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The Baltimore Museum of Art, Inc. v. Mo Domains [2005] GENDND 1658 (1 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Baltimore Museum of Art, Inc. v. Mo Domains

Case No. D2005-0720

1. The Parties

The Complainant is The Baltimore Museum of Art, Inc., a Maryland corporation having its principal place of business in Baltimore, Maryland, United States of America. Complainant is represented by DLA Piper Rudnick Gray Cary US LLP, Washington, District of Columbia, United States of America.

The Respondent is Mo Domains, form of business organization unknown, having a place of business in New York, New York, United States of America. Respondent is not represented by counsel.

2. The Domain Name and Registrar

The disputed domain name <baltimoremuseumofart.com> (“Contested Domain Name”) is registered with Intercosmos Media Group, Inc., d/b/a directNIC.com, New Orleans, Louisiana, United States of America (“directNIC.com”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2005. On July 8, 2005, the Center transmitted by email to directNIC.com a Request for Registrar Verification in connection with the domain name at issue. On July 8, 2005, directNIC.com 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.

It is noted by the Panelist that in its verification response directNIC.com indicated that its records give the first name and last name of the registrant as “Trademarks are” and “domains” respectively, and that the registrant also used the name Mo Domains.

In response to a July 13, 2005 notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on July 14, 2005.

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”). The Panelist has independently reviewed the requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, Rules and Supplemental Rules.

The Complainant paid the required fee for a single-member Panel on time and in the required amount. No formal deficiencies having been noted subsequent to the filing of the Amendment to Complaint on July 14, 2005, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (“the Commencement Notification”) to Respondent on July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response by which Respondent could file a Response was established as August 9, 2005.

The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from the Registrar and by post/courier to the indicated postal addresses. Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, “to employ reasonably available means calculated to achieve actual notice to Respondent.”

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2005.

On August 12, 2005, the Center invited Richard Allan Horning to serve as Panelist and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. The Statement of Acceptance and Declaration of Impartiality and Independence was returned to the Center on August 18, 2005. On August 18, 2005, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date, in which the Panelist was formally appointed.

4. Factual Background

Complainant, the well known art museum located in Baltimore, Maryland, has enjoyed common law rights to the trademark, service mark, trade dress and trade name related to “THE BALTIMORE MUSEUM OF ART” since at least 1914. The Baltimore Museum of Art has one of the largest collections of paintings by the artist Henri Matisse; its collection also includes works by Picasso, Cezanne, Gauguin, van Gogh and Renoir. The museum’s sculpture garden features a 100-year survey of modern sculpture with works by Rodin and Calder in its three acre setting. The Baltimore Museum of Art is a popular tourist destination in Baltimore, Maryland, and is considered to be a cultural institution.

The Baltimore Museum of Art operates an official website at “www.artbma.org”. At the official website the public can access information about The Baltimore Museum of Art and its art collections.

The Panelist notes that The Baltimore Museum of Art website does not have any social or political messages.

Complainant alleges that because its long use of the mark in question, the providence of its collections and the extension of information throughout the world about the Museum and its collections, the common law mark “The Baltimore Museum of Art” has become famous and distinctive.

Little is known about the Respondent Mo Domains. Complainant alleges that the Respondent is the successor in interest to and was formerly known as “Domains for Life”, citing as evidence of this status the fact that both entities share the same telephone number.

The records attached to the Complaint show that in 2004 the Contested Domain Name was registered by “Domains for Life” on the same set of domain servers operated by directNIC.com later used by Mo Domains, with the same TCP/IP addresses. The “Domains for Life” administrative and technical contacts given when it was the registrant of the Contested Domain Name are given as “Domains containing, trademarks are not for sale.” The Mo Domains administrative and technical contacts given in its registration of the Contested Domain Name are “Domains containing federal, trademarks are not for sale.” The registration details for the Contested Domain Name registrations by both registrants give an identical record created on May 13, 2002.

Complainant asserts that under the name “Domains for Life” Respondent was the Respondent in two previous adverse ICANN UDRP arbitrations in the past year. See University of Alaska v. Domains for Life and Mike Kane, WIPO Case No. D2004-0564, The Bank of Nova Scotia v. Domains for Life, NAF Case No. FA0407000293126. In the Bank of Nova Scotia UDRP proceeding the disputed domain name, registered by “Domains for Life”, was pointed to anti-abortion websites, among others. In the University of Alaska UDRP proceeding the disputed domain names were pointed by “Domains for Life” to anti-abortion sites and to “www.selwynduke.com”, among other websites.

Complainant alleges that the Respondent has used the Contested Domain Name to link to websites containing “politically charged” material. These websites are “www.swiftvets.com”, “www.selwynduke.com”, and “www.thetruthpage.com”. At the time of the initiation of the present Complaint, the Contested Domain Name pointed to a commercial directory service used to direct traffic to commercial websites.

Complainant undertook an effort to resolve the matter prior to the initiation of the present proceedings. Complainant communicated by letter to Respondent, both by mail and email. The letter sent by overnight mail was returned as undeliverable; the email sent to Respondent’s then current email address was not returned.

The Panelist finds that the email from Complainant to Respondent is presumed to have been delivered and received. American Boat Co., Inc. v. Unknown Sunken Barge, No. 04-3388(8 Cir. 2005).

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

(i) Complainant specifically contends that the Contested Domain Name is confusingly similar to Complainant’s common law mark, as the Contested Domain Name consists of Complainant’s common law mark to which .com has been appended.

(ii) Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the Contested Domain Name. Respondent’s domain name registration occurred many years after Complainant began using the common law mark, and Respondent has no trademark registrations, or applications to register, of its own.

(iii) Complainant contends the Contested Domain Name should be considered as having been registered and used in bad faith for the following reasons:

1. Using the Contested Domain Name in the manner alleged in the Complaint, Respondent created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site.

2. The Contested Domain Name was registered for the purpose of disrupting the business of Complainant.

3. Respondent is not making a legitimate non-commercial or fair use of the Contested Domain Name.

B. Respondent

Respondent has not contested the allegations of the Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: “A Panel shall 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.” Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

2) that the Respondent has no legitimate interests in respect of the domain name; and

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical or confusingly similar to the trademarks of Complainant. See, e.g., Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; Microsoft Corporation v. Global Net 2000, Inc, WIPO Case No. D2000-0554; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; The Chancellor, Masters and Scholars of the University of Oxford v. CQ, WIPO Case No. D2001-0920. The fact that the Complainant does not have a federal trademark or service mark registration for BALTIMORE MUSEUM OF ART does not negate the fact that Complainant has exclusive rights to that trademark. See British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050.

Given the virtual identicality between Complainant’s mark and the Contested Domain Name, likelihood of confusion must be presumed. See, e.g., Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF0104. The addition of .com at the end of the Contested Domain Name does not distinguish the Contested Domain Name from Complainant’s common law trademark.

Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. Based on the case file, including the complaint in which the Complainant has shown prima facie that the Respondent has no legitimate interests in the Contested Domain Name, the Panelist finds that the Respondent has no rights or legitimate interests in the domain name.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth “in particular but without limitation” circumstances which “shall be evidence of registration and use of a domain name in bad faith.” Those circumstances are:

(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 website 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 website or location or of a product or service on your website or location.

The Complainant’s trademark has long been distinctive, and is widely known. It is to be presumed that Respondent was aware of the Complainant’s common law mark when Respondent registered the Contested Domain Name. See, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO Case No. D2001-1226; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.

The Respondent is using the Contested Domain Name in bad faith, by diverting Internet searchers obviously seeking The Baltimore Museum of Art’s website to a commercial website having no obvious link to the Museum or its products and services, or to sites featuring controversial political and social views with which Complainant would not like to be associated.

The Panelist finds that Respondent previously did business as “Domains for Life”. Thus the pattern of conduct held to violate the Policy in University of Alaska and Bank of Nova Scotia should be attributed to Respondent, and is evidence of bad faith.

The Panelist finds that Complainant has carried its burden of proof in establishing that Respondent has registered and used the Contested Domain Name in bad faith.

7. Decision

For all of the foregoing reasons, the Panelist decides that the Contested Domain Name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <baltimoremuseumofart.com> be transferred to the Complainant.

Richard Allan Horning
Sole Panelist

Dated: September 1, 2005