Art By God, Inc. v. Art From God Corp.
Case No. D2006-0965
1. The Parties
The Complainant is Art By God, Inc., Miami, Florida, United States of America, represented by Kluger, Peretz, Kaplan & Berlin, P.A., United States of America.
The Respondent is Art From God Corp., Fort Mohave, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <artbygod.net> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2006. On August 2, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 4, 2006, Tucows 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 contact.
On August 3, 2006, the Center had notified the Complainant of a small procedural defect in the Complaint; in response, the Complainant filed an amendment to the Complaint on August 4, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2006. The Response was filed with the Center on August 23, 2006.
The Center appointed Professor Justin Hughes as the sole panelist in this matter on September 6, 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. Pursuant to discussions between the Panel and the Center, on September 21, 2006 the date for submission of the decision was extended ten (10) days.
4. Factual Background
The Complainant has used the name “Art By God” since at least as early as 1987 for a business selling mineral specimens, semi-precious stones, fossils, sea shells, and other collectible objects from nature [Complainant, paragraph 13 and Annex C]. Although Complainant’s business has been in operation since 1987, it did not apply for trademark registration at the United States Patent and Trademark Office (USPTO) until September 29, 2000, [Complaint, Annex C]. The USPTO registered the ART BY GOD trademark on October 22, 2002 [Complaint, paragraph 14 and Annex C].
The Complainant reserved the domain name <artbygod.com> on March 3, 1997, and began use sometime thereafter [Complaint, paragraph 15 and Annex D]. The Panels’ examination of the “Way Back Machine” Internet archives shows that at least as far back as April 2001 the Complainant has had web pages at the <artbygod.com> domain name reflecting its business. [See Way Back Machine/The Internet Archives, at http://web.archive.org/web/*/http://www.artbygod.com.]
According to the Respondent’s websites, it was founded in 1992 and, at some point, stopped using the business name “Earth Treasures” and adopted two business names: “Arizona Rock Shops” and “Art From God” [http://www.arizonarockshops.com/ and www.artfromgod.net]. According to the records of the Arizona Department of Revenue, the Respondent adopted the “Art From God” name no later than August 1, 1998 [Complaint, Annex J, “Transaction Privilege Tax License” dated August 17, 1998 from Arizona Department of Revenue].
Shortly thereafter – September 27, 1998 – the Respondent registered <artfromgod.com>. The Respondent also took out the domain name <artfromgod.net> on November 10, 1999 [Panel research using Whois.net, conducted on September 25, 2006].
At least as far back as April 1999, the Respondent has had web pages at the <artfromgod.com> domain name, showing itself to be in the same or similar business as Complainant (i.e., selling mineral specimens, semi-precious stones, etc.). [See Way Back Machine/The Internet Archives, at http://web.archive.org/web/*/artfromgod.com.] The Panel will refer to this line of commercial activity colloquially as a “rock shop business” (following one of Respondent’s own business names).
The Respondent registered <artbygod.net> on July 28, 2000 [Complaint, Annex G]. Other pertinent facts regarding this registration are discussed below.
5. Parties’ Contentions
The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under Section 6.A-C below.
The Respondent’s contentions, as they bear on resolution of this dispute, are discussed individually under Section 6.A-C below.
6. Discussion and Findings
When a person registers a domain name with any domain name registrar, the person accepts a contract that forbids “cybersquatting” – the bad faith registration of a domain name that is confusingly similar to someone else’s trademark. When a trademark holder finds that someone has registered a domain name that they believe is too close to their own trademark, they can initiate an arbitration under the Policy. To prevail in such a UDRP action, Paragraph 4(a) of the Policy requires that the trademark holder – the Complainant – must prove each of the following:
(i) The domain name at issue is identical or confusingly similar to the trademark or service mark for which the Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Because this dispute is between two parties who are United States citizens and would otherwise be subject to jurisdiction before American courts to resolve any disagreement regarding trademark infringement by the domain name in question, the Panel concludes that pursuant to Paragraph 15(a) of the Rules, it is appropriate to apply rules and principles of American trademark law between the parties.
A. Identical or Confusingly Similar
The Complainant adopted the name “Art by God” in the late 1980s, choosing a name both suggestive of its product – natural objects as or more beautiful than man-made art – and one that offered a clever play on words (as in “By God, it’s Art”). Although the Complainant did not receive a USPTO trademark registration until 2002, the Panel finds that Complainant had common law trademark rights in the name at least as of the date that Respondent registered <artbygod.net>.
There is no question that the domain name <artbygod.net> is confusingly similar to the ART BY GOD trademark.
The trademark and the disputed domain name are identical, except for the (necessary) addition of a top level domain (TLD). It is widely accepted that the addition of a generic TLD (.com, .org, .net, .info) does not alter the confusing similarity of a word or word phrase used as a domain name, just as the addition of “800” does not alter the confusing similarity of a word or word phrase used as a phone number. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001) (the TLD is a de minimus difference in considering confusing similarity between trademark and domain name); Multi-Local Media Corp. v. 800 Yellow Book, Inc., 813 F. Supp 199 (E.D.N.Y. 1993) (determining that “800” in 800-Y-E-L-L-O-W-B-O-O-K was a generic term for toll-free calling and did not change confusing similarity to plaintiff’s YELLOW BOOK trademark).
The Panel notes incidentally that the confusion between <artbygod.net> and the Complainant’s ART BY GOD mark and <artbygod.com> domain name is so basic that it would appear even Complainant’s counsel could not keep the two straight when initially working on the matter [Complaint, Annex I].
Accordingly, the Panel finds that the Complainant has established confusing similarity under the first element of the Policy.
B. Rights or Legitimate Interests
The dispute before the Panel is atypical by UDRP standards. Because of conflicting evidence, the Panel has based its decision assuming that [a] the parties operate separate businesses in the same line of commerce, albeit in distinct parts of the country; and [b] the parties operate these businesses with different, but extremely similar trade names.
Making these assumptions for the benefit of the Respondent, the Panel concludes that although the Respondent may have rights and legitimate interests in the business name “Art From God,” the Respondent nonetheless has no rights or legitimate interests in <artbygod.net>.
While the Complainant did not seek any relief in the present action in relation to Respondent’s <artfromgod.com> and <artfromgod.net> domain names, the Respondent apparently believed that Complainant’s counsel has also threatened these two domain names (Response, para. 10). The Complainant’s cease and desist letters to the Respondent have demanded that Respondent drop the “Art from God” name altogether. Therefore, to ensure that this decision is not misconstrued in any subsequent action against the Respondent, some additional discussion is necessary.
1. Respondent’s possible legitimate interests in “Art from God”
The Complainant recognizes that Respondent has or has had a business in Arizona called “Art From God” [Complaint, paragraph 7]. The Panel’s own research was unable to find either a corporation or an Arizona trademark on the respective websites of the Arizona Corporations Commission [http://www.cc.state.az.us] and the Arizona Secretary of State [http://www.azsos.gov/scripts/TNT_Search_engine.dll]. (The Panel conducted a variety of different searches on these websites on September 18, 2006.). Nonetheless, the Respondent’s “Art From God” business is listed as such at www.arizonamerchant.net.
The Respondent was using the “Art From God” name in business no later than August 1, 1998 – over two years before the Complainant applied for USPTO registration of ART BY GOD. Because the Respondent may have adopted the name in good faith and may have used the name continuously in Arizona since then, Respondent may enjoy a limited area defense under 15 USC §1115(b)(5). (Even if the Respondent does not enjoy the limited area privilege under §1115(b)(5) for “Art From God,” the Panel is not aware of any UDRP decisions in which knowledge that defeats a §1115(b)(5) defense automatically negates “rights or legitimate interests” under Rule 4(a)(ii) of the Policy.)
Therefore, for purposes of this decision, the Panel assumes that the Respondent has rights and legitimate interests in “Art from God” as a business name as the result of its good faith adoption and continuous use for a rock shop business.
Given the proximity of the parties’ business names, the most reasonable result is that the Complainant has legitimate interests in ART BY GOD, but not “Art From God” and that the Respondent has legitimate interests in “Art From God,” but neither for “Art by God” nor www.artbygod.net.
2. Absence of legitimate interests in “Art by God”
This conclusion is confirmed by repeated Respondent statements that make it clear that the Respondent does not consider <artbygod.net> to be integral to its online rock shop business. In response to Complainant’s initial demand letter, Respondent stated that it was taking down the webpage at <artbygod.net> and would “be listing it [the domain name] for sale on e-bay” [Complaint, Annex J]. In the same May 7, 2003 communication (dated by Complaint, paragraph 22, not by the document itself), the Respondent characterized itself as “domain buyers and resellers” [Id.]. In its Response, the Respondent characterizes <artbygod.net> as a “parked domain,” not a domain name in active use. In the same document, the Respondent again characterizes itself as a “reseller” of domain names [Id.] All this is evidence that the domain name <artbygod.net> is not considered by the Respondent to be integral to its own rock shop business.
C. Registered and Used in Bad Faith
The Complainant claims that Respondent registered <artbygod.net> “specifically for the purpose of selling the identical products which Complainant was selling for the purpose of profiting from the good will associated with Complainant’s mark and with the ultimate goal of selling the Domain Name to Complainant” [Complaint, paragraph 19]. Either of these purposes could constitute evidence of bad faith under the UDRP.
1. Registration in bad faith
The Complainant alleges that Respondent “was previously familiar with Complainant’s business and trademark” [Complaint, paragraph 19] but makes this allegation “upon information and belief.” [Id.] Were the record shorn of such supporting evidence, the allegation by itself would not be sufficient to prove that the Respondent knew about the Complainant’s trademark at the time the Respondent registered <artbygod.net>.
The Respondent, however, inadvertently provided the evidence that it knew of ART BY GOD at the time of its registration of <artbygod.net>. In its May 7, 2003, response to the Complainant’s demand letter, Respondent characterized its July 8, 2000 acquisition of <artbygod.net> as follows
“The name [artbygod.net] was offered to Gene, was available at the time; and I notified them of this. After a period of time when I re-checked it, I saw that he apparently was not interested in acquiring the name, so I bought it for re-sell” [sic] [Complaint, Annex J].
This is an admission by the Respondent that it was completely aware of ART BY GOD at the time it acquired the domain name in question and that it nonetheless acquired the domain name for resale. The Panel has determined above that the Complainant had common law trademark rights in ART BY GOD by July 2000. Thus, the domain name was acquired in bad faith under the Policy. (This is consistent with the finding in part B immediately above because this goes to what the Respondent knew in July 2000 when it registered <artbygod.net>, but does not evince what the Respondent knew in August 1998 – or earlier – when it adopted the “Art From God” name.)
2. Continued use in bad faith
The Complainant contends that Respondent is trading off the goodwill of Complainant by using <artbygod.net> to direct Internet users to the online rock shop pages Respondent maintains at <artfromgod.com>. There is no question that <artbygod.net> directs Internet users to Respondent’s rock shop pages at <artfromgod.com> (as well as on pages at www.tumbled.com, www.amethyst-geodes.com, and www.net-clickz.com), but Respondent also maintains a very visible disclaimer on the <artbygod.net> web page announcing “[w]e are, in no way affiliated with Art By God Corp. Miami, Fla; or Tucson, Az.”
Unlike other cases where a disclaimer has been found to be deficient in decisions under the Policy, this disclaimer is at the very top of the webpage and very visible. See Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224 (May 12, 2003) (“barely readable” disclaimer on some pages); Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316 (June 9, 2003) (disclaimer “comes after a full page of marketing where the [Complainant] name appears many times . . . [and] after the customer’s ordering option.”).
On the other hand, once the Internet user has passed the <artbygod.net> homepage, the subsequent pages of commercial offerings have no disclaimer – because they are the same pages that can be accessed through <artfromgod.com>. The <artbygod.net> homepage also announces, just prior to the disclaimer, that “[w]e are a division of the Internets largest rock, fossil, crystal; [sic] and rock tumbler dealers!” – a claim that does not easily jibe with Respondent’s repeated characterizations that it is a much smaller business than the Complainant. If the Complainant is as large and as well-known as Respondent claims, then this initial statement may, for some visitors, undermine the effect of the disclaimer.
But in addition to this activity, Respondent continues to seek to sell the domain name to Complainant for “valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name” (Rule 4(b)(i)). On April 27, 2001, the Respondent offered to sell <artbygod.net> to the Complainant for “$5,000.00[,] which is 1/5 the appraised value” [Complaint, paragraph 20 and Annex H]. It is not completely clear from this message whether Respondent believed it was offering the domain name or the website-related business which it had developed.
This ambiguity seems to be clarified by the Response, in which Respondent again characterizes its operation as that of a domain name “reseller” and offers to sell the domain name at a “fair appraised price” [Response, paragraph 2]. There is no reasonable interpretation of this proposal except that Respondent sought to sell the domain name for “valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” By itself, this is sufficient evidence to conclude that the Respondent continues to “use” the domain name in bad faith, pursuant to Rule 4(b)(i).
Having regard to the discussion above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <artbygod.net> be transferred to Complainant.
Dated: September 25, 2006