WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Solomon R. Guggenheim Foundation v. Elite Ideas S.L.
Case No. D2011-0240
1. The Parties
1.1 The Complainant is The Solomon R. Guggenheim Foundation of New York, United States of America, represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States of America.
1.2 The Respondent is Elite Ideas S.L. of Barcelona, Spain.
2. The Domain Names and Registrars
2.1 The disputed domain names <abudhabiguggenheim.com>, <guggenheim-abudhabi.com>, <guggenheimabudhabi.com> (the “Domain Names”) are registered with Tucows Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 7, 2011, 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.
3.2 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”).
3.3 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 February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2011.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 14, 2011. 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
4.1 The Complainant is a not-for-profit corporation organized under the laws of the State of New York. It was formed in 1937 and either operates or is affiliated with a number of museums around the world that use the “Guggenheim” name; in particular, the Solomon R. Guggenheim Museum in New York City, United States of America, the Peggy Guggenheim Collection in Venice, Italy, the Deutsche Guggenheim in Berlin, Germany, and the Guggenheim Museum Bilbao in Bilbao, Spain. These museums were visited by in excess of 2.5 million visitors in 2009.
4.2 The Complainant is in the process of the development of the “Guggenheim Abu Dhabi Museum” which is scheduled to open in 2013. It is intended to be the largest Guggenheim museum in the world with a particular focus on Middle Eastern contemporary art. The Complainant first announced its plans in relation to the Guggenheim Abu Dhabi Museum on July 7, 2006 and this was picked up as a story in a number of international news outlets, including Associated Press, Bloomberg and the BBC. The story also appeared in seven media outlets in Spain between July 8 and July 10, 2006.
4.3 The Complainant is the owner of various registered trade marks around the world that comprise or incorporate the terms “Guggenheim” or “Guggenheim Abu Dhabi”. They include:
(i) United States Registered trade mark no. 2285144 for the words GUGGENHEIM MUSEUM registered on October 12, 1999 in classes 21, 24 and 28;
(ii) United States Registered trade mark no. 3745979 for the word GUGGENHEIM registered on February 9, 2010 in class 30;
(iii) United States Registered trade mark no. 2366500 for the word GUGGENHEIM registered on July 11, 2000 in classes 14, 16, 25, 28, 35, 41 and 42;
(iv) Community Trade Mark no. 7350374 for the word GUGGENHEIM registered on May 27, 2009 in classes 2, 11, 18, 20 and 30;
(v) United Arab Emirates Registered trade mark no. 59667 for the word GUGGENHEIM registered April 17, 2006 in class 24;
(vii) Lebanon registered trade mark no. 114597 for the words GUGGENHEIM ABU DHABI registered on January 24, 2008;
(viii) Oman registered trade mark no. 44820 for the words GUGGENHEIM ABU DHABI registered on February 9, 2008.
4.4 According to the publically available WhoIs database for the Domain Names, they were first registered as follows:
<abudhabiguggenheim.com>: September 7, 2006
<guggenheim-abudhabi.com>: September 13, 2006
<guggenheimabudhabi.com>: September 7, 2006
4.5 On May 19, 2008 the Complainant’s counsel sent a letter before action to LQART SL claiming that the <guggenheimabudhabi.com> Domain Name, inter alia, infringed its trade mark rights. It demanded that LQART SL cancel the Domain Name and threatened “the filing of a complaint with ... ICANN”. On June 16, 2009 “arias advocates” sent an email response in Spanish to that letter. Rather than sending this on behalf of LQART SL they stated they were writing on behalf of the Respondent who was their client. They denied that this Domain Name was owned illegitimately and claimed that the Respondent intended to use this Domain Name for a commercial site1.
4.6 A further letter was sent to the Respondent on March 18, 2010. It was in similar (albeit not identical) terms to that previously sent. It was sent again by email on April 8, 2010. On April 19, the Complainant received a telephone call from “Ken Sandven” who claimed to represent the Respondent. During that conversation, Mr. Sandven offered to sell that Domain Name to the Complainant. The Complainant declined that offer. This was followed up by an email that day from Mr. Sandven in which he confirmed that he was “fully authorized on behalf of the [Respondent] to negotiate any transaction” regarding the Domain name. A further follow up email was sent by Mr. Sandven on May 14, 2010, that email ended with the statement “If you are not interested in furthering our discussions, I believe the owner of the domain would like to explore other commercial opportunities, obviously without any unlawful intention”.
4.7 A further letter before action was sent by the Complainant on June 15, 2010. The letter recorded the previous correspondence with Mr. Sandven and made similar demands to that made in earlier letters, save that the demands now extended to all of the Domain Names.
4.8 For as long as the Complainant has been aware of the Domain Names (which in the case of <guggenheimabudhabi.com> Domain Name appears to have been in or prior to May 2008 and in the case of the other Domain Names was early June 2010), they have been used to display parking or pay-per-click pages that display sponsored results. As at January 2011, the sponsored results displayed, included links to websites offering cars, trip information about Abu Dhabi and various art related services.
4.9 As at the date of this decision the websites appearing from the Domain Names have changed, with the <abudhabiguggenheim.com> Domain Name pointing to what appears to be a page for a Spanish webhosting company and the other two domain names not resolving to any website.
5. Parties’ Contentions
5.1 The Complainant refers to its history and activities and claims that it’s “GUGGENHEIM Marks are famous and engender immense good will, strength and secondary meaning as identifiers of the Guggenheim Museums.”
5.2 The Complainant contends that (a) the <guggenheimabudhabi.com> Domain Name is identical to its GUGGENHEIM ABU DHABI mark; (b) the <guggenheim-abudhabi.com> Domain Name is identical to its GUGGENHEIM ABU DHABI mark save that it has an added the hyphen, and that is therefore confusingly similar to that mark; and (c) the <guggenheimabudhabi.com> Domain Name merely comprises its GUGGENHEIM ABU DHABI mark with the terms “Guggenheim” and “Abu Dhabi” transposed, and is therefore also confusingly similar to that mark.
5.3 The Complainant contends that the Domain Names also all incorporate its GUGGENHEIM mark in its entirety and therefore are also confusingly similar to that mark.
5.4 The Complainant asserts that the Respondent bears the burden of proving that it has rights or legitimate interests (citing G.D. Searle v. Martin Mktg., NAF Claim No. FA118277). It claims the Respondent cannot overcome this burden since (a) it is not using the Domain Names in connection with a bona fide offering of goods or services; (b) it has no legitimate rights in any of the GUGGENHEIM marks; and (c) is not making a legitimate noncommercial or fair use of the Domain Names. It contends that instead the Domain Names have been registered to generate click through revenue and that the timing of the initial registrations of the Domain Names, shortly after press coverage of the Complainant’s plans in July 2007, evidences a deliberate desire on the part of the Respondent to take advantage of the Complainant’s trade marks and goodwill.
5.5 The Complainant contends that in this case there is bad faith that falls under both 4(b)(i) and 4(b)(iv) of the Policy. It also claims that the Respondent has demonstrated its bad faith by among other things, demanding payment from the Complainant for transfer of one of the Domain Names. It is claimed that no legitimate use of the Domain Names has been made in the 4 years since registration. The domain name parking use is said to fall within paragraph 4(b)(iv) of the Policy. Further, it claims that the reputation of the Complainant is such that the Respondent must have been aware of the Complainant at the time it registered the Domain Names and once again refers to the timing of the registration of the Domain Names, which is said to be evidence that the Respondent deliberately intended to trade off of the Complainant’s goodwill.
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 Before doing so it is helpful first to briefly comment on the identity of the Respondent and when it is deemed to have registered the Domain Names the subject matter in the proceedings. There is some suggestion in the Complaint that when the Complainant sent its first letter before action in relation to the <guggenheimabudhabi.com> Domain Name in May 2008, that Domain Name was registered in a name different to that of the Respondent. However, the rest of the Complaint appears to proceed on the assumption that at the time of initial registration the Domain Name was registered (or at least controlled by) the Respondent. This raises the question whether the Domain Names passed into the hands of the Respondent at some later date and that this is the date of registration for the purposes of these proceedings2.
6.5 That said, the letter received from the Respondent’s lawyers in response to the Complainant’s first letter before action does suggest that the person controlling this particular Domain Name, regardless of in whose name it was then registered, was the Respondent. In the circumstances and in the absence of any argument or evidence to the contrary from the Respondent, the Panel is prepared to treat the Domain Names as at all times being under the effective control of the Respondent and to assume that the Respondent was responsible for their initial registration. This decision proceeds on this basis3.
A. Identical or Confusingly Similar
6.6 The Panel accepts that each of the Domain Names can only be sensibly read as the terms “Guggenheim” and “Abu Dhabi” in combination together with the “.com” TLD. Further, the Complainant owns registered trade mark rights for the word GUGGENHEIM. The addition of the term “Abu Dhabi” does not so significantly alter or change the “Guggenheim” element of each Domain Name so as to prevent each of the Domain Names from being “confusingly similar” (as that term is understood under the Policy) to the Complainant’s marks4.
6.7 Further, the Complainant is also the owner of registered trade marks for the words GUGGENHEIM ABU DHABI. The Panel accepts that the <guggenheimabudhabi.com> and <guggenheimabudhabi.com> Domain Names are virtually identical to those marks and that the <abudhabiguggenheim.com> Domain Name simply involves a juxtaposition of the two main constituent elements of that mark. The Domain Names are therefore also identical or confusingly similar to that mark.
6.8 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.9 The Complainant contends that the burden of proof on the issue of whether the Respondent has rights or legitimate interests is one that is borne by the Respondent. It then appears to qualify that later on in a footnote in the Complaint, where there is reference to case law which is said to be authority for the proposition that once the Complainant alleges that the Respondent has no right or legitimate interests in a domain name, the burden shifts to the Respondent to prove that it does.
6.10 This Panel is not so sure that this is an accurate description of the preponderance of views amongst panelists on this issue. It is for a complainant to prove its case and this is true of all elements of the Policy including a lack of rights or legitimate interests. However, it accepts that there is a significant body of case law under the UDRP to the effect that if a complainant can credibly assert in appropriate factual circumstances that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply, then the burden of proof shifts to the respondent to show that such rights or legitimate interests exists (see also paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Indeed, that is what the Complainant has done in this case. It has addressed each of the headings and asserted that there is nothing in the facts of the case that would suggest that (at least so far as legitimate interests is concerned) the relevant provision might apply.
6.11 In fact, in the opinion of the Panel, in many cases it is possible to make a far more positive determination of whether a right or legitimate interests exist. This is so in the present case where it is clear that at the relevant times the Domain Names were being used by the Respondent solely for use with a “domain name parking” or “pay-per-click” services.
6.12 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark, then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.13 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Names with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.14 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the unequivocal conclusion that all the Domain Names have been both registered and used with a view to taking unfair advantage of the reputation of the Complainant‘s trade marks. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.15 The assessment of bad faith registration and use in this case is quite straight forward. The Panel accepts the Complainant’s evidence that the mark GUGGENHEIM had developed a worldwide reputation by September 2006 when all of the Domain Names were registered. That reputation had certainly extended to Spain where the Respondent appears to be based, not least because of the existence of the well-known Guggenheim Museum in Bilbao. In the absence of any argument of evidence to the contrary, the Panel accepts that at the time of registration it is more likely than not that a Spanish entity registering a domain name that encompassed that term would have been aware of the Complainant and thereby its mark.
6.16 However, in this case the facts are even more compelling. The Respondent has registered not just domain names that incorporate the term “Guggenheim” but ones that do so in conjunction with the term “Abu Dhabi”. The combination of these terms is so unusual that they can only have been intended to refer to the Complainant and the Complainant’s proposed museum in that location.
6.17 Further, it is difficult to contemplate what legitimate use there might possibly be of the three Domain Names in question. The Respondent through its lawyers in June 2008 claimed that this was for a “commercial portal” which is claimed to be a legitimate business purpose. This may be an admission that the purposes was for use with a pay-per-click or parking page. If it is not then the relevant commercial purpose is not explained. Further, the Domain Names would appear not to have been used for over 4 years for any purposes other than domain name parking and pay-per-click.
6.18 In the circumstances, by far and away the most likely explanation of these facts is that the Domain Names were registered and then used with a view to trading off the reputation that the Complainant had generated and/or would generate in the GUGGENHEIM and GUGGENHEIM ABU DHABI marks by using that fame to draw Internet users to the pay-per-click sites operating from the Domain Names. Such use falls within the scope of bad faith at paragraph 4(b)(iv) of the Policy (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra) and justifies a finding of bad faith registration and use.
6.19 Further evidence of this bad faith is provided by the timing of the registrations. The Panel accepts the Complainant’s evidence that it announced its plans for an Abu Dhabi sited museum in July 2006 and that the timing of the registrations less than two months later were not mere co-incidence. The obvious inference from this timing is that the registration of the Domain Names were opportunistic and made with a view to profiting in the future in some manner by the associations between the Domain Names and the Complainant’s marks.
6.20 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <abudhabiguggenheim.com>, <guggenheim-abudhabi.com>, and <guggenheimabudhabi.com>, be transferred to the Complainant.
Matthew S. Harris
Dated: March 17, 2011
1 The email is exhibited to the Complainant. A Google translation of the second line of the email reads: “Elite Ideas SL is performing all work necessary for the creation of a commercial portal to the Internet domain name above.”
3 However, given the distinctive nature of the Domain Names, even were this not so and the Domain Names were acquired at a later date, the decision in this case is unlikely to have been different.
4 See the explanation as to how that term is understood (particularly in cases where the domain name reproduces the entirety of the Complainant’s mark) in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.