WIPO Arbitration and Mediation Center
Artscape Inc. v. Ivitas Inc.
Case No. D2006-0937
1. The Parties
The Complainant is Artscape Inc., Portland, Oregon, United States of America, represented by Keith Larson, United States of America.
The Respondent is Ivitas Inc., McLean, Virginia, United States of America, represented by Dozier Internet Law, P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <artscape.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2006. On July 25, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name(s) at issue. On July 27, 2006, Network Solutions, LLC 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 and technical contacts. 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 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2006. The Response was filed with the Center on August 24, 2006.
The Center appointed Jordan S. Weinstein as the Sole Panelist in this matter on September 14, 2006. 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
Complainant manufactures translucent decorative films overlaid to windows to give them the look of stained or colored glass. Since 1999, Complainant sells these decorative films under the name ARTSCAPE. Complainant promotes the sale of its ARTSCAPE decorative window films at its own website at “www.artscape-inc.com”. Complainant has obtained a U.S. registration for the trademark ARTSCAPE in connection with its window film, assigned Registration No. 2,484,264, and issued September 4, 2001. The registration claims first use of the mark in commerce as of April 1999.
Respondent is a Virginia corporation. The domain name it registered, <artscape.com>, resolves to a page which simply states “Hi All”. Respondent’s website contains no discernable source code, wallpaper, Meta tags, or text other than these two words.
5. Parties’ Contentions
Complainant asserts it has been very active in using the name ARTSCAPE for commercial activity since 1999. Complainant filed an application to register its trademark in January of 1999 and contends it has been selling products under the ARTSCAPE name since that time. Complainant has a patent on the products it sells and continues to sell them and utilize the name for its legitimate business. Complainant has a website on which it promotes its ARTSCAPE decorative window film products. It uses the name <artscape-inc.com> for the web page and for its e-mail address, but contends it would use the domain name <artscape.com> had Respondent not registered it. Complainant asserts (but provided no evidence) that there is a lot of confusion between <artscape-inc.com> and <artscape.com>. In an effort to combat this confusion, Complainant put the following statement on its web page: “The authentic website for Artscape Decorative Window Film.” Complainant asserts this confusion is unnecessary because Respondent does not use <artscape.com> for a legitimate purpose. Complainant asserts there is no information or ability to communicate on Respondent’s website; rather, the web page says “Hi All” and nothing else.
Complainant provided a Google search for the term ARTSCAPE, showing that Respondent’s web page comes at a higher level than Complainant’s. Complainant contends this indicates more search activity for Respondent, even though <artscape.com> is used for nothing but “Hi All”. Complainant contends that Respondent must be getting website hits which were intended for Artscape Inc. and this probably hurts Complainant’s business.
Complainant asserts that because it has registered the trademark ARTSCAPE it has the right to the name in all circumstances, including the domain name. Complainant asserts that Respondent has not used the domain name for a legitimate purpose for at least a year, and possibly for three or four years. Therefore, Complainant contends the right to the name ARTSCAPE should also extend to the domain name <artscape.com>, especially since the domain name is not used for anything other than “Hi All”.
Complainant contends it is unclear why Respondent would register <artscape.com>, as there appears to be no connection with Respondent’s business, which is a Vietnamese travel business as shown on its web page. Complainant asserts it could find no reference on Respondent’s web page “www.ivitas.com” to the domain name <artscape.com> or anything like it. Complainant asserts that it could easily draw the conclusion that Respondent acquired and registered the domain name in bad faith either to sell it for profit or to prevent Complainant from using the registered name in conjunction with the domain name. In either instance, Complainant contends that it seems the domain name was registered in bad faith.
Respondent contends that it purchased the domain name at issue prior to September 4, 2001 (the issue date of Complainant’s registration). Respondent contends that the domain name was purchased for $6,000 in anticipation of establishing a platform for the sale of one of the largest collections of Vietnamese art held by a private party in the world. Respondent contends that the owner of the art collection, Mr. Dzung Hoang, has approximately a thousand works of art in his collection, and the collection is valued at between $6 and $7 million. Respondent contends that Mr. Hoang listed accurate identifying information with the domain name registrar, that the administrative contact is Respondent’s agent which handles many of his U.S.-based business affairs, and that the corporation listed as the registrant is a holding company for a broad range of Mr. Hoang’s international business interests. Respondent contends there has never been any deception or other attempts to conceal the identity of the Registrant.
Respondent contends it never received any notice from Complainant of trademark infringement or cybersquatting until receipt of this Complaint under the Policy. Respondent contends Mr. Hoang is its sole owner, and Respondent is one of many corporations and business entities Mr. Hoang uses in his international financial endeavors. Mr. Hoang emigrated to the United States from South Vietnam in 1975 and has been a real estate developer since that time. He has since invested heavily in the telecommunications industry, providing telecommunication services to Vietnam. Since his emigration, Mr. Hoang began collecting Vietnamese artwork. Respondent contends that Mr. Hoang’s works are from about fifteen different Vietnamese artists.
Respondent contends that Mr. Hoang is a man of significant financial wealth, has never considered selling the domain name, has no current interest or need to sell the domain name, and has never offered to sell it. Respondent contends the domain name <artscape.com> is one of a few domain names owned by Respondent; all others he owns are used actively in businesses. Respondent contends it has never purchased any other domain names which are held passively, and Mr. Hoang has never been the subject of any UDRP proceeding as a Respondent in the past.
Respondent contends that it and Complainant are not competitors, and neither Respondent, its principals nor any other companies or subsidiaries are involved in any way in Complainant’s line of business. Respondent contends that its domain name purchase closed on September 4, 2001, seven days before 9/11. Afterward, Mr. Hoang focused his attention elsewhere and has not yet decided when to launch his site to sell the artwork. Respondent contends the website is held passively and not to generate any revenue or for any commercial purpose.
Respondent contends that Complainant’s mark is not widely known, is a weak, generic and at best merely descriptive mark, deserving the lowest level of protection, and applies only to an extremely narrow area of business or commerce. Respondent contends it is conceivable that other legitimate, active uses of this domain name could be made by others. Respondent contends that a search on a meta search engine revealed a broad array of companies and entities using the exact term, some of which relate to commercial enterprises, while others relate to art fairs and art-related events. Respondent notes that ARTSCAPE was registered by third parties in the U.S. Patent and Trademark Office, attaching copies of Registration No. 2,444,877 for ARTSCAPES in connection with printed formed PVC sheets, oil paintings on canvas, crossword puzzles, printed acrylic sheets, calendars and greeting cards; Registration No. 2,521,519 for ARTSCAPES BY BLUE SKY & Design in connection with custom construction of waterfalls, pools, water sculptures, artificial rock gardens and other services; Registration No. 2,903,781 for TV ARTSCAPES…YOUR PERSONAL WINDOW TO THE WORLD in connection with pre-recorded music and audio-visual material for commercial, home and educational use, Registration No. 2,982,085 for ARTSCAPES in connection with apparel, and Registration No. 2,941,610 for ARTSCAPE in connection with computer services and providing temporary use of non-downloadable software. Respondent contends that Complainant did not file any opposition to these registrations. Respondent also contends that the domain name <artscapes.com> is being held passively by a Canadian-based art group, yet Complainant has initiated no attempt to obtain this domain name. Respondent contends it has made no effort to trade on the goodwill of Complainant or Complainant’s window film product, to the extent such goodwill exists.
Respondent contends there are no circumstances to indicate bad faith in its passive holding of a domain name: the trademark is not well known, it has a limited market reach and protection, a Response was filed to the Complaint, Respondent did not conceal its identity, Respondent’s contact information was correct and proper, and it is not impossible to conceive of a good faith use of the domain name.
Respondent contends that it never had knowledge of Complainant’s existence, never heard of Complainant before it received the Complaint, that it properly registered the domain name and did not attempt to hide its identity, that it is not a competitor of Complainant, that it has no interest in interfering with Complainant’s window film business, and that virtually none of the elements relied upon by past Panels to transfer a passively-held domain name exist in this matter.
Respondent complains that all it has done is to plan ahead in contemplation of one day sharing Mr. Hoang’s Vietnamese art collection with the world. Respondent contends it was not a speculator grabbing the domain name in hopes of one day selling it for profit. Rather, Respondent contends it purchased the domain name for $6,000 five years ago, and has the right to maintain ownership of this property without the threat of hijacking.
Respondent contends that Complainant initiated this process in bad faith in an attempt to pirate away and hijack the domain name of Respondent and its affiliated global organization. Respondent requests a decision finding the Complainant attempted to reverse-hijack this domain name.
6. Discussion and Findings
A. Applicable Policy Provisions
The Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a)
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Where a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel agrees with Complainant that the domain name <artscape.com> is identical or confusingly similar to Complainant’s registered trademark ARTSCAPE. Thus, this prong of the test has been satisfied. The Panel notes, however, that while Complainant’s registration is prima facie evidence of the validity of the registration of the mark, and of Complainant’s ownership of the mark and its exclusive right to use the registered mark in connection with the goods identified in the registration, 15 U.S.C. §1115, Respondent has provided evidence that others have registered the term ARTSCAPE in connection with other goods, including such arguably related goods as printed acrylic sheets, and printed and formed PVC sheets, and have incorporated the term into domain names for art-related websites.
C. Rights or Legitimate Interests
The Panel agrees with Complainant that Respondent has failed to establish rights or legitimate interests in the domain name. Neither Respondent nor its owner appear to use the term “artscape” for any commercial enterprise, legitimate or otherwise. There is no evidence that Respondent or its owner are known by the term “artscape”. While Respondent asserts that it has plans for disseminating art from Vietnamese artists on a website linked to the domain name, Respondent has failed to make any connection between the art and the term “artscape”. This Panel rejects Respondent’s contention that “artscape” is generic for either Complainant’s products or Respondent’s artwork; at worst, the term is suggestive of the products or services because it includes the word “art” combined into a unitary term. This Panel must give credence to Complainant’s valid registration of the ARTSCAPE mark, which is prima facie evidence that the mark is not generic.
D. Registered and Used in Bad Faith
It is in the third prong of the test where Complainant’s complaint falls short. Complainant’s case for bad faith is based on its speculation as to reasons why Respondent registered the domain name: that “it seems like the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark …”, and that “the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name”. Yet Complainant admits that “it is not clear why [Respondent] would register the domain name <artscape.com>“. On this point, the Panel agrees with Respondent in that there is no objective evidence, nor even evidence from which a clear inference can be drawn, that Respondent did anything other than passively hold the domain name at issue.
The Panel recognizes that in appropriate circumstances, passive holding of a domain name can constitute evidence of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. However, each case Complainant cites for this proposition was decided by default. In such cases the Panel may draw appropriate inferences from the fact that a Respondent has failed to answer a Complaint. Rule 14(b). To the contrary, not only has Respondent here provided a timely response to the Complaint, but it has certified its response with the signature of Respondent’s principal and augmented it with exhibits. This Panel is required to treat the parties with equality and give each a fair opportunity to present its case. Rule 10(b). The Panel cannot ignore the fact that Respondent has provided evidence from which the Panel could construe a lack of bad faith; namely that the registration of the domain name was not made for purposes of sale or transfer to the trademark owner, or to prevent the owner from reflecting the mark in a corresponding domain name. On the other hand, Complainant could point only to the fact that the domain name was being passively held, and argue that such passive holding constitutes bad faith. Respondent provided evidence to the contrary which this Panel cannot ignore. Therefore, the Panel finds Complainant has not established this prong of the test.
E. Reverse Domain Name Hijacking
Simply because the Complainant’s proof of bad faith was based upon speculation does not mean the Complaint was brought in bad faith. As stated above, there is no objective evidence that Respondent’s website was registered in good faith aside from the evidence Respondent submitted with its response. Obviously, Complainant did not have the benefit of this information prior to filing its Complaint. While Respondent faults Complainant for not contacting it prior to instituting this Complaint, this Panel recognizes that holding Complainants to such a requirement places them in a dilemma: either they risk an adverse inference for not contacting the domain name registrant, or they risk cyberflight by warning a registrant whose domain name was abusively registered, making it more difficult for a Complainant with a legitimate complaint to obtain control of a domain name that should rightfully be its own. This Panel will not force Complainants to make that choice where there is no prior objective evidence of good faith registration. The Panel therefore declines to make a finding of reverse domain name hijacking in this case.
For all the foregoing reasons, the Complaint is denied. This Panel also denies Respondent’s request for a finding of reverse domain name hijacking.
Jordan S. Weinstein
Dated: September 28, 2006