Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Solomon R. Guggenheim Foundation, New York, NY, USA ("Complainant"). The Respondent is Jesus J. Ruiz Zuazu, Tafalla, Es Navarra, ES ("Respondent").

The domain names at issue are "GUGGENHEIMVIRTUAL.COM", "VIRTUALGUGGENHEIM.COM", and "VIRTUALGUGGENHEIM.NET", registered with CORE-11.

The Panelists certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as panelists in this proceeding.

Honorable Tyrus Atkinson, Honorable Frederick M. Abbott and Honorable Carolyn Marks Johnson sit as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/01/2000; The Forum received a hard copy of the Complaint on 08/07/2000.

On 08/09/2000, CORE-11 confirmed by e-mail to The Forum that the domain names, "GUGGENHEIMVIRTUAL.COM", "VIRTUALGUGGENHEIM.COM", and "VIRTUALGUGGENHEIM.NET", are registered with CORE-11 and that the Respondent is the current registrant of the name. On 08/24/2000, CORE-11 confirmed by e-mail to The Forum and to Respondent that the terms of his registration agreement are in English.

On 08/10/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/30/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e -mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@guggenheimvirtual.com, postmaster@virtualguggenheim.com, and postmaster@virtualguggenheim.net.

On 8/30/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On 09/21/2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, The Forum appointed Honorable Tyrus Atkinson, Honorable Frederick M. Abbott and Honorable Carolyn Marks Johnson as Panelists.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notic e to Respondent" and that it achieved notice. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the pa nel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain names be transferred from Respondent to Complainant.

Complainant contends that the "GUGGENHEIMVIRTUAL.COM", "VIRTUALGUGGENHEIM.COM" and "VIRTUALGUGGENHEIM.NET" domain names are identical and confusingly similar to Complainant’s trademarks and services marks because:

B. Respondent

No response complying with the Rules was submitted by the established deadline. Respondent’s initial communication to The Forum suggesting that his registration agreement was in Spanish was refuted by the registrar, and following such notification from the registrar, Respondent submitted no further response to the Complaint. Therefore, the Panel exercised its authority to decide the dispute based upon the complaint. ICANN Rules ¶ 5(e), ¶ 11(a).

The Solomon R. Guggenheim Foundation was established in 1937, and currently operates museums in New York City, Berlin and Bilbao, in addition to an on-line project called the GUGGENHEIM VIRTUAL MUSEUM. The GUGGENHEIM VIRTUAL MUSEUM consists of navi gable three-dimensional spatial entities accessible on the Internet as well as real-time interactive components installed at the various Guggenheim Museum locations. Prior to its debut the GUGGENHEIM VIRTUAL MUSEUM received extensive press coverage around the world, including Italian, French, Scottish Canadian and American publications. As a result, the GUGGENHEIM VIRTUAL MUSEUM mark is widely recognized.

Complainant is the exclusive owner of U.S. Trademark Registration No. 1919593 for GUGGENHEIM MUSEUM in International classes 14,16, 25, 28, 41 and 42. Complainant also exclusively owns U.S. Trademark Registration No. 2285144 for "GUGGENHEIM MUSEUM" in International classes 21, 24 and 28. Complainant has registered or applied to register the trademark and service mark "GUGGENHEIM" - a component of the "GUGGENHEIM MUSEUM" and "GUGGENHEIM VIRTUAL MUSEUM" marks - in 32 countries throughout the world.

The GUGGENHEIM MUSEUM and GUGGENHEIM trademarks are strong and internationally famous marks. The GUGGENHEIM MUSEUM mark was first used in commerce in 1952 and has since become internationally well known. This is confirmed by the attendance figures for the museums in 1999, with the number of visitors exceeding 2,400,000. Of these, over 1,400,000 visited a museum outside of the United States. Moreover, each of the Guggenheim Museums throughout the world is represented on the World Wide Web.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Complainant has offered evidence in support of its claims. Respondent has given no response. The failure of Respondent to submit a response permits the inference that the Complainant’s allegations are true. ICANN Rule 14(b). The failure t o respond also permits the inference that the Respondent is aware that its web site is misleading and is intentionally diverting business from the Complainant. Id.

The Complainant has registered the trademarks "GUGGENHEIM" and "GUGGENHEIM MUSEUM" in the United States. Complainant also asserts common law trademark rights in the "GUGGENHEIM VIRTUAL MUSEUM" mark, which it has in fact registered in various countr ies around the world. Common law rights alone are sufficient to support a claim brought under ICANN Policy. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a r egistered trademark and that it is sufficient to show common law rights).

Respondent has used Complainant’s distinctive and well known "GUGGENHEIM" mark in its domain name in combination with terms commonly associated with Complainant. Similar uses of a Complainant’s mark have been found to make a domain name confusingly sim ilar to the registered mark. See, e.g. Marriott Int’l v. Café au lait, FA 93670 (Nat. Arb. Forum March 13, 2000) (finding that Respondent’s domain name "marriott-hotel.com" is confusingly similar to Complainant’s mark "Marriot"); see also Hitachi, Ltd. V. Fortune Int’l Dev. Ent., D2000-0412 (WIPO July 2, 2000) (finding that the domain name"hitachi2000.net" is confusingly similar to Complainant’s mark).

Based on the facts noted above the panel finds that Respondent’s domain names are confusingly similar to the Complainant’s registered trademarks "GUGGENHEIM" and "GUGGENHEIM MUSEUM", as well as to the "GUGGENHEIM VIRTUAL MUSEUM" mark in which Complaina nt has asserted common law rights.

Respondent has not asserted any rights or legitimate interests in the disputed domain names.

The domain names do not reflect the name by which Respondent is commonly known. Policy ¶ 4(c)(ii). Respondent is not using the disputed domain names for a bona fide offering of goods or services nor making a legitimate noncommercial or other fai r use of the sites. Policy ¶ 4(c)(i). Instead Respondent is planning to use the sites to offer competing services in a field in which the Complainant is well known and respected.

For these reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

Respondent has not denied that it acted in bad faith when registering and using the disputed domain names. Bad faith may be evidenced by the circumstances outlined in the ICANN Policy ¶ 4(b)(i-iv). However these circumstances are not exclusive and other actions taken by a Respondent may be considered evidence of bad faith. Policy ¶ 4.

Respondent was aware of the goodwill and other value associated with Complainant’s marks at the time he registered the disputed domain names. This is evidenced by the fact that Complainant is well known in the field of visual arts, the very same field in which the Respondent plans to use the web sites. Moreover, the planned use of the domain names would intentionally attract customers to Respondent’s sites by creating confusion as to the source or sponsorship of the site’s content.

The fact that Respondent has not yet developed the sites in question is itself evidence of bad faith use of the sites. It has been held that "it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being us ed in bad faith." Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

Finally, Respondent offered to sell the domain names to which he has shown no legitimate interest or right to the holder of the marks in question for an amount in excess of the costs of registration. Although the offer to sell was in response to a ceas e and desist letter, Respondent’s failure to make appropriate use and development of the registered domain names permits the inference that Respondent registered the domain names for the purpose of selling them for a profit, which is also evidence of bad faith.

In light of the facts noted above the panel finds that Respondent registered and is using the domain names in bad faith.

Because the Complainant has established all three elements required by Rule 4(a) of the ICANN Policy, the panel decides to grant the relief requested. It is ordered that the domain names GUGGENHEIMVIRTUAL.COM", "VIRTUALGUGGENHEIM.COM", and "VIRTUAL GUGGENHEIM.NET" be transferred from the Respondent to the Complainant.