WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association pour la défense et la promotion de l’œuvre de Marc Chagall dite “Comite Marc Chagall” v. Miri & Isaac Shepher

Case No. D2021-4216

1. The Parties

The Complainant is Association pour la défense et la promotion de L’œuvre de Marc Chagall dite “Comite Marc Chagall”, France, represented by Cabinet Lambert & Félix Associés, France.

The Respondent¹ is Miri & Isaac Shepher, United States of America (“United States”), represented by Krane & Smith APC, United States.

2. The Domain Name and Registrar

The disputed domain name <chagall.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2022. The Response was filed with the Center on January 14, 2022 (Geneva time).

The Center appointed Adam Taylor as the sole panelist in this matter on January 24, 2022. 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 was incorporated by the estate of Marc Chagall (1887-1985), a well-known painter whose paintings have been sold for millions of euros/dollars and are exhibited in famous museums worldwide. Numerous exhibitions have been dedicated to his work.

The Complainant owns various registered trade marks for CHAGALL including International trade mark No. 505527 for the stylised word “chagall”, registered on September 15, 1986, in class 25, and European Union trade mark No. 000177709 for the word CHAGALL, registered on November 3, 1998, in class 9.

The Complainant has used the marks CHAGALL and MARC CHAGALL in connection with merchandise derived from works by the painter.

The Respondent registered the disputed domain name on March 6, 2000.

As of February 10, 2005, the disputed domain name resolved to a website offering the disputed domain name for sale and indicating a price range from USD 5,000 to USD 5 million. The website included a list of other domain names for sale.

On August 27, 2021, the Respondent sent a message to the Complainant asking if it was possible to acquire the disputed domain name. The Respondent replied on August 31, 2021, stating that the Complainant could acquire the disputed domain name and inviting the Complainant to come up with an offer.

On November 26, 2021, the Complainant sent a cease and desist letter to the Respondent. The Respondent did not respond.

As of December 9, 2021, the disputed domain name resolved to a website headed “LifeAlert”, described as a medical alert system for elderly people.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

Marc Chagall is one of the most famous painters of the 20th century. Over the course of his lengthy and distinguished career, the public has come to recognise and associate the name “Chagall” as an identifier of artworks produced exclusively by this artist. The CHAGALL trade marks are highly distinctive.

When searching “Chagall” in Google, all of the results refer to the painter and, consequently, to the Complainant’s trade marks.

The disputed domain name is identical to the Complainant’s trade mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent has never authorised the Respondent to register or use its trade mark in a domain name.

The Respondent is not commonly known by the disputed domain name.

The Respondent has not used the disputed domain name for a bona fide offering of goods or services, nor has it made legitimate or fair use thereof.

The fact that the disputed domain name has been offered for sale since at least 2005, indicating “absence of use for at least more than five years” is clear evidence of a lack of legitimate interest on the part of the Respondent, as is the fact that the disputed domain name, which is not a dictionary term but refers exclusively to the name of the famous painter, has since been used for redirection “only”, namely to a website connected with the Respondent at “www.lifealert.com”, which does not use the sign “Chagall”.

The Respondent’s lack of legitimate interests is reinforced by the Respondent’s ready agreement to offer to sell the disputed domain name at the first request, indicating that the disputed domain name was not really of interest to the Respondent.

The disputed domain name was registered and is being used in bad faith.

The scenarios described in paragraph 4(b) of the Policy are non-exclusive.

The Respondent registered the disputed domain name without any intention of using it but for the sole purpose of selling it at a clearly excessive price, namely between USD 5,000 and USD 5 million. As the disputed domain name remained unsold, the Respondent linked it to its own website at “www.lifealert.com” with the obvious hope of selling it one day for a high price.

It is well established from UDRP decisions that the registration of domain names for the purpose of sale is a good indication of respondent bad faith.

In this case, Marc Chagall enjoys an exceptional international reputation, and the Respondent knew or should have known about the existence and use of the Complainant’s well-known trade marks as at the date of registration of the disputed domain name.

The Respondent chose a Top-Level Domain (“TLD”) “.com”, which was likely to be of major importance to the Complainant.

The site to which the disputed domain name redirects has no connection with the painter and the business for which the site is used does not enjoy a good reputation.

The Respondent did not respond to the Complainant’s cease and desist letter.

The Respondent’s use of a privacy service is a further indicator of bad faith.

The Respondent should have refrained from registering and using the disputed domain name because it was identical or similar to the Complainant’s trade mark, of which the Respondent was or should have been aware, and doing so breached paragraph 2 of the Policy where registrants warrant that, to the best of their knowledge, registering domain names does not infringe any third party rights.

The disputed domain name has been registered, not for the purposes of fair competition but, rather, with the intention of undermining the interests of the Complainant in a manner inconsistent with honest practices and the disputed domain name has therefore been registered in bad faith.

B. Respondent

The following is a summary of the Respondent’s contentions.

The Respondent has been resident in the United States since before registration of the disputed domain name. The Respondent was unaware of the Complainant’s trade mark registrations and rights when registering the disputed domain name in March 2000. None of the Complainant’s registered trade marks apply in the United States. The Respondent only became aware of these on receipt of the Complainant’s letter of November 26, 2021.

The Respondent does not dispute that that the disputed domain name is similar to the Complainant’s marks.

However, per section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the context of the website at the disputed domain name “may be noted in confirming confusing similarity”. Not only does the Respondent’s website not confirm confusing similarity, the fact that the disputed domain name has not been used in connection with the Complainant’s mark indicates that the disputed domain name is not confusingly similar to that mark.

In one of the Complainant’s screenshots of the Respondent’s website, visitors are invited to contact the Respondent via a Yahoo email address to enquire about buying the disputed domain name or any of the many other domain names listed on the page; in the other screenshot, the disputed domain name redirects to the Respondent’s “Life Alert” business which has no connection with art, the painter, the Complainant or any goods or services for which the Complainant owns trade marks.

There are many identical trade marks owned and used by different entities for different goods and services without leading confusion, e.g., “Delta” for airlines and faucets. The context of the resolving website informs, rather than confuses, the consumer.

The Respondent possesses rights and/or legitimate interests in the disputed domain name as a long-time investor in, and reseller of, domain names. Section 2.1 of WIPO Overview 3.0 confirms that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate.

From the beginning of the Internet, the Respondent has been registering domain names for their long-term potential value.

The Respondent has registered and continues to own some 500 generic domain names, particularly those consisting of generic words, phrases or short combinations of letters and/or numbers – as illustrated by the Complainant’s screenshot of the Respondent’s website offering the disputed domain name for sale. The Respondent does not seek out and intentionally register domain names reflecting third party trade marks.

The Respondent has sold only a small number of these domain names.

The Respondent’s domain names include <biz.com>, which the Respondent has owned for some 20 years, as well as domain names consisting of English transliterations of generic foreign language words, e.g., <anak.com>, the transliteration of a Hebrew word meaning “giant”.

The Respondent registered the disputed domain name purely because it is an English transliteration of a generic Hebrew term with a sexual innuendo, namely the Hebrew word for “concubine”. The Respondent did not register the disputed domain name because it happens to be a surname, or the surname of Marc Chagall, or because it is a name or mark associated with the Complainant. The Panel is not in a position to infer otherwise based on the evidence presented by the parties. The only conclusion is that the Respondent has a legitimate interest in the disputed domain name as an investment in an asset like any other.

The Respondent did not register or use the disputed domain name in bad faith, but rather for its potential resale value. Generic words, especially related to sex, can command very high resale prices. For example, the <sex.com> domain name was sold in November 2010 for USD 13 million.

Contrary to the Complainant’s assertions, the Complainant’s evidence shows that the Respondent used the disputed domain name to advertise it for sale to anyone as part of Respondent’s legitimate domain name reselling business, and not solely to Complainant. The UDRP cases relied upon by the Complainant miss the point as they involve respondents who offered to sell the domain names directly to the complainants, often soon after registering the relevant domain names.

While the Complainant refers to the Respondent’s readiness to sell the disputed domain name to the Complainant, the relevant sale enquiry was initiated by the Complainant, not the Respondent, some two decades after the Respondent registered the disputed domain name. The Respondent never approached the Complainant to offer to sell the disputed domain name to the Complainant over that 20-year period, whereas responding to a purchase enquiry is what a domain reselling business would be expected to do. Furthermore, after the Complainant failed to offer a purchase price for the disputed domain name, the Respondent did not contact the Complainant further.

The Respondent is not currently looking to sell the disputed domain name to the Complainant or any other investor. The Respondent has been approached to sell the disputed domain name by third parties and believes that its value is well in excess of what the Complainant is willing to pay.

The Complainant has failed to prove that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name or that the Respondent engaged in a pattern of such conduct.

The parties are not competitors and the Respondent did not register the disputed domain name primarily to disrupt the Complainant’s business. The Respondent redirects the disputed domain name to a website which provides services wholly unrelated to those of the Complainant. The Complainant’s assertion to this effect supports the Respondent’s case rather than that of the Complainant. Many of the Respondent’s domain names redirect to the Respondent’s Life Alert site, but not all. The Respondent does not have a regular decision process for determining whether a domain name should redirect to that website.

The Respondent has not used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

The Complainant concludes that the disputed domain name has been registered in bad faith but it is required to establish both registration and use in bad faith. The Complainant has therefore failed to satisfy its burden of proof under the third element.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.

A. Preliminary Issue - Late Response

The Response, which was due on January 13, 2022, was in fact received by the Center on January 14, 2022 – Geneva time.

However, given that the Respondent’s representative is in California, United States, and that the email transmitting the Response as received by the Center bears a time stamp of “3:44 AM”, the Panel accepts that the Response was despatched on January 13, 2022, local time, and that it should be therefore treated as having been filed on time.

Even if the Response were to be treated as having been filed late, the delay is only a matter of hours. The Panel also notes that the Complainant has not objected to admission of the Response.

Accordingly, the Panel has decided to admit the Response.

B. Identical or Confusingly Similar

The Complainant has established rights in the mark CHAGALL by virtue of its registered trade marks.

Disregarding the TLD suffix, the disputed domain name is identical to the Complainant’s trade mark.

The Respondent invokes section 1.7 of the WIPO Overview 3.0 to the effect that, in certain circumstances, website content may support a finding of confusing similarity, and argues that, conversely, the Respondent’s use of the disputed domain name for a website unrelated to the Complainant’s mark is evidence of a lack of confusing similarity.

The Panel disagrees.

First, as stated above, the disputed domain name is identical to the Complainant’s trade mark, and so the question of confusing similarity does not arise.

In any case, section 1.7 of WIPO Overview 3.0 states that the test for confusingly similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognisable within the disputed domain name. While section 1.7 states that panels may take a respondent’s website into account, it makes clear that this is only in “specific limited instances” where a panel would benefit from affirmation of confusing similarity and, also, that such an assessment is not a replacement for the typical side-by-side comparison. Accordingly, section 1.7 falls well short of establishing that use of a domain name for goods or services dissimilar to those of a complainant is generally considered to be an indicator of a lack of confusing similarity under the first element. In this regard, section 1.1.2 of WIPO Overview 3.0 states that “the goods and/or services for which the mark is registered or used in commerce, […], are not considered relevant to the first element test.” As section 1.7 also explains, the legitimacy or otherwise of a respondent’s offering is generally considered under the second and/or third elements.

For the above reasons, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

It is unnecessary to consider this factor in view of the Panel’s findings under the third element below.

D. Registered and Used in Bad Faith

The Panel will consider the various factors raised by the parties and then decide whether the Complainant has done enough to prove bad faith to the applicable standard, namely on the balance of probabilities – see section 4.2 of WIPO Overview 3.0.

First, was the Respondent aware of the Complainant’s rights, or at least the painter, when he registered the disputed domain name in 2000?

The Respondent says he had no knowledge of the Complainant’s registered trade marks, but he does not deny knowing that “Chagall” was the surname of a famous painter; nor could he credibly have done so. This factor favours the Complainant but is not conclusive as it is still possible that the Respondent chose the disputed domain name for a different reason. Furthermore, knowing of the painter does not necessarily equate to a belief by the Respondent that there were likely to be trade marks owned by an entity officially connected with the painter; but it is only necessary for the Panel to consider the latter issue if it finds that, contrary to his claim otherwise, the Respondent was primarily motivated by the connection between the disputed domain name and Marc Chagall.

What is the Respondent’s explanation of his purpose in registering the disputed domain name?

The Respondent, who now lives in the United States, but was born in Israel and is a Hebrew speaker, asserts that he selected the disputed domain name, not by reference to the name of the painter or the Complainant’s trade marks, but purely because it comprised an English transliteration of a generic Hebrew word with a sexual innuendo, namely the Hebrew word for “concubine”. The Respondent has supplied a Google Translate screenshot showing that the Hebrew word ”שֵׁגָל” - which can be transliterated as “chagall” - means “concubine”. The Respondent also observes that sex-related domain names can carry a high value.

While, on the face to it, the Respondent’s version of events may not seem convincing, it is notable that the Respondent also owns the domain name <anak.com>, which is a transliteration of the Hebrew word for “giant”. The Panel has checked² the WhoIs information for <anak.com> and notes that it bears a creation date of March 27, 2000, only three weeks after registration of the disputed domain name. While it is possible that the Respondent was not the first registrant of <anak.com>, the Respondent has owned it since at least February 10, 2005, which is the date of an archive website screenshot listing various Respondent domain names for sale including <anak.com>.

Given that the disputed domain name forms part of an albeit small pattern of Hebrew-transliteration domain names, it seems at least conceivable that the Respondent did indeed select the disputed domain name based on its phonetic identity with a Hebrew word and that, although to most people the word “chagall” might instantly denote the famous painter, to a Hebrew speaker such as the Respondent, it might also have conveyed a very different meaning.

Is there any evidence that the Respondent has a propensity to target third party trade marks?

The Respondent says that, since the beginning of the Internet, he has registered domain names for their long-term potential resale value and that he owns some 500 “generic” domain names, particularly consisting of dictionary words, phrases or short combinations of letters and/or numbers. The Respondent denies ever targeting third party trade marks – and indeed there is no evidence of the Respondent’s ownership of domain names that obviously reflect well-known trade marks. On the contrary, the 2005 screenshot of the Respondent’s website mentioned above includes a list of some 500 other domain names also for sale, possibly comprising the Respondent’s entire portfolio. On the face of it, these domain names all appear to consist of dictionary, common and short/random terms of the kind described by the Respondent. Certainly, the Complainant, which exhibited this screenshot, has not sought to impugn any of the domain names in this list.

Is there any evidence that the Respondent has used the disputed domain name in relation to art in general or Marc Chagall in particular?

The answer to this question is “no”.

The Complainant has provided the Panel with screenshots illustrating that, in 2005, the disputed domain name was used for a website offering the disputed domain name for sale (discussed further below) and that, at some unspecified point thereafter, the disputed domain name redirected to the website of a business operated by the Respondent relating to the supply of alarm systems for the elderly – and therefore completely unrelated to Marc Chagall or art. The Respondent has not explained why he did this, beyond saying that he redirects many of his domain names to his LifeAlert website and has no “regular decision process” for determining whether to redirect his domain names to that site.

The Complainant places weight on the fact that the Respondent has redirected the disputed domain name to a business which is unconnected with the painter, which does not itself use the sign CHAGALL and which allegedly has a poor reputation.

However, although the Respondent has not clearly explained when and why he started using the disputed domain name in this way and although such usage would probably not have constituted rights or legitimate interests under the second element, the Panel does not consider that redirection to the LifeAlert website is suggestive of bad faith on the part of the Respondent in the circumstances of this case.

Is there anything to indicate that the Respondent’s primary purpose was to sell the disputed domain name to the Complainant or, at least, to an entity officially connected with the painter in accordance with paragraph 4(b)(i) of the Policy?

The Complainant asserts that the Respondent registered the disputed domain name for the sole purpose of selling it at a clearly excessive price, namely between USD 5,000 and USD 5 million – i.e., per the price range specified on the former website at the disputed domain name.

However, if the Respondent genuinely registered the disputed domain name for the purpose he claims, then the Respondent was entitled to offer the disputed domain name for sale and to do so at whichever price he wished. Section 3.1.1 of WIPO Overview 3.0 explains that, generally, the practice of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trade mark owner.

The issue, therefore, is not the level of the price sought by the Respondent of itself but, rather, whether the Respondent’s price indicates that his original purpose was not primarily to sell the disputed domain name to the world at large but, rather, to an entity officially connected with the painter.

However, the Panel notes the following. First, the Respondent did not offer the disputed domain name for USD 5 million but, instead, within an extraordinarily broad price range of USD 5,000 and USD 5 million. Second, while the Panel is not in a position to value the disputed domain name, the Panel is aware that the values of domain names can be enhanced if they consist of short single words and also, as asserted by the Respondent, if they are sex-related. Accordingly, the Panel does not consider that the price range quoted by Respondent is of itself a strong indicator of an illicit motive on the part of the Respondent.

The Complainant invokes the following UDRP cases in connection with bad faith registration of domain names for the purposes of sale: Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; OLX, B.V. v. Abdul Ahad / Domains By Proxy, LLC, WIPO Case No. D2015-0271; and Cash Converters Pty Ltd. v. Cameron David Jackson, WIPO Case No. D2014-2265.

But, as the Respondent points out, these decisions all involved unsolicited offers from respondents to sell the respective domain names to the respective complainants. Whereas, here, it was the Complainant who first approached the Respondent – some 20 years after registration of the disputed domain name.

And the Panel does not consider that the Respondent’s unexceptionable response to the Complainant’s enquiry – namely inviting the Complainant to come up with an offer – indicates some sort of unseemly readiness to sell the disputed domain name “at the first request”, as the Complainant claims. It simply shows that the Respondent remained amenable to potential sale of the disputed domain name. Indeed, the Respondent did not see fit to follow up with a chaser to the Complainant.

In any event, whatever the Respondent’s level of enthusiasm to sell the disputed domain name, the Panel does not find that this exchange of correspondence is in any way indicative of a bad faith purpose under the Policy on the part of the Respondent when he registered the disputed domain name 20 some years earlier.

What about the other factors raised by the Complainant?

The Panel does not consider that anything turns on the fact that the Respondent chose to register the disputed domain name in the “.com” TLD. While this TLD may be indeed of “major importance” to the Complainant, as it says, the “.com” suffix is also likely to be important to many, if not all, other people interested in acquiring the disputed domain name for whatever reason.

The Panel does agree with the Complainant that the Respondent’s lack of response to the Complainant’s cease and desist letter, which the Respondent acknowledges receiving, is a factor favouring the Complainant. One might have thought that, if he had had a legitimate reason for acquiring the disputed domain name, the Respondent would have been anxious to reply to the Complainant’s letter so as to “set the record straight”. The Respondent has not explained why he ignored the Complainant’s letter.

The Panel disagrees with the Complainant’s assertion that the Respondent’s use of a privacy service is a further indicator of bad faith. While UDRP panels have found that use of a privacy or proxy service to block or intentionally delay disclosure of the identity of the actual underlying registrant can be an indication of bad faith, in this case, the Panel has not been provided with evidence showing that the Respondent set out to obstruct or distance himself from a potential UDRP case, e.g., by making service of proceedings more difficult. Indeed, the Respondent’s complete contact details were disclosed by the Registrar when the Complaint was filed. Furthermore, the Respondent was easily identifiable/contactable via the various websites at the disputed domain name.

So, finally, what is the Panel to make of the above?

This is a limited proceeding where the Panel does not have the benefit of the tools available in litigation such as disclosure of documents and examination of witnesses. All that the Panel can do is make its best assessment of the Respondent’s motive based on the evidence placed before it.

Having carefully considered all the arguments raised by the parties, the Panel has found this to be a finely balanced case. As explained above, some factors favour the Complainant; others favour the Respondent.

Ultimately, the Panel’s conclusion is that, while the Respondent’s explanation is not fully compelling, it falls into the category of “just about plausible”, and the Panel does not consider that it has been presented with enough supporting evidence to cause it to conclude otherwise. Bearing in mind that, as mentioned above, the Complainant is required to prove its case on the “balance of probabilities”, the Panel does not feel that there is sufficient evidence before it that would justify the Panel in dismissing the Respondent’s explanation and depriving him of a domain name that he has owned for some 20 years.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Date: February 14, 2022

¹ Miri and Isaac Shepher are the joint registrants of the disputed domain name and, accordingly, both are correctly named as Respondents in this proceeding. Because the Response is written on the basis that Isaac Shepher is the controller / decision-maker in respect of the disputed domain name, and for ease of reference, the Panel refers to both as the “Respondent” and proceeds as if Isaac Shepher were the sole Respondent. This a matter of terminology only and has no effect on the merits of the case.