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Fondation Le Corbusier v. Mercado M. [2004] GENDND 1496 (11 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondation Le Corbusier v. Mercado M.

Case No. D2004-0723

1. The Parties

The Complainant is Fondation Le Corbusier, Paris, of France, represented by Dominique de Leusse, Avocat à la Cour, France.

The Respondent is Mercado M., of Caloocan City, Philippines and Scarborough Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <lecorbusier.com> (hereinafter also referred to as the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2004. On September 10, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 10, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2004. The Response was filed with the Center on October 4, 2004.

The Center appointed Alfred Meijboom as the sole panelist in this matter on October 25, 2004. 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

Charles Edouard Jeanneret, known under his pseudonym Le Corbusier is a world famous Swiss architect who died in 1965. Under the will of Le Corbusier the Complainant is the sole general devisee.

The Complainant holds “LE CORBUSIER” trademark registrations – both LE CORBUSIER word marks and device marks which includes the words LE CORBUSIER – in Germany, Benelux, Brazil, Canada, Chile, Denmark, Spain, the United States, Finland, France, Greece, India, Italy, Japan, Switzerland, Norway, the United Kingdom, Sweden and Venezuela. Most registrations were made for classes 16 (printed materials and photographs), 20 (furniture), 37 (restoration and construction of works of architecture), 41 (editing and publishing of films) and 42 (organization of conferences and expositions). The LE CORBUSIER trademarks have been filed since February 11, 1987.

The Complainant claims that it registered 43 domain names which include LE CORBUSIER, such as <lecorbusier.net>, <le-corbusier.com> and <lecorbusierfoundation.com>, over the years following the first registration of fodationlecorbusier.asso.fr on December 12, 1998.

The Respondent registered the domain name <lecorbusier.com> on January 15, 1999. The expiration date of the domain name is January 15, 2014.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

(i) The Complainant contends that the Domain Name is identical to the trademark in which the Complainant has rights for the following reasons:

- The Domain Name reproduces exactly the name of Le Corbusier without any adjunction.

- The Complainant uses the LE CORBUSIER trademark for, inter alia, the management of museums dedicated to Le Corbusier in Paris, for exhibitions world wide, for the publication of books, on its website and for licensing agreements with various firms.

- According to French law a person has a right in its name, which is protected against usurpation. The Panel shall render a decision on a Complaint on the basis of “… any rules and principles of law that it deems applicable” and French law is applicable to the Complainant.

- For the purpose of the Policy it is not required that a trademark is registered, the mere reproduction of the name Le Corbusier is sufficient.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name for the reasons mentioned below.

- The circumstances that the name Le Corbusier is famous, that the Complainant has registered the LE CORBUSIER trademark in the United States and many other countries, and that the Complainant has not consented to the registration of the Domain Name constitute a prima facie showing that the Respondent has no rights nor a legitimate interest in the Domain Name.

- The Complainant states that the Respondent does not use the Domain Name in connection with a bona fide offering of goods and services for the following reasons:

- Respondent’s website shows a picture of the Heidi Weber museum, which is a Swiss device mark held by the Complainant.

- Respondent’s website shows several reproductions of Le Corbusier’s works. These reproductions have been made without any authorization of the Complainant, who is the owner of all the rights related to the name Le Corbusier.

- Respondent’s website shows Le Corbusier’s signature, which is used without the Complainant’s authorization.

- The goal of Respondent’s website is to lead the public to different commercial websites, which sell works of Le Corbusier.

- The Respondent offers “@LeCorbusier.com” email accounts. It is possible to purchase an email address “mail plus” for USD 1.67 per month (annual price USD 19.99) or an email address “mail plus total protection” for USD 2.33 per month (annual price USD 27.99).

- The trademark LE CORBUSIER is used as a key word for the website and the name Le Corbusier is included in the “meta names”.

- The source code indicates that the title of the home page is “Le Corbusier: the great Swiss architect”.

- Respondent’s business is not commonly known by the name Le Corbusier.

- The Complainant contends that the Respondent does not make genuine and fair use of the name Le Corbusier based on the ground set out below:

- Because of the presentation and the use of the name Le Corbusier in the title, the website presents itself and appears to the public to be the official website of the great architect.

- The Respondent has an email address information@lecorbusier.com which appears to be the official source of information about Le Corbusier.

- The Domain Name creates confusion with Complainant’s domain names, especially the ones simply containing lecorbusier or le-corbusier.

- The website uses the name Le Corbusier as a pretence, since it only contains a few paragraphs of text about Le Corbusier and his work. The great majority of links link to websites about other architects or architecture in general, only 14 percent of the links lead to websites relating to Le Corbusier.

(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith for reasons as stated below:

The Respondent has not responded to the letters sent by the Complainant.

- Since the website contains biographical details on Le Corbusier, like his date of birth and the day he died, it presents itself as “the official Le Corbusier website”.

- The Respondent cannot ignore that the name Le Corbusier constitutes an asset and that she has no rights in it.

- The Respondent has registered the Domain Name for a period of fourteen years. This unusual length demonstrates that the Respondent wants to take unlawful possession of the name Le Corbusier and wants to disturb the relationship between the Complainant and the public.

- The Respondent uses materials which infringe on the trademark and copyrights of the Complainant.

B. Respondent

The Respondent has put forward the following arguments to refute the Complaint.

(i) With respect to the Complainant’s position that the Domain Name is identical to its trademark the Respondent remarks that:

- She was not aware of the existence of the Complainant’s foundation and its trademarks before receiving an email from the Complainant in 2001.

- She has not made and will not make a false representation of the Complainant’s foundation to sow confusion.

- She renders services that promote the work Le Corbusier not the trademark. Le Corbusier is famous as an architect, not as a trademark.

- It is speculative that the phrase “The Site of Le Corbusier” appears to the public as the “Official” website. She has never made such a claim, nor is such a connotation found on the website.

- She uses information@lecorbusier.com to inform Internet users about her website.

(ii) The Respondent contends the following regarding the Complainant’s claim that the Respondent has no rights or legitimate interests in the Domain Name.

- She has a right to comment and publish articles about Le Corbusier’s artistic abilities expressed in his architectural work. The website renders bona fide and legitimate services that promote Le Corbusier as an architect.

- The Complainant’s trademarks were registered as of 1987, which is 22 years after Le Corbusier’s death. The Complainant’s inaction in this period allows others to publish and write about Le Corbusier’s works. A website on the Internet is no different from publishing articles. The Respondent does not tarnish the good name of Le Corbusier or any institution which stand by his good name.

(iii) The Respondent contends that she has not registered the Domain Name nor is using it in bad faith for the reasons mentioned below.

- She has no intention nor has she ever tried to profit from the Domain Name. She has never tried to sell, lease or transfer the Domain Name.

- When she registered the Domain Name she was not aware of the existence of Complainant, but rather knew Le Corbusier as an architect. She acquired the Domain Name to promote Le Corbusier’s work.

- The Domain Name leads to a noncommercial website dedicated to Le Corbusier. The Respondent uses free hosting services offered by various providers.

- She does not intend to confusingly lead Internet users to another website that purports to represent the Complainant.

- She does not claim any association, affiliation or sponsorship with the Complainant.

- The picture of the Heidi Weber museum is a direct link to the website of this museum and does not constitute illegal use of the trademark. The practice of linking to unaffiliated websites has been going on since the birth of the Internet.

- The Respondent believes that the pictures of the works of Le Corbusier, by the Complainant referred to as “reproductions”, belong to the public domain, because those are found on other websites that are not associated with the Complainant. If the Complainant can show evidence of copyright ownership of the pictures and the signature the Respondent will remove these from the website.

- There is a difference between profiting from a domain name and profiting from a trademark. The email services supposedly provided do not financially benefit the Respondent. The services are provided to benefit the admirers of Le Corbusier. Payment for the advanced features goes directly to Everyone.net. The Respondent has no business association with and does not act as an agent of Everyone.net.

- The Respondent’s use of the Domain Name is fair and genuine.

- All links, including the commercial links, lead to informative websites. The Respondent does not have any form of business association or affiliation with nor formally endorses those websites.

- The domain names held by the Complainant were acquired after the Respondent had acquired the Domain Name.

- Internet users have never been confused, since the Respondent does not claim to represent the “Fondation Le Corbusier”.

- The Respondent has never used Le Corbusier as a trademark and believes that the name of Le Corbusier belongs to the public domain as a name of a deceased public figure after he died in 1965.

- The search engine at google.com indicates that more than 17,000 web pages publish the year of death of Le Corbusier, more than 8,000 pages refer to Le Corbusier as an architect and an artist and more than 30,000 pages refer to Le Corbusier as an architect. By sampling the Respondent has found none of these claim official representation.

- The majority of the links point to websites which are dedicated to Le Corbusier.

- The length of registration evidences that the Respondent has no intention of transferring the Domain Name for profit.

6. Discussion and Findings

Applicable law

The task of the Panelist is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law that it deems applicable. The Complainant contends that French law is applicable to the Complainant and therefore the Panelist may decide that French law is applicable to this case. The Panelist decides that since the Respondent has no known relevant connection with France, and the website under the Domain Name is not in French nor specifically directed to France, French law is not applicable to this case.

Subject and scope of procedure

In her Response the Respondent states several times that, since Le Corbusier was a world famous architect and after his death became part of human history, she has a right to publish articles about and comment Le Corbusier’s works. The Panelist finds it necessary to stress that this right claimed by the Respondent is not at stake in this procedure. The Complaint is directed against the Domain Name and it is the Domain Name which is the subject of this case.

Furthermore, the Complainant contends that the Respondent infringes upon its copyrights, which Le Corbusier has left to the Complainant. The Panelist wishes to remark that alleged copyright and trademark infringement in the contents of Respondent’s website does not fall within the scope of this procedure. As far as the Complainant mentions such alleged copyright and trademark infringement to demonstrate the Respondent’s bad faith, the Panelist will address the issue in that respect.

A. Identical or Confusingly Similar

The Complainant has registered various LE CORBUSIER trademarks in many countries worldwide. Since “.com” should be disregarded, the domain name <lecorbusier.com> is identical to a trademark to which the Complainant has rights.

B. Rights or Legitimate Interests

In her Response the Respondent mentions that the LE CORBUSIER trademarks were only registered in 1987, 22 years after the death of Le Corbusier. The Panelist does not find this relevant. It is not disputed that the Complainant held various LE CORBUSIER trademarks at the time of the registration and the use of the Domain Name.

The fact that the name Le Corbusier is famous, that the Complainant has registered the LE CORBUSIER trademark in the United States and many other countries and that the Complainant has not consented to the registration of the Domain Name might constitute prima facie evidence that the Respondent has neither rights nor a legitimate interest in the Domain Name. However, the Respondent still has the opportunity to show that she does have a right or a legitimate interest.

The Complainant puts forward a large number of circumstances, which in the Complainant’s opinion demonstrate that the Respondent does not use the Domain Name in connection with a bona fide offering of goods and services and does not make genuine and fair use of the name Le Corbusier.

In short the Complainant accuses the Respondent of trademark infringement regarding the Swiss device mark displaying the Heidi Weber museum, copyright infringements, linking to commercial websites, commercially exploiting the Domain Name by offering @leCorbusier.com email accounts, thus presenting Respondent’s website as “the official website”, creating confusion with the Complainant’s domain names and using the name Le Corbusier as a pretence.

Considering that a picture of the Heidi Weber museum is a Swiss device mark and the Respondent’s home address is in the Philippines and/or Canada and that the Respondent’s website is not specifically directed at Switzerland, plus the fact that the picture is used as a link to the website of the Heidi Weber museum, the Panelist doubts whether the Respondent infringes the Complainant’s trademark rights to the HEIDI WEBER mark.

Assuming that the Complainant is the copyright holder of the pictures of Le Corbusier’s works and of his signature, the Panelist is not convinced that the display thereof constitutes copyright infringement under the laws applicable to this case, taken into account the possibility the Respondent may rely on copyright exceptions, such as fair use. On top of that the Respondent offers to remove the pictures and the signature in case they infringe upon the Complainant’s copyright.

Considering Respondent’s website in its entirety the Panelist does not agree with the Complainant that the only goal of the Respondent’s website is to lead to a commercial website. The Panelist is of the opinion that the Respondent sincerely uses her website to promote the work and fame of Le Corbusier. However, the Respondent did not deny that the website contains links to commercial website which offers Le Corbusier’s work for sale, which as such constitutes commercial use which may benefit the Respondent.

Further, the Panelist is of the opinion that offering lecorbusier email accounts to the general public is a commercial activity for which the Respondent – as sole owner of the Domain Name – is fully responsible. In the opinion of the Panelist it is not relevant if the Respondent does or does not (as she claims) benefits of the sale of email addresses, as it is obvious that the Respondent must have authorized Everyone.net to issue the email addresses. As such, it constitutes ‘commercial gain’ in the sense of the Policy. In this respect the Panelist agrees with the findings of the panel in the case Experience Hendrix LLC v. Denny Hammerton and The Jimi Hendrix Fan Club (WIPO Case No. D2000-0364).

In the Panelist’s opinion, the fact that Respondent’s website under the Domain Name is identical to a number of trademarks of Complaint, that Respondent uses “information@lecorbusier.com” as her general e-mail address, and enables the general public to obtain lecorbusier email addresses support the Complainant’s position that the Respondent’s website is presented and appears to the public as “the official” website on Le Corbusier, and therefore of Complainant, as successor of Le Corbusier’s estate.

The Panelist agrees with the Respondent that it should be possible to maintain a website which is dedicated to Le Corbusier and his work. However, the fact that the Respondent shows that search engines give thousands of hits on Le Corbusier illustrates that it is not necessary to use the Domain Name for these purposes as non-infringing domain names are readily available.

Considering all the above, and because the Respondent has not asserted that she is generally known by the Domain Name or that this is likely to be the case, the Panelist concludes that the Respondent does not have a legitimate interest in the Domain Name as meant in Paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

It is clear and undisputed that the Respondent when she registered the Domain Name had the famous Swiss architect Le Corbusier in mind. The Respondent claims she was not aware of the existence of Complainant or its trademark registrations. In this respect the Complainant states that because Le Corbusier is world famous, the Respondent should have realized that the name Le Corbusier was an asset in which she had no rights. Given Complainant’s fame, Respondents interest in Le Corbusier, and the failure of the Respondent when registering the domain name to check if there were any third party trademark rights, the Panelist therefore concludes that the Respondent has registered the Domain Name in bad faith.

To demonstrate that the Respondent has not only registered the Domain Name in bad faith, but is also using it in bad faith, the Complainant puts forward the following arguments. The Complainant repeats that the Respondent claims to operate “the official Le Corbusier website” and infringes its copyright. Further the Complainant contends that the fact that the Respondent has not responded to the sent summons letters and that the Domain Name has been registered for a period of 14 years indicates use in bad faith.

The Panelist does not find bad faith in the fact that the Domain Name was registered for a period of 14 years. If the Respondent would have registered the Domain Name for a shorter period it is likely that she would have renewed the registration, all to the same effect.

Further, the Panelist is not at all convinced that the Respondent infringes Complainant’s copyright, so that this can also not constitute bad faith registration and use.

As set forth above, the Panelist does, however, agree with the Complainant that the use of the Domain Name for the website may give the general public the impression that it is a “official website” and for a commercial purpose constitutes use in bad faith.

7. Decision

For all the foregoing reasons, the Panelist decides that the Domain Name <lecorbusier.com> registered by the Respondent is identical to the Complainant’s trademarks, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent has registered and uses the Domain Name in bad faith, for which reason the Panelist orders that the registration of the Domain Name be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Dated: November 11, 2004