WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1st Art Gallery Inc. v. Jerry Chan
Case No. D2016-0838
1. The Parties
Complainant is 1st Art Gallery Inc. of Panama City, Panama, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.
Respondent is Jerry Chan of Shenzhen, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <1st-art.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2016. The Response was filed with the Center on June 1, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 7, 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.
On June 10, 2016, Complainant submitted an unsolicited Supplemental Filing with a few additional annexes. Respondent sent a short email response on June 12, 2016, to which Complainant replied by short email the following day. Respondent submitted a final supplemental filing later the same day. These additional unsolicited materials add little of value to the relevant record in this case, but the Panel has at least considered them.
4. Factual Background
The Parties here are business competitors, and the record in this case includes some arguments and information largely irrelevant to the disposition of this case. For the sake of simplicity, the Panel will ignore such items in this decision.
Complainant is a Panamanian company incorporated in 2006. According to the Complaint, "Complainant and its predecessors have carried on the business of online supplier of made to order oil paintings under the name '1st Art Gallery' since 2003." Since "approximately 2003," Complainant and its predecessors have operated a website at "www.1st-art-gallery.com" to market its reproduction oil paintings. Complainant sells reproductions of famous paintings "handmade by artists in studios all over the world" and "its customers are worldwide." Complainant asserts that its annual turnover has exceeded USD 1 million each year since 2005. Complainant has no registered trademark.
The Domain Name was registered on February 23, 2012. Since at least April 2014, Respondent has operated a website at the Domain Name at which reproduction oil paintings are offered for sale.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. According to Complainant, Respondent is a direct competitor and Respondent's website accessible via the Domain Name "copies a number of aspects of Complainant's own website." These alleged similarities include: (1) Respondent's site uses the same background color and black font in the header; (2) Respondent's site "prominently features a video demonstrating how the paintings are produced"; (3) the bottom part of Respondent's site "features rows of boxes containing examples of paintings that can be reproduced"; (4) Respondent's site features, under the title "Painting Process," a series of pictures showing the progression of the initial sketch to the final product; and (5) Respondent's site "copies other design elements, including a stylised picture of an easel containing a canvas on which words appear in black and red font."
Complainant alleges that "Respondent was clearly aware of the Complainant and its business when it registered the Domain [Name]," and that Respondent, as a competitor of Complainant, "registered the Domain [Name] for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant."
Complainant submits into the record certain instances of actual consumer confusion. In its Supplemental Filing, Complainant supplies even more such purported examples, but the Panel has disregarded them because Complainant solicited such examples from its own customers without providing the Panel with the actual questions or comments made to the customers in order to elicit their responses.
Respondent disputes that the Domain Name is confusingly similar to Complainant's alleged trademark. Respondent also disputes that his website is essentially a copy of Complainant's site. Respondent also asserts that Complainant "has almost never bothered to call itself '1st Art.'" Respondent also argues that its business offers certain services that Complainant does not offer, and hence their businesses do not fundamentally overlap.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Confusingly Similar
The Panel concludes that there is sufficient evidence in the record to establish that Complainant holds common law rights, through use at its website for more than a decade, in the mark 1ST ART GALLERY. The Panel further concludes that the Domain Name is confusingly similar to the mark.
Respondent contends that the absence of the word "gallery" in the Domain Name is a critical difference. The Panel disagrees. The dominant feature of the trademark is "1st Art," not the generic term "gallery," which describes exactly what Complainant's and Respondent's businesses are – online art galleries.
It is clear that a complainant's trademark need not be registered, nor even particularly strong, in order to clear the first hurdle required for relief under the Policy. Here, the low hurdle has been cleared, and the Domain Name is confusingly similar to Complainant's mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not denied Complainant's express allegation that Respondent was aware of Complainant and its business at the time he registered the Domain Name in 2012. The Domain Name, which, as was held above, is confusingly similar to Complainant's mark, resolves to a website where custom art reproductions are offered for sale. This is the same business as Complainant was operating for years before Respondent registered the Domain Name. This cannot vest Respondent with a legitimate interest in the Domain Name. See Forest Laboratories, Inc. v. Awad Kajouk, WIPO Case No. D2007-1650 (use of a domain name incorporating complainant's trademark for a website selling products in competition with complainant is not a bona fide use).
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Several critical facts lead the Panel to conclude that Respondent has registered and is using the Domain Name in bad faith. First, the Domain Name is confusingly similar to Complainant's mark. Second, Complainant and Respondent are business competitors, any fairly nuanced differences between their businesses notwithstanding.
Third, the Parties' respective websites are conceptually and in some respects visually very similar. The most striking manifestation of this similarity are the easel designs appearing on the two sites. On the easel featured on Complainant's site, the text "We can paint any size; we can paint any image" appears on the canvas, and the text "Can't find what you are looking for?" appears between the easel legs above a hyperlink "Click Here!" On the easel featured on Respondent's site, the text "We paint anything you submit" appears on the canvas, and the text "Not find anything" appears between the easel legs above a hyperlink "Submit Here." The Panel finds the Parties' respective easel designs to be remarkably similar in concept and content. When added to the other stylistic similarities between the two sites, the Panel concludes from this record that Respondent is more likely than not attempting to attract business through the creation of consumer confusion between Complainant's business and Respondent's.
The Panel also observes that someone in Respondent's position – a purveyor of custom paintings sold via the Internet – would very likely be aware of other businesses in that sector of online commerce.
Finally, and crucially because it does not require the Panel to rely solely upon similarities between the two websites, Respondent never denied Complainant's allegation that Respondent was aware of Complainant and its business at the time he registered the Domain Name. The Response lacks any such denial. Indeed, in Complainant's Supplemental Filing, Complainant notes that Respondent had "nowhere denied" that he was aware of Complainant's business at the time he registered the Domain Name. Respondent submitted an email response to this Supplemental Filing, but once again did not deny this critical allegation, which was even underlined in Complainant's Supplemental Filing.
Based on the foregoing, the Panel finds it more likely than not that Respondent registered the Domain Name primarily to disrupt the business of a competitor and to siphon, for commercial gain, traffic from Complainant's website by creating confusion among Internet users as to the source of the goods being offered at Respondent's website. This conduct constitutes bad faith registration and use within the meaning of Policy paragraphs 4(b)(iii) and 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <1st-art.com> be transferred to Complainant.
Robert A. Badgley
Date: June 21, 2016