WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jacques Chardeau, Dominique Chardeau, Olivier Chardeau, Gilles Chardeau, Jean-Jacques Chardeau, Patrick Chardeau, Sybille Guinard née Chardeau, and Florence Bret v. MindViews LLC
Case No. D2008-0778
1. The Parties
The Complainants are Jacques Chardeau, Dominique Chardeau, Olivier Chardeau, Gilles Chardeau, Jean-Jacques Chardeau, Patrick Chardeau, Sybille Guinard née Chardeau, and Florence Bret, all of France, represented by SCP Deflers, Andrieu et Associés, France.
The Respondent is MindViews LLC, Wellington, New Zealand, represented by its own counsel.
2. The Domain Name and Registrar
The disputed Domain Name <caillebotte.com> is registered with Netracorp, LLC dba Global Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 19, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2008, 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. 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 June 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2008. The Response was filed with the Center on June 25, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 4, 2008. 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 Complainants are individuals in France who are descended from Martial Caillebotte, the only brother of the 19th Century French Impressionist painter and art collector Gustave Caillebotte (1848-1894), who died childless. The Complainants claim to be the “only heirs” of Gustave Caillebotte.
Caillebotte’s works, which include La Place de l'Europe, temps de pluie (usually titled in English as “Paris Street, Rainy Day”), Les raboteurs de parquet (The Floor-Scrapers), and Le pont de l'Europe, are featured in art history texts and exhibited in world-famous art museums such as the Musée d’Orsay in Paris and the Art Institute of Chicago. There has been renewed interest in Caillebotte’s painting in recent years. The International Herald Tribune reported on November 6, 2003, for example, that Caillebotte’s Chemin montant was sold at a Christie’s auction for more than US $6.7 million. There is no evidence in the record, however, demonstrating the Complainants’ involvement in such sales and exhibitions.
Mme. Frédérique Lévi Chardeau registered the Domain Name in September 2003 after obtaining an assignment from the previous registrant. This registration lapsed in September 2006, and the Domain Name became available again after the registrar cancelled the registration on May 10, 2007. The Internet Archive Wayback Machine at “www.archive.org” shows that in 2003 the Domain Name simply redirected to “www.artprice.com” (an art market information website), both before and after the assignment to Mme. Lévi Chardeau. There are no archived pages associated with the Domain Name after November 2003. Mme. Lévi Chardeau also registered, on the family’s behalf, the domain names <caillebotte.org>, <caillebotte.info>, and <caillebotte.biz>. There is no evidence in the record or in the Internet Archive that any of these domain names has ever been used for a website.
The Respondent is a privately held New Zealand company. According to the Response, for the past six years the Respondent has “provided information and consultation services for numerous organizations regarding Internet infrastructure and architecture,” including web hosting and domain name registration.
The Respondent acquired the Domain Name at auction from a third-party “acquisition service” that apparently registered the Domain Name automatically when it became available in May 2007 following non-renewal and the expiration of the registrar’s Redemption Grace Period. The Respondent states that its plan was to use the Domain Name in connection with a new commercial service: registering family names for “vanity Internet services” such as email addresses, blogging, and hosted websites.
The Complainant furnished a printout of the parking website to which the Domain Name resolved in October 2007. The website, available in English and French versions, featured links with such diverse labels as “Art Prints”, “Auto Painting”, “Art Gallery”, “Postcard Printing”, “Symptoms of Depression”, and “Graphic Design School”. The Respondent acknowledges that the Domain Name was parked for a time but says that this was done by the registrar during the “assignment period” and denies that the Respondent received any compensation for this temporary advertising use of the Domain Name.
The Domain Name currently resolves to the Respondent’s website advertising its own commercial offerings, including “interactive business solutions”, “site design and development”, “web services management”, “Internet access”, “web production / managed hosting”, “DNS, Email, FTP”, and “search engine marketing / promotions”. The website does not advertise family-name email domains and websites as an offering.
The Domain Name was registered using a domain privacy service, PrivacyProtect.org, operated by the Registrar. Following unsuccessful attempts to contact the Respondent through this service, the Complainants filed a UDRP Complaint with the Center against PrivacyProtect.org. The Registrar then identified the Respondent as the registrant, and counsel for the Complainants exchanged several emails with the Respondent in April 2008; these are included in the record of this proceeding. The Complainants demanded a transfer of the Domain Name but offered to discuss settlement. The Respondent sought approximately US $4,700 from the Complainants, representing the price paid for the Domain Name at auction, registration fees, email hosting, and other “out of pocket expenses”. The Complainants declined and filed the current Complaint.
5. Parties’ Contentions
The Complainants claim rights in the “unregistered trademark” CAILLEBOTTE and assert that the Respondent has no rights or legitimate interests in the identical Domain Name.
The Complainants assert bad faith, inferring that the Respondent registered the Domain Name to prevent the Complainants from renewing their registration and to profit from the CAILLEBOTTE mark. As indications of bad faith, they point to the use of a “massive automatic registration” system to acquire the Domain Name when it expired, as well as the Respondent’s resort to a domain privacy registration service, making it difficult to identify and contact the registrant. The Complainants also argue that the parking website to which the Domain Name formerly resolved represents an attempt to profit from the fame of the CAILLEBOTTE mark through third-party advertising revenues.
The Respondent challenges the existence of a CAILLEBOTTE trademark.
The Respondent says it has made demonstrable preparations to use the Domain Name in connection with a bona fide service offering – “vanity” email domains and hosted websites based on family names. The Respondent denies prior knowledge of a CAILLEBOTTE mark and also denies any intent to exploit another party’s trademark.
The Respondent requests a finding of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainants offer genealogical evidence and birth certificates to prove that they are the “heirs” of the artist Gustave Caillebotte. Actually, what the evidence demonstrates is that the Complainants are descendants of the only sibling of Gustave Caillebotte, who died childless more than a century ago. Nothing in the Complaint or in the record demonstrates that the Complainants have inherited relevant property, such as trademarks or other intellectual property rights, from Gustave Caillebotte.
Instead, the Complainants assert that under “French law” they have, as heirs, the right to use the “Caillebotte” name (although none of them bears that surname) and the right to “defend it from any unfair use by any third party.” The Complainants do not specify the applicable provisions or doctrines of the Civil Code or other sources of French law that allow them to effectively control any commercial use of the family name “Caillebotte” as an “unfair use”.
The Complainants further argue that the name “Caillebotte” is an “unregistered trademark which automatically refers to the painter Gustave Caillebotte.” They mention the success of Gustave Caillebotte as a painter and art collector and assert that because he became “worldwide famous”, “his name can be analysed as an unregistered trademark.” They furnish a printout of the first page of search results produced by the query “caillebotte” on Google France, all of which refer to the painter Gustave Caillebotte. Of course, the family name “Caillebotte” still exists, and subsequent pages of the Google search results ultimately display links to websites concerning persons other than Gustave Caillebotte. There is, for example, a contemporary French actor by the name of Jean-Michel Caillebotte.
The fact that Gustave appears to be the most famous Caillebotte to date does not resolve the question of whether the family name Caillebotte has acquired a secondary meaning signifying the source of goods or services – i.e., whether it serves as a “trademark or service mark” within the meaning of the Policy, paragraph 4(a)(i) of the Policy. The Policy does not expressly require that the mark be registered, but UDRP panels typically require a complainant to demonstrate that an unregistered, common-law mark (including one based on a personal name) has acquired a secondary meaning in commerce as a distinctive identifier associated with the complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions secs. 1.6, 1.7, available online at http://wipo.int/amc/en/domains/search/overview/index.html#16.
The Complaint attaches four domain name decisions finding that a personal name, although not registered as a mark, nevertheless satisfied the Policy requirement for a trademark or service mark:
- Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (Ms. Roberts, a “famous motion picture actress” in the United States of America, had common-law trademark rights in her name, “Julia Roberts”)
- Jeannette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (Ms. Winterson, “a well-known author” in England, established that her name was widely associated with literary and media works and could be protected under English law, not in a trademark infringement action, but in a common-law action for “passing off” goods with a false source attribution)
- Estate of Tupac Shakur v. Shakur Info Page, Case No. AF-0346 (eResolution) (the estate of an “internationally known ‘Hip-Hop’ musician” established that he had developed such a reputation in his name as a musician that he had acquired common-law trademark rights in the name, which were passed on as an asset to his estate on his death)
- Ada-Michaela Ciobanu contre Marcel Mot, WIPO Case No. DCp006-0009 (in a case decided under the Rules of Procedure for .ch and .li domain name disputes, the panel decided that the widow of a painter and sculptor demonstrated a legal right under Swiss law to protect the artist’s family name as a mark (signe) associated with his works).
By contrast, in David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514, the panel concluded that a business executive in the publishing industry did not demonstrate that his personal name was used as a mark in trade or commerce. See also The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (“The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services”).
In Ada-Michaela Ciobanu, supra, it is notable that the artist’s widow, the complainant, promoted the artist’s works after his death and prepared a portfolio of his works. The panel was able to conclude both that the artist’s name was associated with goods in commerce and also that the widow had an interest in the commerce associated with his name. The same was true for the estate that controlled interests in the musical and literary works of the deceased Hip-Hop artist Tupac in Estate of Tupac Shakur, supra.
In the present case, the name “Gustave Caillebotte” is certainly associated with paintings that he produced more than a century ago, and at least some of those works are still bought and sold and therefore represent goods in commerce. The slender record in this proceeding does not establish, however, that the painter’s family name could be protected as an unregistered, common-law trademark under the law of France or New Zealand.
In any event, the Complainants - though they may be descendants of Gustave Caillebotte’s only heir -have not shown that they are in any way involved with commerce associated with the “Caillebotte” name in the 21st Century or have any legally protected interest in the commercial use of the “Caillebotte” name. There is no evidence in the record, for example, indicating that the Complainants buy, sell, or promote the works of Gustave Caillebotte, license reproductions of his works, or receive royalties from third parties exhibiting or reproducing his works. The Complainants emphasize that a family representative has registered several domain names using the name “Caillebotte”, but the Complainants have not used these domain names for a website, commercial or otherwise, relating to Gustave Caillebotte.
Thus, the Complainants have not established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
Given the Panel’s finding on the first element of the Complaint, it is unnecessary to assess the Respondent’s rights or legitimate interests in the Domain Name.
It is also unnecessary to weigh the Complainants’ allegations of bad faith, since the Complainants have not established their trademark rights under the first element of the Complaint.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules do not provide for monetary remedies or specific relief in such a case.
While the Panel concludes that the Complaint in this instance is not well-founded, the Panel does not find that the Complainants filed it in bad faith or primarily to harass the Respondent. The Respondent argues that the Complainants had “full knowledge of Respondent’s unassailable right to legitimate interest” and “clear lack of bad faith registration and use”, but the limited email correspondence preceding the Complaint hardly warranted such a clear conclusion. The Complainants have long asserted their rights to the Caillebotte name – for example, in pressing a previous registrant of the Domain Name to assign it to a family representative as early as 1997, and they appear to have held a sincere belief that the name would be treated as a mark for purposes of the Policy, citing UDRP decisions involving domain names based on the names of celebrities. Their arguments have not prevailed in this proceeding, but the Panel does not find that their conduct meets the definition of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: July 18, 2008