DECISION

Josephine Wall v. Laura Silva

Claim Number: FA0203000105899

PARTIES

Complainant is Josephine Wall, Poole, UK (“Complainant”) represented by David O'Reilly. Respondent is Mystic Dreams, San Diego, CA (“Respondent”) Laura Silva.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is<josephinewall.com>, registered with Melbourne IT.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 15, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 19, 2002, Melbourne IT confirmed by e-mail to the Forum that the domain name <josephinewall.com> is registered with Melbourne IT and that the Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@josephinewall.com by e-mail.

A timely Response was received and determined to be complete on April 5, 2002.

On April 12, 2002, Complainant filed an untimely additional submission.  On April 15, 2002, Respondent filed an untimely additional submission. 

On April 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

Complainant asserts that it has rights in the mark contained within the identical or confusingly similar domain name that Respondent registered.  Complainant further contends that Respondent has no rights or legitimate interests in the mark contained in its entirety within the domain name.  Complainant then urges that Respondent acted in bad faith.

B. Respondent makes the following response allegations:

Respondent urges that she had rights in the mark used in her domain name before the interest taken in the mark by Complainant.  Respondent urges that she obtained rights in the domain name through bona fide use.  Respondent urges that she did not act in bad faith.

C. Complainant’s Additional Response Complainant notes that her agent for promotion in the United States is Art Impressions, Inc.

FINDINGS

            The Panel makes the following relevant findings:

A. Complainant is an artist who has had an international market in mystical and

“fantasy” paintings for 30 years.  From Dorset, United Kingdom, Complainant has common-law rights in her own name when used in association with her works. 

B. Complainant has not given Respondent rights to use her name and Respondent

has not shown any such rights.  

C. Complainant sent Respondent a cease and desist letter but received no response from Respondent.

D. Complainant is promoted in the United States by Art Impressions, Inc. 

E. Respondent, who is from California, filed the domain name

      <josephinewall.com> March 25, 2001.

F. Respondent has sold Josephine Wall paintings without apparent right to do so

      since February of 1999 at her company “Mystic Dreams.”

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that 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.

Identical to and/or Confusingly Similar

 

Complainant asserts that she has common law rights in the name JOSEPHINE WALL and that she is an internationally known artist known for creating mystical and “fantasy” paintings for the last 30 years; and that, therefore, her named has accrued secondary meaning.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the Complainant that common law trademark rights exist).

The domain name registered by Respondent, <josephinewall.com>, is identical to Complainant’s JOSEPHINE WALL mark and the disputed domain name incorporates the entirety of Complainant’s mark, merely adding the generic top-level domain name “.com.”  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Respondent has “promoted” Complainant’s artwork and claims to be the sole distributor of Complainant’s artwork in the United States.  Respondent does not give any evidence that she has a license to use Complainant’s name and mark. One cannot acquire rights by unilateral decisions to use the mark of another without permission.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that as Josephine Wall, the artist, she has rights in the use of her own name for the sale of her own art. Complainant urges that Respondent is using the <josephinewall.com> domain name to sell goods that are not JOSEPHINE WALL paintings and is therefore using Complainant’s mark to sell competing goods.  The Panel may find that the use of Complainant’s mark to attract Internet users to a website that sells competing goods is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

The Panel also may find that Respondent, known to the panel as Laura Silva and Mystic Dreams, is not commonly known by JOSEPHINE WALL or <josephinewall.com> and therefore does not acquire rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) by unauthorized use of the mark of another.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because Respondent is using Complainant’s JOSEPHINE WALL mark to sell goods that are not produced by Complainant and  Complainant urges that this activity will tarnish Complainant’s goodwill.  Furthermore, Complainant maintains, Respondent is using Complainant’s mark to attract Internet users to Respondent’s website to sell competing products.  The Panel may find that none of these uses are considered to be a legitimate noncommercial or fair use by Respondent of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).

Respondent asserts that she is using the disputed domain name to promote Complainant’s artwork.  Respondent notes that she bought Complainant’s artwork for resale from Complainant’s distributor in England.  Respondent states that 50% of the artwork at the disputed domain name is Complainant’s genuine signed limited edition artwork, and that Complainant’s artwork generates the most sales.  Respondent also notes that its website is the largest single retailer of Complainant’s products on the Internet.  Respondent asserts that this establishes that she is engaging in a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  Respondent did not mention whether she was an authorized dealer of JOSEPHINE WALL merchandise.  However, Respondent has not shown that she has a license to do any of the above things and without such license she did not acquire rights to use Complainant’s name to sell Complainant’s products and others.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith because Respondent is using the disputed domain name primarily to mislead Internet users by creating a likelihood of confusion as to the source, sponsorship and affiliation of the goods offered at <josephinewall.com> for Respondent’s commercial gain.  The Panel may find that this type of behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

Complainant asserts that Respondent’s actions have disrupted its business because Respondent is attracting Complainant’s customers to Respondent’s website where competing goods are sold.  The Panel may find that this type of behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Despite Respondent’s contention that all of her efforts have been in good faith in order to promote Complainant’s artwork, Respondent has shown no right to act as an agent of Complainant and has shown no right to use Complainant’s name in Respondent’s business dealings.  Further, although Respondent asserts that her efforts dramatically increased the market for Complainant’s work in the United States, Respondent makes no showing that Complainant acquiesced to this activity under any circumstances giving rights to Respondent to act. In addition, Respondent asserts that her website does not mislead Internet users into purchasing artwork not created by Complainant and that Respondent regularly “turns in” people who attempt to infringe on Josephine Wall’s copyright.  Respondent further notes that she has not disrupted Complainant’s business but that instead she has helped it become popular in the United States market. But under the facts of this case, Respondent cannot rely on those cases where partnerships are assumed due to the parties’ prior dealings and understandings because Complainant has expressly denied such dealings and understandings and Respondent has shown no such dealings and understandings here.  See Gorstew Ltd. & Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because Respondent and Complainant are not truly competitors, but in fact are business partners where Respondent is Complainant’s agent and was acting in good faith on behalf of Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having found that all three of the required showings have been satisfied and that the relief sought by Complainant should be granted; it is accordingly ORDERED that the domain name <josephinewall.com> be transferred from Respondent to Complainant Josephine Wall.

Hon. Carolyn Marks Johnson, Panelist
Dated: April 29, 2002.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/630.html