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Gehry Partners LLP v. Titan.net [2005] GENDND 1435 (25 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gehry Partners LLP v. Titan.net

Case No. D2005-0583

1. The Parties

The Complainant is Gehry Partners LLP Los Angeles, California, United States of America, represented by Latham & Watkins, United States of America.

The Respondent is Titan.net, Little Ferry, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gehry.com> is registered with Dotster, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2005. On June 7, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name(s) at issue. On June 7, 2005, Dotster, Inc. 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. The Center verified that 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 June 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 11, 2005. 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

Frank Gehry, is a well known architect who has been working and making continuous commercial use of his name in the field of architecture for over fifty years. He designed the famed Guggenheim Museum in Bilbao, Spain and the Walt Disney Concert Hall in Los Angeles, United States of America, won the 1989 Pritzker Architecture Prize (considered to be the world’s premier architecture prize), and was the recipient of the American Institute of Architects Gold Medal, the highest honor the American Institute of Architects confers to an individual. Gehry is also well known for his work in industrial design, including his design of furniture, such as his famous cardboard chairs, jewelry, lighting and other household items, all of which utilize the “Gehry” mark. Complainant states that as a result of his renown, the identity and work of the Complainant is easily recognizable by the term GEHRY alone.

Complainant states that he has acquired common law trademark rights in the GEHRY mark. In addition, the Complainant has a pending application in the United States Patent and Trademark Office for the trademark GEHRY.

On January 26, 2000, the Respondent registered <gehry.com> with Dotster, Inc., long after Mr. Gehry’s name had become prominent and associated by the public and in the industry with his work and services. Complainant states that given the international acclaim of Mr. Gehry’s name and work, the Respondent must have known of Complainant’s reputation at the time the Domain Name was registered, especially because the Complainant, the Respondent and the Registrar are all located in the United States.

Complainant states that the Domain Name is currently “dormant”.

Complainant states that attempts to contact the Registrant by mail and phone concerning this matter were unsuccessful as the contact information was incorrect.

5. Parties’ Contentions

A. Complainant

With respect to Paragraph 4(a)(i) of the Policy Complainant contends that:

(1) The Domain Name is identical to the Complainant’s name, in which he has a common law trademark.

(2) The Respondent’s use of “www.gehry.com” infringes upon the name and common law trademark rights of Complainant and causes a likelihood of confusion under the Policy and as defined by Section 2(d) of the United States Lanham Act, 15 U.S.C. Section 1052(d).

(3) A likelihood of confusion is apparent as the Domain Name in dispute is identical to Complainant’s mark GEHRY, other than the “.com” suffix. The addition of that suffix does not distinguish the Domain Name from the Mark.

With respect to Paragraph 4(a)(ii) of the Policy Complainant contends that:

(1) Complainant’s trademark in his name is so well known that it is not reasonably possible for Respondent to demonstrate any bona fide legitimate interest in a domain name that includes Complainant’s mark.

(2) The Respondent cannot establish any rights or legitimate interests in the Domain Name because the Respondent is not commonly know by the Domain Name, the Domain Name is not being used in connection with a bona fide offering of goods or services nor is Respondent making a legitimate non-commercial use of the Domain Name.

(3) The Domain Name at issue here was registered on January 26, 2000 decades after the Complainant had acquired common law trademark rights in his name.

(4) Respondent has no relationship with or permission from Complainant for the use of his name or trademark. The Complainant has not transferred or licensed any rights with respect to the Registered Mark to the Respondent and the Respondent, Titan.net, a business, is not commonly known by the Domain Name.

(5) Respondent has no rights or legitimate interests in respect of the Domain Name.

With respect to Paragraph 4(a)(iii) of the Policy Complainant contends that:

(1) Respondent registered and is using the Domain Name in bad faith in violation of the Policy and the rights of the Complainant.

(2) Given the international notoriety of Complainant’s name, the Respondent must have known about Complainant’s well known mark when the Domain Name was registered

(3) It can be inferred from the circumstances that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. The fact that the Domain Name was registered by Respondent long after the commercial distinctiveness in Complainant’s name had been established is an indication that the Respondent was hoping to sell the site to the Complainant or a competitor and profit from the sale.

(4) The Respondent’s holding of the infringing Domain Name even without active use constitutes use in bad faith, especially where the Respondent has failed to respond to communications and there is no indication that the Respondent is an active business.

(5) The Respondent’s passive holding the Domain Name is preventing the Complainant from using it in connection with his architecture work, resulting in immediate and irreparable damage on his ability to market his work and services.

B. Respondent

The Respondent did not file a response. The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the Respondent’s default, paragraph  4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>, Transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (<brookehogan.com>, Denied).

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The first issue to be decided is whether the Complainant has trademark rights in the mark which is his name. Personal names which function as trademarks are protected under the UDRP.

There are numerous instances of famous names being protected as trademarks when the names have been found to be an indication of the source of the goods. Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (<juliaroberts.com>, Transfer); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (<jeanettewinterson.com> among others, Transfer); Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (<michael-crichton.com>, Transfer).

To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source.

The Panel finds that the Complainant does have trademark rights in GEHRY due to his professional renown and due to the 50+ years of continuous use in commerce of his name as a mark in connection with his architectural services and his industrial design products and services. The name GEHRY through long and continuous use in commerce has acquired distinctiveness as a mark.

The Panel also finds that that the domain name <gehry.com> is confusingly similar to the common law mark in which Complainant has rights. “Gehry” is the dominant portion of Complainant’s registered mark and of the disputed Domain Name.

The disputed Domain Name differs from Complainant’s common law mark only in that it contains the non descriptive gTLD domain name suffix “.com”. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“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”).

B. Rights or Legitimate Interests

There is no evidence in the record to indicate that the Respondent used, or made preparations to use, the Domain Name at issue in connection with a bona fide offering of goods or services. Neither is there evidence that the Respondent as an individual, business, nor other organization has ever been commonly known by the Domain Name. The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. There is no evidence in the record that the domain name has ever been an active site.

Further, the Complainant alleges that the Respondent has no relationship with or permission from Complainant for the use of his name or trademark and, the Complainant has not transferred or licensed any rights with respect to the Registered Mark to the Respondent.

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. Transfer; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Transfer. The Panel finds that the circumstances enumerated above clearly establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue.

As Respondent has not at all demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Policy paragraph 4(b) sets forth four criteria for bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel finds that the Domain Name at issue was registered in bad faith based on the following:

- The Respondent does not and has not conducted any legitimate commercial or non-commercial business activity under the GEHRY mark for the over five year period since the domain name was registered (i.e., since January 26, 2000);

- The Complainant’s mark was well known well in advance of the Respondent’s registration of the Domain Name and the Respondent, therefore, must have known of Complainant’s GEHRY mark at the time of the registration of the Domain Name;

- The Respondent did not file a Response to the Complaint; and

- The Respondent has never been known by the name GEHRY.

For the above reasons, the Panel concludes that the Domain Name at issue was registered in bad faith.

As to whether the Domain Name at issue is being used in bad faith, the panel notes in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that:

the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

As discussed in Telstra, the panel must decide what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b) (i), (ii) and (iii) can constitute a domain name being used in bad faith.

The relevant circumstances in this case are:

- The Complainant had a well know trademark at the time the Respondent registered the Domain Name;

- The record contains no evidence of any actual or contemplated good faith use by Respondent of the domain name during the over five years that the Domain Name has been registered;

- The Panel can think of no use of the domain name by the Respondent that would not be infringing use.

As Complainant alleges, it is well established that the lack of use of a domain name that adopts a trademark, including those in a famous name, such that it cannot be registered or used by the Complainant and legitimate licensees, establishes that the domain name is being used in bad faith. Bernado Neustadt v. Link Commercial Corp., WIPO Case No. D2000-1256 (concluding passive holding of domain name adopting name of famous journalist to be in bad faith); Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867 (concluding passive holding of domain name adopting name of famous actress to be in bad faith).

For the above reasons, the Panel finds that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith”. Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith, and Complainant has proven the third of the three elements required by the Policy.

7. Decision

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 Name <gehry.com> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist

Date: July 29, 2005