WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ColArt Fine Art & Graphics Limited v. Michael Wilcox School of Colour.
Case No. D2000 1090
1. The Parties
Complainant is ColArt Fine Art & Graphics Limited of Whitefriars Avenue, Wealdstone, Harrow, Middlesex HA3 5RH.
Respondent is Michael Wilcox School of Colour of Gibbet Lane, Whitchurch, Bristol, BS14 0BX.
2. The Domain Name(s) and Registrar(s)
Domain Name: "winsorandnewton.com".
Registrar: Internet Names WorldWide
3. Procedural History
The Complaint was filed on August 31, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was October 25, 2000.
4. Factual Background
The Complainant is the owner of registered trademarks for WINSOR & NEWTON worldwide, including the USA and the United Kingdom.
5. Partiesí Contentions
This complaint states:
Complainant ColArt owns the renowned art supply business identified by the trademark WINSOR & NEWTON. The renowned English landscape artist J.M.W. Turner once commented to William Winsor, the co-founder of Winsor & Newton, that: "Your business, Winsor, is to make colours. . . mine is to use them."
Since 1832, Winsor & Newton has been making colours as the leading manufacturer and supplier of quality fine art supplies. As a result of its long-term, world-wide use, Winsor & Newton has developed substantial fame and goodwill associated with its WINSOR & NEWTON trademarks that have been compared to the fame of Coca-Cola in soft drinks.
Winsor & Newton has consistently led the art supply industry, not only in volume of sales, but also in the development of new products and colours that have shaped the way art is made.
Art supplies sold under the marks WINSOR & NEWTON are currently available at retail locations worldwide, including locations in the United Kingdom, the United States, Canada, Africa, Asia, Australia, New Zealand, Latin America and the Middle East. A full range of artistsí supplies is offered under the mark WINSOR & NEWTON, including, among others, paints, books and brochures relating to art and art techniques, pens, pencils, crayons, brushes, palettes, easels, erasers, paper, painting canvas, tracing cloth, painting and drawing boards, portfolio cases, dyes, charcoals, modeling clay, wood, paste and wax.
Over the years, Winsor & Newton has had a strong relationship with artists of all levels and abilities and has assumed a prominent role as a supporter of the arts. This sponsorship has resulted in press coverage as well as the prominent display of the mark WINSOR & NEWTON in conjunction with art exhibits. Recently, Winsor & Newton sponsored "The Winsor & Newton Worldwide Millennium Painting Competition." Over 22,500 artists participated in the competition, which culminated in the exhibit "Our World in the Year 2000," displayed at the Mall Galleries in London, the World Trade Centre in Stockholm, and the United Nations in New York.
Complainant currently owns the following U.S. federal trademark registrations:
● WINSOR & NEWTON, Reg. No. 1,140,150, for "paints, colors, paint pigments, oils, varnishes and paint thinners, all for use by artists" and "books relating to art; printed guides to art materials and on the use of art materials; artistsí materials - namely, pens; pencils; crayons; brushes; palettes; easels; rubber erasers; paper; painting canvas; tracing cloth; painting and drawing boards, rulers and pins; pantographs; modeling clay, wood, paste and wax" registered on October 7, 1980 with a first use date of December 31, 1892;
● WINSOR & NEWTON & Design, Reg. No. 1,621,854, for "artistsí colors and paints; dye stuffs for artistic purposes; varnishes and natural resins for artistsí use" and "artistsí papers and boards; artistsí canvas and canvas boards, pencils, charcoal sticks for drawing and sketching, crayons, pastels, pens, erasers, artistsí brushes, palettes, mixing trays and cups, palette knives, drawing boards, easels, rulers and t-squares, mahl sticks, artistsí sponges, artistsí portfolios, ink for drawing and writing, pencil sharpeners; publications and printed matter, namely, brochures, pamphlets and books relating to artistic techniques and materials and to artists and their work; modeling clay and modeling paste" registered on November 13, 1990;
● WINSOR & NEWTON & Design, Reg. No. 2,202,460, for "articles made of leather or imitation leather or plastics, namely, attachť cases, backpacks, school bags, school book bags, shoulder bags, documents cases, fanny packs, waist packs, satchels, holdalls, briefcases, wallets, envelopes made of leather or imitation, pouches made of leather or imitation leather, briefcase-type portfolios for carrying artwork; umbrellas and umbrella covers" registered as of November 10, 1998;
● WINSOR & NEWTON, Reg. No. 2,196,965, for "articles made of leather or imitation leather or plastics, namely, attachť cases, backpacks, school bags, school book bags, shoulder bags, documents cases, fanny packs, waist packs, satchels, holdalls, briefcases, wallets, envelopes made of leather or imitation, pouches made of leather or imitation leather, briefcase-type portfolios for carrying artwork; umbrellas and umbrella covers" registered on October 20, 1998;
Complainant also owns trademark registrations in the mark WINSOR & NEWTON worldwide, including in particular, a number of trademark registrations for the mark WINSOR & NEWTON in Great Britain.
The domain name registered by Respondent is either identical or confusingly similar to Complainantís trademarks. The relevant portion of the domain name "winsorandnewton.com" is identical and confusingly similar to the Complainantís WINSOR & NEWTON marks.
There is no evidence that Respondent has any rights or legitimate interests in the domain name. Respondent is not a licensee or otherwise permitted to use Complainantís trademarks. A search of the U.S. Patent & Trademark Office Trademark Text and Image Database did not disclose that Respondent owned any trademark registrations or applications for the trademark "winsorandnewton." Further, "winsorandnewton" is not the legal name of the Respondent, Michael Wilcox School of Colour.
There is no evidence that Respondent has used the domain name in connection to a bona fide business. The domain name "winsorandnewton.com" is used as a link to the business operated by Respondent at "schoolofcolor.com". The website "schoolofcolor.com" is used to promote and sell art supplies. The use of a domain name incorporating anotherís trademark to direct users to a competing website is not a legitimate use. See Expedia, Inc. v. European Travel Network, Case No. D2000-0137 (WIPO Apr. 18, 2000)
Respondent has registered and used the domain name "winsorandnewton.com" in bad faith. Respondent has used the domain name registration to intentionally attract, for commercial gain, Internet users to his website. At all times since Complainant became aware that "winsorandnewton.com" was registered, the domain name resolved to the website located at "schoolofcolor.com". This website is operational and accepting orders for art supplies and instructional materials from customers located in the United States, the United Kingdom and Australia.
A comparison of Respondentís website at "schoolofcolor.com" and Complainantís official website at "winsornewton.com" demonstrates that Respondentís business is in direct competition with WINSOR & NEWTON art supplies. Both sites are a resource for artists, offering a range of products and information. Both sites provide information on their respective products, including a directory of retail stores where the products are sold, and both offer instructions on how to paint, including instructions on techniques and the use of the respective supplies. Complainantís website has received favorable press coverage as a well-designed site for those seeking instruction on painting.
Given the fame of the WINSOR & NEWTON mark and the fact that Respondent is involved in a competing business, it is inconceivable that Respondent was unaware of Complainantís rights in the mark. Indeed, Respondent has acknowledged that the existence of art supplies sold under the WINSOR & NEWTON marks and the fact that these goods are a direct competitor by posting a letter from a purported consumer of Michael Wilcox World of Colour paints: "I opened my paints today and was distressed to see that, unlike my Winsor & Newton, Cotmam or Rowney paints, three of the principal colours have WARNING labels. Only one colour is labelled as Non-Toxic. I am very disappointed . . ." In response, "M.W." answered: "Thank you for your recent letter concerning the health warning labels which we apply to our paints . . . If your Winsor & Newton or Rowney paints are of artist quality they will have exactly the same ingredients as our paints. The question that I feel you should then be asking is not why do we have a full health warning on each tube, and they do not?"
Respondentís actions clearly indicate an awareness of the WINSOR & NEWTON marks and a bad-faith intent to use the domain name "winsorandnewton.com" to divert customers to his own art supply business. It is highly likely that a consumer looking for a WINSOR & NEWTON website would try "winsorandnewton.com". Respondentís actions are a blatant attempt to take advantage of any confusion resulting from this search strategy. Not surprisingly, the use of a domain name as a link to a competing web site has been recognized as evidence of bad faith. See Expedia, Inc. v. European Travel Network, Case No. D2000-0137 (WIPO Apr. 18, 2000); TRW Inc. v. Autoscan Inc., Case No. D2000-0156 (WIPO Apr. 24, 2000); Zwack Unicum Rt. v. Duna, Case No. D2000-0037 (WIPO March 10, 2000)
As further evidence of bad faith, Respondent has indicated his intention to sell the domain name "winsorandnewton.com" to a third party for a price far in excess of his out-of-pocket costs for obtaining the registration.
On June 29, 2000, counsel for Complainant sent a cease-and-desist letter to Respondent. Respondent did not respond to Complainantís letter. In a further attempt to resolve the issue, counsel for Complainant telephoned Respondent. In a phone conference between counsel for Complainant and Michael Wilcox of Respondent, Mr. Wilcox expressed his intention of keeping the domain name, asserting that he could do whatever he wanted with the domain name and that he had a party in the Far East who was interested in purchasing the domain name registration for a substantial sum. In addition, he stated that he has a lot of traffic to his web site and that he welcomed any publicity that a dispute would cause.
An offer to sell a domain name registration to the trademark owner or a third party for an excessive price is one of the hallmarks of a cybersquatter and has been cited in a number of WIPO decisions as evidence that a domain name has been registered and used in bad faith. See, e.g., Wrestling Fedín Entertainment, Inc. v. Bosman, Case No. D99-0001 (WIPO Jan. 14, 2000) (offer to sell domain name for $1,000 was evidence of bad faith); Stella Díoro Biscuit Co. v. Patron Group, Inc., Case No. D2000-0012 (WIPO Feb. 17, 2000) (offer to sell domain name for $2,300 was evidence of bad faith). Although the specific amount contemplated by Respondent is not known, "substantial amounts" would clearly be in excessive of Respondentís out-of-pocket costs.
In addition, the telephone conversation between counsel and Mr. Wilcox is further proof that Respondent was aware of Complainantís WINSOR & NEWTON marks and intentionally registered the domain name "winsorandnewton.com" to take advantage of the fame of these marks and divert customers to his competing business.
The Respondent has not filed a Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is 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 domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
It is prima facie obvious that the Domain Name is virtually identical to the Complainantís WINSOR & NEWTON mark and, therefore, that they are confusingly similar. Ampersands cannot be registered as domain names and therefore WINSORANDNEWTON is the closest equivalent to WINSOR & NEWTON possible in the context of a domain name.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.
C. Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"[the Respondent] has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name"; and
"[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor"; and
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location".
In the absence of a Response from the Respondent, there appears to be no explanation other than that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its competing site, to disrupt the business of the Complainant and/or to profit by eventual sale of the name to the Complainant or another third party for profit.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name "WINSORAND NEWTON.COM" BE TRANSFERRED to the Complainant.
Dated: October 12, 2000