WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Athenaeum: The Center for Architecture, Art, and Urban Studies v. Onur Mustak Cobanli

Case No. D2016-1055

1. The Parties

The Complainant is Chicago Athenaeum: The Center for Architecture, Art, and Urban Studies of Galena, Illinois, United States of America, represented by Reinhart Boerner Van Deuren P.C., United States of America.

The Respondent is Onur Mustak Cobanli, d/b/a OMC Design Studious SRL of Como, Italy, represented by Steven Rinehart, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <good-design-award.com>, <gooddesignaward.com> and <gooddesignmark.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2016. On May 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date 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” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. The Response was filed with the Center on June 15, 2016.

The Center appointed John Swinson as the sole panelist in this matter on June 30, 2016. 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 Complainant is the Chicago Athenaeum: The Centre for Architecture, Art, and Urban Studies. It is an international museum of art and design.

Each year, the Complainant offers and facilitates the Good Design Awards Program. This program was founded in Chicago in 1950 and honors the yearly achievements of the best industrial and graphic designers and world manufacturers for their pursuit of extraordinary design excellence.

The Complainant owns a registered trade mark for GOOD DESIGN, which was filed on May 19, 2010 and registered on January 4, 2011 in the United States (the “Trade Mark”). The Complainant uses the Trade Mark to promote the Good Design Awards Program.

The Respondent is Onur Mustak Cobanli, an individual from Italy who owns and operates OMC Design Studios SRL, an industrial design firm.

The Respondent registered the Disputed Domain Names <gooddesignmark.com>, <gooddesignaward.com> and <good-design-award.com> on December 7, 2010, January 14, 2012, and July 1, 2012, respectively.

The websites at the Disputed Domain Names are identical. They promote a different awards competition named the Good Product Design Award. This competition is described on the websites at the Disputed Domain Names as being organized by A’ Design Award and Competitions, which is an international design competition founded in 2009 by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Trade Mark has been in use since at least as early as 1950. The Complainant has invested a substantial amount of money and effort in promoting its design awards under the Trade Mark, and as a result, has developed significant goodwill, recognition and reputation in the Trade Mark.

The Disputed Domain Names are nearly identical to the Trade Mark. The Disputed Domain Names contain the Trade Mark with the addition of hyphens or generic words that do not materially change the impression of the Disputed Domain Names or distinguish them from the Trade Mark.

Rights or Legitimate Interests

The Respondent is not licensed by the Complainant and has not obtained permission from the Complainant to use and/or register any domain names which incorporate the Trade Mark.

The Respondent has actual or constructive knowledge of the Trade Mark as a result of the Complainant’s common law use of the Trade Mark since 1950. At the time the Respondent registered the earliest of the Disputed Domain Names, on December 7, 2010, the Complainant had been using the Trade Mark for over 50 years, and the Complainant had filed its application for the word mark GOOD DESIGN in the United States. Searches would have revealed the Complainant’s expired and pending registrations for the Trade Mark. The Complainant’s application for the Trade Mark in 2010 was based on actual use in commerce since 1991.

The Disputed Domain Names are intended to misdirect and confuse participants in the Respondent’s awards into believing they are participating in the Complainant’s awards.

Registered and Used in Bad Faith

In registering the Disputed Domain Names, the Respondent breached the warranty contained in the registration agreements regarding infringement of third party rights, as the Respondent was or should have been aware of the Trade Mark. Under trade mark law in the United States, registration of a trade mark constitutes constructive notice of the trade mark.

The Complainant’s use of the Trade Mark since 1950 and its international recognition are evidence that the Respondent knew or should have known of the Trade Mark.

As the Respondent had no rights in the Disputed Domain Names and knew or should have known of the Trade Marks, the Respondent registered the Disputed Domain Names in bad faith for the purpose of preventing potential participants in the Complainant’s award from entering that award. The Respondent registered the Disputed Domain Names to divert, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Names are not confusingly similar to the Trade Mark. While the Disputed Domain Names incorporate the Trade Mark, they are not identical to it. The Disputed Domain Names contain the non-generic terms “award” and “mark”, which distinguish them from the Trade Mark. These terms are the dominant elements of the Disputed Domain Names, and as such obviate any confusing similarity.

The Trade Mark is generic or descriptive and subject to extensive third party use.

Rights or Legitimate Interests

The Respondent has legitimate rights in the Disputed Domain Names. Where a trade mark is composed of generic or common words or phrases, the relevant domain name is being used because of its value as a common term, and not for its trade mark value. The Trade Mark provides no rights if found to be generic by the Panel. Use of a common word domain name which relates to the descriptive or generic meaning of the domain name constitutes use in connection with a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the Policy, and a legitimate interest in the relevant domain name.

Since registering the Disputed Domain Names, the Respondent has spent time and money programming, designing and promoting the websites at the Disputed Domain Names and social media sites linking to the Disputed Domain Names, and also in creating industry contacts and good will in the Respondent’s awards.

Registered and Used in Bad Faith

The Respondent registered and is using the Disputed Domain Names in good faith.

The Respondent had no knowledge of the Complainant prior to notification of this dispute. The Complainant is required to show that the Respondent was clearly aware of the Complainant’s product and that the clear aim of the Respondent in registering the Disputed Domain Names was to take advantage of confusion between the Disputed Domain Names and the Trade Mark.

The Trade Mark was registered after the Respondent began using the expression “good design award” in 2009. This expression is descriptive of a design which is good.

The Complainant has taken no action in relation to the Disputed Domain Names in the four to six years since the Respondent registered the Disputed Domain Names, or the seven years since the Respondent began organizing his design competition.

Reverse Domain Name Hijacking

The Complainant’s claims are baseless and the Complainant has abused this administrative process in an attempt to rob the Respondent of the Disputed Domain Names, which the Complainant knows are merely descriptive. The Complaint is an attempt to seize generic domain names with no right to do so.

The Complainant has misrepresented material facts to the Panel, including in relation to the status of prior trade marks for GOOD DESIGN owned by the Complainant, as well as in stating that it has used the Trade Mark since 1950 (when the registration for the Trade Mark states that the first use in commerce was in 1991).

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.

The Disputed Domain Names wholly incorporate the Trade Mark, and add the terms “award” and “mark”. Each of these terms is descriptive, and “award” can be readily associated with the use made by the Complainant of the Trade Mark. As such, the Panel finds that the Disputed Domain Names are confusingly similar to the Trade Mark.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.

The Complainant submits that the Respondent is not licensed by the Complainant, and has not obtained permission from the Complainant to use or register any domain names which incorporate the Trade Mark.

The Complainant submits that the Respondent had actual or constructive knowledge of the Trade Mark at the time he registered the Disputed Domain Names, and he did so to misdirect and confuse participants in the Respondent’s awards into believing they were participating in the Complainant’s awards.

Such use would not confer rights or legitimate interests under the Policy.

The Respondent submits that he is using the Disputed Domain Names, which consist of generic, dictionary words, in a way that relates to their descriptive or generic meaning, and that this constitutes use in connection with a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the Policy.

The Panel is inclined to agree with the Respondent, but is hesitant to do so given the Complainant’s long history of use of the Trade Mark. In any event, in light of the Panel’s finding in relation to bad faith below, the Panel is not required to conclusively determine whether or not the Respondent has rights to or a legitimate interest in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Respondent registered the Disputed Domain Names on the following dates:

- <gooddesignmark.com> - December 7, 2010;

- <gooddesignaward.com> - January 14, 2012; and

- <good-design-award.com> - July 1, 2012.

When the earliest of the Disputed Domain Names was registered, on December 7, 2010, the Complainant had filed an application for GOOD DESIGN with the United States Patent and Trademark Office, but this application had not yet been granted. The “prior” trade marks referred to by the Complainant had both expired.

As submitted by the Respondent, the Complainant has not provided any actual evidence which demonstrates to the Panel that the Respondent knew or should have known of the Trade Mark at the time he registered the Disputed Domain Names, or the extent of any common law rights that the Complainant may have during the period of time in which there were no trade mark registrations. The Complainant relies on the registration of the Trade Mark and the long history of the Complainant’s competition as the basis on which to impose constructive knowledge of the Trade Mark on the Respondent. In the Panel’s view, these factors are not sufficient.

The Complainant has provided no evidence to show that the Respondent was or should have been aware of the Trade Mark at the time he registered the Disputed Domain Names. The Complainant has not provided evidence to demonstrate that the Trade Mark is internationally known, and therefore would likely be known by the Respondent.

Further, as submitted by the Respondent, the Trade Mark consists of generic terms. The Panel considers there is no sufficient basis to support a finding that the Respondent was or should have been aware of the Trade Mark in these circumstances.

The Respondent submits that he had not heard of the Complainant or the Trade Mark at the time he registered the Disputed Domain Names. Given the lack of evidence to the contrary, the Panel accepts this submission.

The Panel finds that the Disputed Domain Names were not registered in bad faith, and as such the Complainant does not succeed on the third element of the Policy.

D. Reverse Domain Name Hijacking

The Respondent has asked that a finding of reverse domain name hijacking (“RDNH”) be made against the Complainant. While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified.

The Respondent has pointed to a number of factors which could lead a panel to a finding of RDNH. However, the Complainant still produced arguments for each element of the Complaint and succeeded on the first element. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: July 14, 2016