WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly
Case No. D2014-0780
1. The Parties
The Complainants are Mr. Willem Vedovi of Merchtem, Belgium and Galerie Vedovi S.A. of Bruxelles, Belgium, represented by Berenboom-Sukennik-Gilles-Joachimowicz-Isgour-Fonteyn, Belgium.
The Respondent is Domains By Proxy, LLC of Scottsdale Arizona, United States of America / Jane Kelly of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Names and Registrar
The disputed domain names <thetruthaboutwillemvedovi.com>, <vedovi-gallery.com> and <willemvedovi.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 12, 2014. On May 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on May 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on May 15, 2014.
The Center verified that the Complaint together with the amended 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 May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 23, 2014. 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.
The Respondent emailed the Panel on June 25, 2014, setting out her arguments on why she believed that the Complaint should be denied.
4. Factual Background
The first Complainant is Willem Vedovi, an individual based in Belgium, who is the Chief Executive Officer and President of the Board of Directors of the second Complainant (Galerie Vedovi S.A.). The second Complainant is in the business of selling art and operating an art gallery.
The Respondent is Jane Kelly, an individual based in Scotland, who registered the Disputed Domain Names through the use of Domains By Proxy, LLC (a proxy service provider). The Disputed Domain Names were registered on September 16, 2013.
5. Admissibility of Respondent’s June 25, 2014 email
With regard to the email sent by the Respondent to the Panel on June 25, 2014, the Panel notes that under the Rules, it has the power: (a) to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules, subject to treating the parties equally and giving them a fair opportunity to present their case; and (b) to determine the admissibility, relevance, materiality and weight of any evidence.
The Respondent’s email was sent 16 days after the deadline to submit a Response had expired, and 2 days after the Panel had been appointed. No reasons were provided by the Respondent regarding her failure to submit a formal Response by the deadline. However, in the absence of any evidence of undue prejudice to the Complainants and given that the delay on the part of the Respondent was not in ordinate, the Panel in accordance with paragraph 10 of the Rules chooses to exercise her discretion in the present case to take into account the Respondent’s email.
6. Parties’ Contentions
In summary, the Complainants contentions are as follows:
(1) The Complainants have common law or unregistered trade mark rights in the first Complainant’s personal name WILLEM VEDOVI and VEDOVI, as they have been using such marks in relation to the provision of art gallery services since 1995.
(2) The Disputed Domain Names are confusingly similar to the Complainants’ WILLEM VEDOVI and VEDOVI marks;
(3) The Respondent is not using the Disputed Domain Names (or making any preparations to use them) for a bona fide offering of goods or services. The Respondent is also not commonly known by the Disputed Domain Names and has not acquired any trade mark rights corresponding to the Disputed Domain Names.
(4) The Complainants have not granted the Respondent any licence to use their WILLEM VEDOVI or VEDOVI marks.
(5) The Respondent is not making a legitimate or fair use of the Disputed Domain Names. The Respondent is using the Disputed Domain Names to mislead users into believing that they lead to the official website of the second Complainant, by showing the second Complainant’s contact details on the websites to which they resolve. The Disputed Domain Names are also being used to make defamatory remarks regarding the Complainants and to persuade users not to do business with the Complainants. The Respondent’s intention is to tarnish the Complainants’ name and business.
(6) Prior decisions have found that deceptive use of another’s mark as part of a domain name is rarely if ever likely to grant a right or legitimate interest in the domain name. Other decisions have also found that the right to criticize does not extend to include registering a domain name that is identical or confusingly similar to the right holders’ marks.
(7) The Disputed Domain Names were registered and are being used to disrupt the Complainants’ business. The Respondent registered the Disputed Domain Names with the Complainants in mind, in order to launch a campaign against the Complainants and to disrupt and damage the Complainants’ business.
In the Respondent’s email to the Panel sent on June 25, 2014, the Respondent expressly states that she does not deny creating the Disputed Domain Names and resulting websites, nor does she deny that they are likely to create a bad impression of the Complainants’ business practices. The Respondent alleges that the accusations made on the websites to which the Disputed Domain Names resolve are not lies, and that the Complainants have allegedly defrauded many customers and have participated in other illegal activities. The Respondent relies on the free speech argument, and states that she is willing to amend the websites to comply with relevant intellectual property laws.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 by the Respondent in bad faith.
The Panel feels it prudent to clarify that the Panel is not in a position to provide any legal advice to the parties on how they may use and operate domain names and websites in accordance with the law. The current proceedings are also not an appropriate forum to determine the truth behind the Respondent’s allegations. The Panel’s determination and assessment is based solely on the Policy.
A. Identical or Confusingly Similar
The Complainants claim to have common law or unregistered rights in WILLEM VEDOVI and VEDOVI.
It is well established that the Policy protects rights in unregistered marks (see Seek America Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322), and that common law or unregistered trade mark rights can be found to exist in a personal name, where the personal name has been used in trade or commerce (see Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874).
The factors that may be taken into account when determining whether or not a complainant has any common law or unregistered trade mark rights in a personal name include: (a) whether the name is common (which reduces the possibility of acquiring secondary meaning or distinction); (b) whether the name was used in connection with goods or services in a commercial context; and (c) the time period over which the name was so used (see Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215). In general, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required.
The Panel accepts that the Complainants have unregistered trademark rights in the mark GALERIE VEDOVI, but not in WILLEM VEDOVI. This is based on the evidence provided by the Complainants that the second Complainant has been operating its art gallery business since 1995 under the GALERIE VEDOVI mark.
However, the Panel does not find that the first Complainant’s personal name was used to such an extent that it has become an indication of the services he supplies. The Complainants have submitted no such evidence to establish that WILLEM VEDOVI has been used in a commercial context to such an extent that it acts as a distinctive identifier of goods or services offered by the Complainants, or that the name “Willem Vedovi” is an uncommon name. The Complainants evidence merely shows that the Complainants have used GALERIE VEDOVI (not Willem Vedovi) to identify the services provided by them.
The <vedovi-gallery.com> Disputed Domain Name incorporates the Complainants’ GALERIE VEDOVI mark in its entirety, save that it uses the English word “gallery” rather than the French word “galerie”. It is well-established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762). As such, the Panel finds that <vedovi-gallery.com> is confusingly similar to the Complainants’ GALERIE VEDOVI mark.
With regard to the Disputed Domain Names <thetruthaboutwillemvedovi.com> and <willemvedovi.com>, the Panel finds, on balance, that they are sufficiently similar to the Complainants’ GALERIE VEDOVI mark as both incorporate the most distinctive element of Complainants’ unregistered mark, i.e. VEDOVI. Additionally, the way in which the Disputed Domain Names are being used is helpful to asses confusing similarity. See e.g. Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641.
The Panel is therefore satisfied that paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is it associated in anyway with the Complainants that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainants’ GALERIE VEDOVI mark. The Respondent has also provided no evidence to demonstrate that it has become commonly known by the Disputed Domain Names. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Names.
The Disputed Domain Names are used for the purposes of criticizing the Complainants. They resolve to websites (“Websites”) that include a webpage alleging that the Complainants trade in fake or fraudulent artwork and are connected with organized crime. A contact page is also included in the Websites, which lists the address of and includes a map to the second Complainant’s address. The contact pages also include statements such as: “find us…then avoid us!” and “stop by or call”.
In circumstances where a disputed domain name that is identical or confusingly similar to a mark is being used for genuine noncommercial free speech, then there are two main views, which are set out in paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
The first view is that a respondent’s “right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2”. The second view is that “[i]rrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial” (“View Two”).
The Panel finds that the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> may mislead Internet users into believing that they are associated with the Complainants and/or will resolve to the official website of the Complainants. This is because these Disputed Domain Names are confusingly similar to the Complainants’ GALERIE VEDOVI mark and they do not include any additional word or term that may identify themselves as resolving to a criticism website. As a result, the Panel finds that the Respondent is using the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> to falsely convey an association with the Complainants in order to divert Internet users to the Websites. By the time Internet users reach the Websites, they have already been exposed to the misrepresentation inherent in the Disputed Domain Names.
As to <thetruthaboutwillemvedovi.com>, the Panel finds that the Respondent has a legitimate interest in using the trademark as part of the Disputed Domain Name for criticism as such use appears to be fair and non-commercial.
Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in relation to the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com>, but not in relation to <thetruthaboutwillemvedovi.com>.
C. Registered and Used in Bad Faith
The following discussion is only in respect of whether or not the Complainants have succeeded in satisfying the third element with regard to the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com>. As the Panel has found that the Complainants failed to satisfy the second element in relation to the Disputed Domain Name <thetruthaboutwillemvedovi.com>, the Panel does not need to consider whether or not the Complainants succeeded in satisfying the third element in relation to it.
A criticism website or a website that contains derogatory comments or information about a complainant does not in itself constitute bad faith. The circumstances of each case need to be considered.
The Respondent’s motivation for registering the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> is clear; they were registered for the purpose of criticizing the Complainants and their business. The Disputed Domain Name <vedovi-gallery.com> and <willemvedovi.com> are confusingly similar to the Complainants’ GALERIE VEDOVI mark, and they do not incorporate any other words to indicate that they are not associated with the Complainants and/or that they resolve to a criticism website. This therefore supports a presumption that the Respondent registered <vedovi-gallery.com> and <willemvedovi.com> to mislead users into believing that they and the Websites to which they resolve were endorsed or operated by the Complainants, in order to thereby divert users who are searching for the Complainants. The Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> are being used to resolve to Websites that criticise the Complainants, with a clear intent of warning users away from doing business with the Complainants. The foregoing facts clearly indicate that the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> were registered and are being used by the Respondent to disrupt the business of the Complainants, which amounts to bad faith use and registration.
In view of the above, the Panel finds that the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> were registered and are being used in bad faith within the meaning of paragraph 4(a)iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <vedovi-gallery.com> and <willemvedovi.com> be transferred to the Complainants. However, the Complaint is denied in relation to <thetruthaboutwillemvedovi.com>.
Date: July 9, 2014