WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Estate of Paul Flato v. Newcal Galleries Ltd.

Case No. D2014-1945

1. The Parties

Complainant is The Estate of Paul Flato of Fort Worth, Texas, United States of America ("United States"), represented by CMG Worldwide, Inc., United States.

Respondent is Newcal Galleries Ltd. of New York, New York, United States, represented by Lucas & Mercanti, LLP, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <paulflato.com> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2014. The Response was filed with the Center on November 25, 2014. The Complainant filed a Supplemental Filing on December 3, 2014.

The Center appointed Mark Partridge as the sole panelist in this matter on December 8, 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.

4. Factual Background

Paul Flato was a popular jewelry designer, who created one of a kind pieces favored by celebrities during his lifetime. Mr. Flato passed away in 1999.

Respondent registered the Disputed Domain Name <paulflato.com> on April 20, 2004.

On March 4, 2011, Respondent filed trademark applications with the United States Patent and Trademark Office ("USPTO") for PAUL FLATO (Ser. No. 85/258,186) and PAUL FLATO JEWELRY (Ser. No. 85/258,195). Respondent subsequently abandoned both applications in November of 2011.

On March 8, 2011, a person named Barbara McCluer filed an intent-to-use application for the mark PAUL FLATO (Ser. No. 85/260,683) in the United States. On March 6, 2012, the application received a notice of allowance, and Ms. McCluer recently obtained a fifth extension of time to file a statement of use. Ms. McCluer also filed a Community Trade Mark ("CTM") application for PAUL FLATO (No. 010249803), which was registered on February 27, 2012.

5. Parties' Contentions

A. Complainant

Complainant claims to represent the Estate of Paul Flato and to have the exclusive rights to his intellectual property, including his name, right of publicity, a common law trademark for PAUL FLATO, a United States Federal Trademark for PAUL FLATO (Ser. No. 85/260,683), and a CTM trademark for PAUL FLATO (No. 010249803). Complainant also claims that the mark PAUL FLATO is famous.

Complainant claims (1) that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; (2) that Respondent has no rights or legitimate interests in the Disputed Domain Name; and (3) that the Disputed Domain Name was registered and is being used in bad faith.

Complainant alleges that Respondent registered the Disputed Domain Name in bad faith because does not resolve to an active site for use in commerce and because Respondent abandoned its USPTO trademark applications but kept the Disputed Domain Name. Complainant alleges that the Disputed Domain Name is confusingly similar to its registered trademarks and that Respondent intends to attract and mislead consumers to its website for commercial gain. Complainant also claims that the Disputed Domain Name tarnishes its trademark because the website is not active. Complainant further alleges that Respondent has made no effort to use the Disputed Domain Name in commerce and is not associated with any business relating to Paul Flato.

In its supplemental filing, Complainant alleges the common law trademark has been in use both during and after Mr. Flato's lifetime "specifically for licensing," and that Respondent has failed to prove abandonment in the mark.

B. Respondent

Respondent claims to be a reseller of authentic Paul Flato jewelry. The founder and President of Respondent company is a collector and alleged expert on Paul Flato's works.

Respondent claims (1) that Complainant has failed to show that it has rights in the PAUL FLATO trademark; (2) that Respondent has legitimate interests in the Disputed Domain Name; and (3) that the Disputed Domain Name was registered in good faith and has not been used in bad faith. Respondent alleges that the mark PAUL FLATO is not famous.

Respondent alleges that Complainant, "The Estate of Paul Flato," has failed to provide any supporting evidence of rights in the PAUL FLATO mark. Respondent observes that Ms. McCluer owns both the United States and CTM marks in her individual capacity, and that there is no documentation provided that links her to Complainant.

Respondent also alleges that it has senior rights to the Disputed Domain Name because it obtained the registration in 2004 and Ms. McCluer did not apply for the PAUL FLATO marks until 2011. Because the Disputed Domain Name was issued seven years prior to the United States application and CTM registration, Respondent claims that neither registration shows prior rights in the Disputed Domain Name. Respondent also observes that a trademark application alone does not afford enforceable rights in the United States.

Respondent alleges that Complainant has failed to make allegations of trademark use. Respondent asserts that Complainant has never used its trademark in commerce because (1) the United States application for PAUL FLATO is still premised on intent-to-use and is awaiting registration, and (2) a CTM registration does not require prior use or evidence of use for the first five years after registration.

Respondent also alleges that Complainant cannot have common law trademark rights in PAUL FLATO because it has provided no evidence of its use in commerce since Mr. Flato's death in 1999. Respondent maintains that even if Complainant had common law rights in PAUL FLATO, these rights would only be those possessed by Mr. Flato himself, which have been abandoned through the fifteen years of non-use since Mr. Flato's death.

Respondent also observes that it has not attempted to "corner the market" in domain names that reflect the PAUL FLATO mark for its business of reselling authentic Paul Flato jewelry. Respondent claims that it registered the domain name in 2004 with the intent to "us[e] it in a business of authenticating unsigned Paul Flato jewelry and eventually marketing original Paul Flato creations."

Finally, Respondent notes that in March of 2011, Respondent and Mr. Flato's heirs collaborated to "reviv[e] his celebrity." Respondent and several Flato heirs met in person and exchanged emails regarding Respondent's proposed business and the now Disputed Domain Name. Respondent prepared the website to go live but, ultimately, refrained from using it commercially after Mr. Flato's heirs decided they no longer wanted to collaborate with Respondent in October of 2011. Respondent states that the site never went live because it needed to be revised to clarify that Respondent did not have any connection with Mr. Flato beyond being a collector and expert on Flato jewelry. In sum, Respondent alleges that it has a legitimate interest in, registered, and intended to use the disputed domain name in good faith.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has failed to provide sufficient evidence that it has rights in the PAUL FLATO mark. Even though Complainant submitted further arguments in its supplemental materials, the Panel is not convinced that it has met its burden.

The United States and CTM registrations for PAUL FLATO are in the name of Barbara McCluer individually. Complainant has failed to provide any documentation directly connecting it with Ms. McCluer or any administrator of Mr. Flato's estate, such as through affidavit, a copy of a testamentary document stating the name of the estate administrator, or a copy of the court order appointing an estate administrator. It is a generally accepted principal of law that only the executor or administrator of an estate has the power to act on its behalf. See Wall v. Bissell, 125 U.S. 382, 387-388 (1888).

Complainant has also failed to show any use in commerce that would support its rights in a common law mark. See ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V., WIPO Case No. D2000-0230 (the Policy does not require a registered trademark and considers common law trademarks).

Complainant does not support its claim to common law rights in PAUL FLATO in the text or exhibits of the Complaint. Complainant merely argues that PAUL FLATO has been a common law trademark since the 1920s, throughout Mr. Flato's life, and continuing after his death and provides several articles that discuss him as an individual.

Personal names are one of the classes of marks that do not have the status of a protectable mark upon mere adoption and use; they acquire legally protectable status only after obtaining secondary meaning. The test is whether the public perceives the "mark" as representing more than a personal name. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §13:2 (4th ed. 2014). Other UDRP Panels have also found that "the name in question should be actually used in trade or commerce to establish unregistered trademark rights." See Vanisha Mittal v. info@setrillonario.com, WIPO Case No. D2010-0810; Margaret C. Whitman v. Domains For Sale, WIPO Case No. D2008-1534; David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514.

In a decision similar to this one, the heirs of the French Impressionist painter Gustave Caillebotte sought to have the domain name <caillebotte.com> transferred to them.

Stating "[t]he 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" and explaining that 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 Jacques Chardeau et al. v. MindViews LLC, WIPO Case No. D2008-0778.

Even though the name "Gustave Caillebotte" was still associated with paintings, and those paintings were still sold in commerce, the panel decided that those sales were insufficient to establish an unregistered trademark. Lastly, the Panel reasoned that because there was no evidence in the record indicating that 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," complainants had not established trademark or service mark rights. See Jacques Chardeau et al. v. MindViews LLC, supra.

Although Complainant alleges that it has licensed the name PAUL FLATO for commercial use, the evidence submitted appears to consist of a recreation of an alleged email in a word document, and mere negotiations. Complainant has failed to provide a copy of an existing license or evidence of royalty payments.

In these circumstances, the Panel finds that Complainant has failed to prove (1) that there are protectable rights in the PAUL FLATO mark; or (2) that Complainant holds those rights.

B. Rights or Legitimate Interests

Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Complainant asserts that the Respondent has no rights or legitimate interests in the domain name because (1) Respondent has not used or made demonstrable preparations to use the Disputed Domain Name with a bona fide offer of goods or services because there is no live website; (2) Respondent has never been known by the name Paul Flato; (3) the Disputed Domain Name is confusingly similar to the PAUL FLATO marks; and (4) Respondent's use of the domain name was chosen to mislead consumers about its relation to Mr. Flato.

If one were to assume that Complainant has rights to the PAUL FLATO mark, it has satisfactorily alleged that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by "Paul Flato," and is not making a legitimate noncommercial or fair use of the disputed domain name.

The burden then shifts to Respondent to present evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., supra.

Respondent is a reseller of jewelry created by Mr. Flato. The proper standard by which to evaluate reseller cases is the one articulated in 2001 in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a dealer or reseller should be regarded as a "bona fideoffering of goods or services" within the meaning of the Policy if the following conditions are satisfied:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

(iii) the site itself must accurately disclose the respondent's relationship with the trademark owner; and

(iv) the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

This Panel finds that the Oki Data criteria are appropriate even in cases where the respondent is not an authorized dealer, so long as the respondent operates a business genuinely revolving around the trademark owner's goods or services, as other panels have stated. See, e.g., NASCAR v. Racing Connection / The Racing Connection, Inc., WIPO Case No. D2007-1524.

Although Respondent's business is not currently operational, the record before the Panel indicates that (i) it has presented evidence of its planned website; (ii) the website is dedicated solely to identifying and reselling the works of Mr. Flato and does not offer other goods or services; (iii) the website accurately disclosed Respondent's relationship with the heirs of Mr. Flato, and has not gone live so that it may be amended to reflect Respondent's current relationship with them; and (iv) there is not persuasive evidence presented that Respondent has attempted to "corner the market" in all relevant domain names.

In its supplemental materials, Complainant alleges that Respondent registered a second domain name <paulflato.tntmax.com>. A third-level domain name registration and the Disputed Domain Name alone are insufficient evidence of an attempt to "corner the market" in all relevant domain names, as there are many other relevant options that may registered.

Respondent has presented sufficient evidence to demonstrate rights and legitimate interests in the Disputed Domain Name. The weight of the record does not suggest that Respondent has acted improperly. Respondent provided a copy of its ready-to-launch website supporting its business of identifying and reselling Paul Flato pieces. Respondent also provides evidence of its founder and president's expertise on Mr. Flato's jewelry. Furthermore, Respondent explains the reasons for delaying the launch of the website, and provides evidence of meeting and collaborating with the Flato heirs, bolstering the credibility of its explanation.

The Panel concludes that the preponderance of the evidence establishes that Respondent made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offer of goods and services. Specifically, (i) Respondent provided a credible explanation for why it chose to use the name "Paul Flato" for the disputed domain name based on its proposed business; (ii) Respondent has provided a copy of the designed website; (iii) the Respondent has offered a credible explanation for the delay in launching the website based on the cooperation of the Flato heirs; and (iv) Respondent has not attempted to "corner the market" in domain names relating to Mr. Flato.

The Panel finds that Respondent has a legitimate interest in the Disputed Domain Name based on its demonstrated preparations to use it in connection with a bona fide offer of goods and services under paragraph 4(c)(i) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons,

"(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Respondent registered the Disputed Domain Name seven years before the Complainant allegedly obtained trademark registrations. Normally, UDRP Panels consider such a gap in time as evidence that the disputed domain name was registered in good faith. See, e.g., Burn Wold-Wide, Ltd. V. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.

"As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant's non-existent right." See Meeza QSTP-LLC v. Torsten Frank, WIPO Case No. D2009-0943 quoting General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

Even though Respondent did not launch a website in this time, it prepared a website for eventual launch. Other UDRP Panels have considered cases of "passive holding," and accepted that business development periods of at least eight years were consistent with the preparation for use of a domain name and legitimate interests. See, e.g., Indofil Chems. Co. v. Amar Vakil, WIPO Case No. D2006-0792.

The prevailing view is that passive holding is not evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case. Similar reasoning applies with respect to the significance of passive holding to the Respondent's legitimate interests in the disputed domain name. Id.

In this case, the circumstances surrounding the passive holding confirm Respondent's legitimate interests in the Disputed Domain Name because (i) Respondent registered the domain name seven (7) years before the trademark applications for PAUL FLATO; (ii) Respondent has shown a bona fide ability to create a business involving the jewelry designed by Mr. Flato; (iii) Respondent has provided evidence of preparation to use the Disputed Domain Name in commerce; (iv) Respondent has provided credible explanations for its delay in launching the website; and (v) there has been no evidence presented to show that Respondent used the Disputed Domain Name in a manner that indicates bad faith since its registration.

The Panel finds that (i) Respondent registered the Disputed Domain Name in good faith and that it has legitimate rights and interests based on the registration date of the Disputed Domain Name; and (ii) Complainant has not demonstrated that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Respondent has prepared to use the disputed domain name in connection with a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Mark Partridge
Sole Panelist
Date: January 12, 2015