraphs 5(e) and 14(a) of the Rules, the effect of the default by the Respondent is that the Panel shall proceed to a decision without the benefit of any Response from Respondent.
4. Factual Background
4.1 The Disputed Domain Name is <antoniodefelipe.com>.
4.2 The Complainant is Antonio de Felipe, a Spanish born and resident career artist.
4.3 The Respondent, Registerfly.com, is an Internet domain names registrar headquartered in the United States of America.
4.4 The Disputed Domain Name resolves to a Spanish language website <gifmania.com> which is a site for downloading items such as screen savers and polyphonic ringtones. The Whois data for the Disputed Domain Name and <gifmania.com> list the registrant contact as the Respondent, however, the administrative and technical contacts given for the Disputed Domain Name are email@example.com and for <gifmania.com> are firstname.lastname@example.org. Like <gifmania.com>, the <tecnopolis.net> website is a site for downloading electronic items. The Whois data for <tecnopolis.net> lists the registrant, administrative and technical contacts as “NA”.
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarized as follows.
Identical or Confusingly Similar
5.2 The Disputed Domain Name, <antoniodefelipe.com>, is identical to the Complainant’s name.
5.3 The Complainant does not possess any trademark registrations for “ANTONIO DE FELIPE”.
5.4 The Complainant states that he has had more than 40 individual exhibitions in Spain and abroad and cites some of the most noteworthy of these as being at various galleries in Spain including the Casa de Vacas and the Levy Gallery in Madrid; the María José Castellví Gallery in Barcelona; the Museum of the City of Valencia and the Bilbao Bizkaia Kutxa Foundation. His body of work includes a series devoted to Velázquez; portraits based on famous personalities such as Cindy Crawford and Mother Teresa; and “The Cows” (“Las Vacas”), amongst which is one of his most well known works, “The Coca-Cola Cow” (“La Vaca Coca-Cola”).
5.5 The Complainant states that, with regard to his exposure abroad; his exhibits in the Levy Gallery in Hamburg are especially noteworthy; he regularly participates in the ARCO, Art Cologne and Art Brussels fairs and that his work is present in major public and private collections. He exhibits to his Complaint details of further exhibitions of his work held in other countries.
5.6 The Complainant considers himself a multidisciplinary artist. Aside from painting and sculpture, he has collaborated with Pedro Almodóvar on the film Carne Trémula (Trembling Flesh); designed curtains for Telemadrid; created a crockery set for the Santa Clara company and has published in major newspapers and magazines, such as ByN Dominical (the Sunday magazine for the ABC newspaper), El País, El Mundo newspaper’s El Magazine, Marie-Claire, Elle and Rolling Stone magazine.
5.7 The Complainant owns the following domain names: <antoniodefelipe.es>; <antoniodefelipe.net>; <antoniodefelipe.org>; <antoniodefelipe.info> and <antoniodefelipe.biz>.
5.8 The Complainant submits that his successful artistic career demonstrates the fame and prestige attaching to his given name, Antonio de Felipe, which is the name that identifies him as an active artist.
5.9 Therefore, although the Complainant does not hold a registered trademark in his personal name Antonio de Felipe, the name constitutes a “de facto trademark or unregistered trademark” in which he holds rights and which should be recognised under the Policy.
Rights or Legitimate Interests
5.10 The Whois data lists Registerfly.com, an Internet service provider, as the registrant of the Disputed Domain Name. Registerfly.com holds no rights or legitimate interests in the Disputed Domain Name.
5.11 The circumstances indicate that although formal ownership vests in Registerfly.com, the actual control of the Disputed Domain Name is that of a different entity, one likely to be benefiting from its control of the Disputed Domain Name by virtue of link commissions and affiliation programs associated with the redirection to the “www.gifmania.com” website. The Whois data indicates that there is a link between the party managing the websites relating to the Disputed Domain Name, <gifmania.com> and <tecnopolis.net>. This party is not disclosing its identity on the Whois data; however, <gifmania.com> does resolve to a further website (“www.gifmania.com.es”) which is owned by a Spanish-based entity, Gifmania CB.
5.12 Registerfly.com is engaging in irresponsible behavior by hiding the real data of the party controlling the Disputed Domain Name on the Whois listing.
5.13 In any event, Registerfly.com is the correct Respondent in this case because it is recorded on the register as the owner of the Disputed Domain Name and it is the party against whom the Panel must make its determination (Area Seguros Generales SA v. Ana Internet SL, WIPO Case No. D2004-0574 and i-online software ag v. Magnolia Associates, WIPO Case No. D2001-0422).
5.14 The Complainant also asserts that neither Registerfly.com nor Gifmania CB “hold any distinctive symbol” relating to Antonio de Felipe at USPTO (United States Patent and Trademarks Office), OEPM (Spanish Patents and Trademarks Office) or OHIM (Office of Harmonization for the Internal Market).
5.15 The Complainant further confirms that he has not authorised the parties concerned to use his artistic name. The goods and services offered on the “www.gifmania.com” website are not connected in any way to Antonio de Felipe’s activities. Registerfly.com is not known by the Disputed Domain Name, does not hold any rights in respect thereof and has not set aside the Disputed Domain Name in order to offer products or services in good faith.
5.16 Accordingly, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Registered and Used in Bad Faith
5.17 The Disputed Domain Name is claimed to have been registered in bad faith: Antonio de Felipe has notoriety and renown in the art world and, like the company that appears to be developing the content of the webpage to which the Disputed Domain Name is forwarded (Gifmania CB), he is of Spanish nationality. Gifmania CB has no connection to the name “Antonio de Felipe” nor does the Respondent. The Respondent is using the name to promote a web site with a variety of downloads. When the Disputed Domain Name was registered there was an awareness of the reputation of Antonio de Felipe.
5.18 The Disputed Domain Name is being used in bad faith:
“whether the ownership is direct or indirect, the use being made of the domain name is obviously in bad faith, since at the very least, the circumstances of Policy 4.b) ii and iv are present:
ii) the domain name has been registered in order to prevent the holder of the forename and surname (Antonio de Felipe) from reflecting his artistic name (Antonio de Felipe) in a corresponding domain name;
iv) in using the domain name, there was an intentional effort made to attract Internet users to the Internet web site www.gifmania.com, with a view towards monetary gain.”
5.19 Since Gifmania CB registered the Disputed Domain Name in bad faith it should be understood to have used it in bad faith (J. García Carrión, S.A. v. Ma José Catalán Frías, WIPO Case No. D2000-0239.
5.20 The possibility that consumers might associate the Disputed Domain Name with Antonio de Felipe the artist and his work “could not have escaped the attention of Registerfly.com, much less so that of Gifmania CB”.
5.21 The Complainant maintains that using a domain name to attract hits to a website with a view to monetary gain is a typical example of use in bad faith. Parties linked to the Respondent have obtained and continue to obtain income from the Disputed Domain Name through the use of banners, publicity and the advertising and the commercial use they engage in on the “www.antoniodefelipe.com” website.
5.22 Using the Disputed Domain Name to steer visitors to a website completely disassociated from the artist is evidence of bad faith even if it does not reach the point of creating confusion regarding the source, sponsorship, affiliation or promotion of the web site (AT & T Corp. V. Amjad Kausar, WIPO case No. D2003-0327).
5.23 Lastly, the Complainant claims that he is unable to exercise his legitimate right to reflect his artistic name in the corresponding .com domain name, and the use being made of the Disputed Domain Name is gravely prejudicial to his image and prestige, the Complainant having nothing to do with the activities being carried out on the web site.
5.24 The Respondent did not file a Response in reply to the Complainant’s contentions and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules. The Panel considers the implications of this in paragraph 6 below
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in Paragraph 4(a) of the Policy. Namely, 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 interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.4 However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
A. Identity of the Respondent
6.5 Before addressing the requirements of the Policy it is convenient first to comment on the nature and identity of the Respondent in this case. Registerfly.com is the formal respondent in this case. It is the entity that is recorded on the Whois register for the Disputed Domain Name and the Verification Response from the Registrar (eNom). It is, therefore, the party against whom any complaint should be initiated and, for example, upon whom service should be effected under Paragraph 2 of the Rules. The Complainant cites the decision of i-online software ag v. Magnolia Associates, WIPO Case No D2001-0422 1 in this respect. The Panel agrees that this decision supports this proposition. It also agrees that Registerfly.com is, in the words of that decision, the entity “against which the legal effects of this Decision are to be directed”.
6.6 However, this is not quite the end of the matter. It is clear from the content of the Complaint that Registerfly.com provides domain name and other internet related services. Amongst the many services it offers are “domain masking”, “domain parking” and “anti-spam prevention”. Cursory consideration of Registerfly.com’s website by the Panel (as to the legitimacy of which see paragraph 4.5 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” http://www.wipo.int/amc/en/domains/search/overview/index.html) confirms that Registerfly.com is one of a growing number of entities offering so called “Whois privacy protection” services. The proposition that underlies these services is that the provision of registration details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. Therefore, these so called “privacy” or “masking” services involve the “true owner” of a domain name transferring the registration of the domain name into the name of the service provider. The service provider then holds the domain name on behalf of the “true owners” and the Whois details are amended accordingly.
6.7 Whilst unsolicited email is often irritating, such services can also cause serious difficulties for rights holders attempting to establish who has registered a domain name that is believed to have been wrongfully registered.
6.8 In the case currently before the Panel it seems highly likely that the reason why the Disputed Domain Name is in the name of Registerfly.com is that it is held by Registerfly.com pursuant to some sort of masking or privacy service for a customer. However, the Complainant believes that nevertheless it has been able to identify who that entity is. It is suggested that this is Gifmania CB, which is domiciled in Madrid. The reasons suggested for this are that anyone entering the Disputed Domain Name into a browser is redirected to a website operated by Gifmania at “www.gifmania.com” and that there are certain similarities between the registration details for <gifmania.com> and the Disputed Domain Name.
6.9 In the absence of any evidence to the contrary, this Panel accepts the Complainant’s contentions in this respect. As a consequence, the Panel considers it appropriate to treat the actions of Gifmania as the actions of the Respondent for the purposes of Paragraph 4 of the Policy.
B. Identical or Confusingly Similar
6.10 There are two separate elements which the Complainant must prove under Paragraph 4(a)(i) of the Policy. The Complainant must provide evidence showing that he has rights in a trademark or service mark and must show that the Domain Name is identical or confusingly similar to the trade or service mark in which he has rights.
6.11 This second element is straightforward because the Disputed Domain Name is the Complainant’s name plus the generic <.com> suffix. The Panel therefore finds that, for the purposes of Paragraph 4(a)(i) of the Policy, the Disputed Domain Name is identical to the Complainant’s name.
6.12 The first element is more difficult in this case as the Complainant does not hold any registered rights in his personal name. However, he asserts:
“In this case, the Complainant does not possess any registration of a trademark that might protect the name “Antonio de Felipe,” but his artistic history, his awards worldwide and his international exhibitions demonstrate the fame and prestige behind the name ANTONIO DE FELIPE. This reality, together with the generalized doctrine to which the Center adheres, i.e., that the Policy refers to the term “trademark” (whether or not it is registered) in a broad sense, and consequently, the Center having considered the forenames and surnames of personalities from the arts, the entertainment world or politics as “trademarks” in those cases where it has safeguarded the rights of this type of personalities, the Panel should be led to the definition that Complainant’s given name and surname, “Antonio de Felipe,” is a trademark (for services or products) and the Policy should be applicable to it.”
6.13 The question of when a personal name can constitute a trademark under the Policy and whether unregistered rights in such a name might constitute rights for the purposes of Paragraph 4(a)(i) whilst reasonably settled, is not uncontroversial. This Panel has previously considered and remarked on it at some length in its decision in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180. In particular, in that case the Panel stated as follows:
“6.12 It is undoubtedly the case that numerous UDRP decisions can now be identified in which the panel held that a Complainant had common law trademark rights in a personal name and proceeded to apply the UDRP on that basis. Examples include Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2000), Dr Michael Crichton v Alberta Hot Rods, WIPO Case No. D2002-0872 (November 25, 2002), Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000), Bill Withers v Robert Dominico et al., D2000-1621 (January 28, 2001), and Julia Fiona Roberts v Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).
6.13 These decisions are all authority for the proposition that a personal name insofar as it is also recognized under the common law as an unregistered trademark, is to be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy. However, the question of the scope of protection under the Policy of personal names that may qualify for protection as an unregistered trademark (and indeed as unregistered trademarks in general) is not without difficulty.
6.14 As is explained in chapter 5 of the Report of the Second WIPO Internet Domain Process, if the Policy is to be interpreted as applying to common law trademarks, then the application of the Policy in a particular case may well depend upon the extent to which the law of the country in which the Complainant carries on his activities recognizes or does not recognize such unregistered rights. In particular, Complainants from countries with a common-law tradition that tend to recognize the concept of unregistered trademarks would appear to have greater protection under the Policy than Complainants from countries that do not recognize this concept.
6.15 The Panel has some considerable sympathy with those that argue that this should not be the case. Such persons maintain that insofar as unregistered trademarks are recognized by the Policy, there should be some common standard as to what constitutes such a trademark that is not dependent upon the jurisdiction in which the Complainant carries on his activities. Not only would this ensure uniformity of application of the Policy but would also avoid the need for the Panel when deciding a particular case to have to asses the extent to which the law of the jurisdiction or jurisdictions in question (which may be a jurisdiction with which the Panel has little familiarity) did or did not protect unregistered marks. When one considers that the Policy is supposed to be a relatively quick, easy and cost-effective method to resolve domain name disputes, this latter point is not an insignificant one.
6.16 However, such sympathies do not justify this Panel seeking to discern such a common standard and then to apply that standard to this case. The obligation on the Complainant in this case is clear. She must show that she has common law rights in the jurisdiction relevant to this case, and the relevant jurisdiction in this case would appear to be the United States.”
6.14 The facts of Sibyl Avery Jackson meant that common law unregistered trademark rights were the only trademark rights of potential relevance in that case. However, it is important to add that the reasoning in that case does not necessarily preclude a finding in other cases that a complainant has unregistered trademark rights in non-common law jurisdictions. Indeed support for the proposition that unregistered trademark rights may exist elsewhere is to be found in paragraph 1.7 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. This states that the consensus view of panelists is that “unregistered rights can arise even when the complainant is based in a civil law jurisdiction.” One of the cases cited in support of this proposition is Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314. In that case the three person panel held that unregistered trademark rights were recognised under Norwegian law.
6.15 Regardless of the exact extent of possible unregistered trademark rights for the purposes of the Policy, one thing is reasonably clear. Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.
6.16 There is a practical point that is worth making here. A panel deciding a case under the Policy will not always have knowledge of the laws of the jurisdiction in which unregistered trademarks are claimed. A complainant bears the burden of showing that it has rights recognised by Paragraph 4(a)(i) of the Policy. Therefore any complainant claiming unregistered trademark rights would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademarks rights in that jurisdiction. This is particularly so if relevant unregistered rights in that jurisdiction have not been unambiguously recognised in previous UDRP decisions.
6.17 Therefore, what is the position of the Complainant in this case? His principal claim appears to be that as a result of his alleged worldwide fame he is the owner of a “de facto” unregistered trademark that should be recognised as a trademark under Paragraph 4(a)(i) of the Policy.
6.18 For the reasons already given, the Panel believes such a claim to be misconceived. No such nebulous international unregistered trademark right exists. However, on this occasion this is not fatal to the Complainant’s case.
6.19 The Complainant has established that he makes his living as an artist; that his name identifies his work and that his art is internationally promoted, exhibited and sold by reference to his name. Furthermore, it is clear that these trading activities take place in the UK. There is evidence of an exhibition under the Complainant’s name in London in 2004 and of a website for the Andipa Gallery which lists art by “Antonio de Felipe”. The website is not only accessible to internet users in the UK but appears to be aimed at least in part to the UK consumer by virtue of the fact that it offers the Complainant’s artworks for sale priced in Pounds Sterling.
6.20 In the circumstances, and in the absence of any Response to the contrary, the Panel has little difficulty in reaching the conclusion that the Complainant has developed valuable trading goodwill in his name in the commercial art world in the UK that might found a claim in passing off. For the reasons set out in Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122, and Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235, the Complainant can be considered to posses rights in the UK that can be treated as rights in a trademark for the purposes of Paragraph 4(a)(i) of the Policy.
6.21 The Complainant has therefore made out Paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.21 The Disputed Domain Name forwards the user to “www. gifmania.com”, a website which has no apparent connection with the name “Antonio de Felipe”.
6.22 As far as the Panel can tell on the evidence before it: there has never been any relationship between the Complainant and the Respondent (whether that be Registerfly.com or Gifmania CB) and the Respondent has never been licensed or authorized to use the Complainant’s name; the Respondent has at no time been commonly known by or had any connection to the name “Antonio de Felipe”.
6.23 In the absence of a Response, the Panel therefore concludes that the Complainant has shown a prima facie case of the lack of rights or legitimate interests on the behalf of the Respondent which has not been rebutted.
6.24 The Panel finds that the Complainant has established Paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.25 The Complainant states that the registration was made in bad faith. He states that at the least circumstances evidencing use in bad faith under the Policy at Paragraph 4(b)(ii) and (iv) are present.
6.26 There is no evidence that Gifmania CB has any connection to the name “Antonio de Felipe” and there is no connection between the name and the goods and services offered on the “www.gifmania.com” website to which the Disputed Domain Name forwards a user. The Panel accepts that the Complainant is an internationally recognized artist. Further, the Complainant is Spanish and the Panel notes that the evidence given in support of his international reputation indicates that he enjoys his highest profile in Spain. The Panel therefore finds it significant that the Disputed Domain Name forwards a user to the Spanish language website of <gifmania.com> rather than to any of the alternative language versions of the site.
6.27 In the circumstances, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in the knowledge of and because of the Complainant’s reputation. It uses the Disputed Domain Name in order to direct internet users who believe that the Disputed Domain Name is associated with the Complainant to the “www.gifmania.com” site in an attempt to sell downloads and the like to those users. This behavior constitutes evidence of the registration and use of the Disputed Domain Name in bad faith under Paragraph 4(b)(iv).
6.28 The Panel finds that the Complainant has shown the requirement of Paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” by the Respondent.
7.1 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, <antoniodefelipe.com>, be transferred to the Complainant.
Matthew S. Harris
Date: December 19, 2005
1 The Complainant also cited Area Seguros Generales SA v. Ana Internet SL, WIPO Case No. D2004-0574 in this respect but since this in Spanish the Panel has been unable to consider this decision.