WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian
Case No. D2001-0879
1. The Parties
The Complainants are: Van Gogh Museum Enterprises BV, a limited liability company organized under the laws of the Netherlands with its legal seat at Herengracht 472, (1017 CA) Amsterdam, the Netherlands; and the Stichting ("Foundation" in English) Van Gogh Museum with statutory seat at Paulus Potterstraat 7 (1071 CX) Amsterdam, the Netherlands ("The Complainant"). The Complainant is represented in this proceeding by : C.O. Venckebach, Boekel De Nerée, P.O. Box 2508, 100 CM Amsterdam, the Netherlands.
The Respondent in this proceeding is M. Ohannessian, an individual whose address of record is 10 El Saleh, Zamalek, Cairo 11211, Egypt.
2. The Domain Name and Registrar
The domain name in dispute is .
The registrar for the disputed domain name is Tucows, Inc., Registrant Affairs Office 96, Mowat Avenue, Toronto M6K 3M1, Canada.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on July 11, 2001, by e-mail on July 17, 2001, in hardcopy. On July 16, 2001, the Center requested that the registrar Tucows, Inc. ascertain the registrant for the disputed domain name . On July 17, 2001, the registrar Tucows reported to the Center that the registrant was the Respondent and that the Policy was in effect. On July 27, 2001, the Center requested that the Complainant amend its Complaint to comply with mutual jurisdiction per the Rules 3b(xiii). On August 6, 2001, the Complainant's amended Complaint was filed in hard copy at the Center.
On August 8, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. In response to Respondent's request of August 24, 2001, on August 27, 2001, the Center granted the Respondent a 6 day extension until September 3, 2001, in which to file his Response. Respondent's Response was received by the Center on August 28, 2001, by e-mail and on September 4, 2001, in hard copy.
The Administrative Panel submitted a Declaration of Impartiality and Independence on September 11, 2001, and the Center proceeded to appoint the Panel on September 17, 2001.
In reading the Case file, the Panel found the Complainant had produced certain apparently relevant documents in the Dutch language. Therefore, on September 21, 2001, the Panel issued Procedural Order No. 1 directing the Complainant to give a summary in English of the documents' contents and informing the Respondent that he would have 10 days from receipt of the translated summaries to file comments if he so desired. The Complainant complied with the Panel's Procedural Order in a filing at the Center dated September 26, 2001. The Respondent chose not to comment on the Complainant's response to the Procedural Order.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision originally was due by September 30, 2001 but the Panel delayed the due date until October 21, 2001, to allow the parties time to comply with Procedural Order No. 1 (the Rules, paragraph10).
4. Factual Background
The Complainant is an art museum and art foundation dedicated to the preservation, study and exposition of the works of the famous Dutch painter Vincent Van Gogh and to generating funds to support this endeavor. The Complainant's museum has been operating since 1973. The Complainant obtained a trademark registration in the Benelux (Belgium, the Netherlands and Luxemburg) effective on February 9, 2001. The Complainant has operated a website at the domain name since December 3, 1996.
The Respondent is an individual who sells artwork related to Vincent Van Gogh such as posters and similar merchandise. The Respondent also uses the website at the disputed domain name to link to other websites selling comparable merchandise. The Respondent is compensated when the linked websites, such as Amazon's, make a sale to a client who arrived via Respondent's disputed domain name website. The Respondent registered the disputed domain name on June 15, 1998.
On May 29, 2001, the Complainant sent the Respondent a letter alleging trademark infringement. The Respondent did not respond to the Complainant's letter, and the Complainant now is seeking transfer of the domain name through this administrative proceeding.
5. Parties' Contentions
Complainant's Summarized Contentions:
- Complainant had, before registering it as a trademark, used the name Van Gogh Museum since 1985 in virtually all countries of the world, amongst which the USA, at the occasion of two big exhibitions. In 1998 and 1999 merchandising with the sign Van Gogh Museum was conducted on a worldwide scale.
- Respondent is using the disputed domain name to operate a website identical to Complainant's trademark. On the website, which mainly consists of a collection of links to other websites on the Internet, the trademark/tradename Van Gogh Museum is indicated or referred to at least twice.
- Complainant has not granted Respondent, by license or otherwise, permission to operate such a website, let alone make use of Complainant's trademarks and/or trade name.
- Respondent has no right or legitimate interest in respect of the domain name. The use of the domain name by Respondent cannot qualify as non-commercial as the website is specifically aimed at selling, either directly or indirectly, products and services as well as advertising banners.
- Respondent's company/organization is not commonly known by the name or domain name . In fact, Complainant's organization, which operates the world famous Van Gogh Museum in Amsterdam, the Netherlands, is the only company/organization in the world that is commonly known by the name Van Gogh Museum.
- Respondent's registration and subsequent use of the domain name was done in bad faith. The Respondent is using the domain name in an intentional attempt to attract, purely for commercial gain, internet users to Respondent's website by creating confusion with Complainant's trademarks and trade names.
- Complainant is prevented from using the only available domain name by which Complainant's organization is commonly known or referred to in the whole world.
- Respondent's clear intention is to attract (potential) visitors in search of the official museum-website, in order subsequently to try to sell these visitors products and services connected to the painter Van Gogh.
Respondent's Summarized Contentions:
- The only evidence Complainant has provided to show it has trademark rights in the domain name is a pending (not issued) trademark application for three territories, not including Egypt, written in the Dutch language.
- Respondent challenges the Complainant's claim to owning the mark, and the Complainant's claim that the mark is world famous and exclusively associated with the Complainant and so entitled to protection against dilution.
- There is no evidence of other trademark rights. Glaringly absent is any evidence (Respondent's emphasis) to support Complainant's contention that it holds all the rights in the trade name . Complainant does not offer proof that they (1) operate a museum known as the Van Gogh Museum, and (2) that Complainant has used the Van Gogh Museum mark in commerce.
- Vincent Van Gogh was born in 1853 and died in 1890; therefore, his works belong in the public domain and are not subject to copyright or trademark protection.
- According to a U.S. Trademark Electronic Search System (TESS) there are 58 trademark registrations of the word Van Gogh in the US, but none of them are registered by the Complainant. The word Van Gogh is a common word in the English language, and so registration of it as a domain name is not a violation of the Uniform Policy.
- Even assuming Complainant has actually used the Van Gogh Museum mark in Commerce, at best such mark is merely descriptive and not distinctive enough to allow trademark protection.
- Complainant cannot rely on the fame of the artist's name-Vincent Van Gogh-by combining it with a descriptive word-Museum. Complainant has no more right than Respondent to use the famous artist's name to promote a museum (whether physical or virtual on the Internet), or to sell commercial goods. Vincent Van Gogh would surely have wanted his artwork to be seen by all!
- Respondent is using the domain name to describe the website it hosts at that address-a virtual or digital museum of Van Gogh artwork, and related commercial products. An online Catalog Raisonne is being produced, where visitors could consult the archives and contribute new images, comments, and general knowledge.
- Merriam-Webster's 9th New Collegiate Dictionary defines Museum as a place where objects of lasting interest or value are exhibited. Complainant cannot prevent Respondent from using words themselves to describe the nature of its activities on its own website. This is a classic fair use of the domain name .
- The Respondent has always held agreements, such as its agreement with Amazon, with distributors during its tenure as an affiliate. Respondent intends to use the domain name to host a website that presents digital representations provided by distributors of paintings, books, prints, posters, films, CD rom and other goods made available for sale by distributors as well as a screensaver available for download to allow people to recreate the works online.
- Respondent intends to host an improved version at the domain name in the near future. Links to other Van Gogh related websites are also offered on the website.
- Complainant has not shown that Respondent registered and used the disputed domain name in bad faith, nor can it.
- Respondent was not aware of Complainant or of any other entity using or any mark similar thereto at the time of its domain name registration.
- Respondent registered the descriptive domain name in good faith and began operating a prototype website at that domain name three years before Complainant filed its alleged intent-to-use trademark application for the alleged mark Van Gogh Museum.
- Complainant is guilty of reverse domain name hijacking. The fact that Respondent registered the descriptive domain name three years before Complainant began use of the Van Gogh Museum mark should have indicated to Complainant that Respondent was not a cybersquatter of the mark.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced information demonstrating to the Panel that the Complainant has been operating the Van Gogh Museum in Amsterdam since 1973. The Complainant registered the trademark Van Gogh Museum effective February 9, 2001. The Respondent argues that the Complainant can not have mark rights in the name of a famous dead artist and that museum is not distinctive.
The Panel disagrees with the Respondent and is instead persuaded by the Complainant. The Panel notes that many panels in previous decisions and various national trademark systems have found that museums may acquire trade or service mark rights in their names. The museums accomplish this by remaining in business and offering their services over a period of time. Thus for example, the J. Paul Getty Trust was found to have mark rights in the name Getty Museum; the Solomon R. Guggenheim Foundation was found to have mark rights in the name Guggenheim Museum; the San Francisco Museum of Modern Art was found to have mark rights in its name; and the founder of the Cold War Museum was found to have mark rights in the name of his museum. The Panel is convinced that, by operating its famous Van Gogh Museum in Amsterdam since 1973, the Complainant, which includes the Van Gogh Foundation, also has acquired mark rights in its name. (The J. Paul Getty Trust v. Domain 4 Sale & Company, ICANN/NAF Case No. FA0007000095262, September 7, 2000, involving the domain names , ; Solomon R. Guggenheim Foundation v. Jesus J. Ruiz Zuazu, ICANN/NAF Case No. FA0008000095319, October 5, 2000, involving the mark Guggenheim Virtual Museum and the domain names , , ; San Francisco Museum of Modern Art v. Joshua S. Drapiewski, ICANN/WIPO Case No. D2000-1751, April 25, 2001, involving the domain name ; The Cold War Museum v. Nicolas Jampol, ICANN/NAF Case No. FA0102000096594, March 26, 2001, involving the domain names , , ).
The Panel finds the Respondent has registered a domain name () identical to a name in which the Complainant has trademark rights.
Legitimate Rights or Interests
The Complainant asserts the Respondent is making commercial use of its mark without Complainant's permission. The Respondent freely admits he is using the disputed domain name website to sell art-related merchandise and to connect to other websites that sell such merchandise. The Respondent also admits that he derives income from this practice by charging linked companies such as Amazon a fee for the clients they obtain via the Respondent's website at the disputed domain name.
The Panel finds the Respondent's website business is not a legitimate right or interest under the Policy. The Respondent is attempting to show his use qualifies as a legitimate right or interest under the Policy at paragraph 4c(i):
"[b]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;"
Although the Respondent certainly was carrying on his business before he received notification of this dispute, the Panel believes the Respondent's offering of goods or services was not bona fide as required by the Policy. This is so because the Respondent, in the Panel's view, was well aware his website evoked to the public the Complainant's world famous museum in Amsterdam. It is well-settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy (see Chanel Inc. v. Estco Technology, ICANN/WIPO Case No. D2000-0413, September 18, 2000, where the Respondent would have used the domain name to offer pay-per-search services to internet clients seeking information on Chanel and other fashion houses).
Registered and Used in Bad Faith
The Complainant contends the Respondent has violated the Policy at paragraph 4b(iv) by using the Complainant's famous museum name to attract customers for the Respondent's business of selling art merchandise and, especially, linking for a fee to other art merchandise sellers such as Amazon. The Respondent openly admits this is the basis of his business operation and bases his defense primarily on his contention that the Complainant could not acquire trademark rights in the name Van Gogh Museum. The Panel has already rejected the Respondent's claim and found the Complainant does have trademark rights in the disputed domain name.
Furthermore, the Panel is convinced that the Respondent registered the disputed domain name well-aware it was the name of Complainant's world-famous museum in Amsterdam. The Respondent no doubt believed the name would endow his internet business with the prestige and credibility of the Complainant.
7. Decision
The Panel first found the Respondent registered a domain name identical to a name in which the Complainant has trademark rights. The Panel then found the Respondent was in bad faith offering goods and services at the disputed domain name website, and that this did not constitute legitimate rights and interests under the Policy. And lastly, the Panel found the Respondent registered and was using the domain name in bad faith to try and draw on the Complainant's prestige and renown to further the Respondent's commercial interests.
Pursuant to ICANN Policy paragraph 4(i) and Rule paragraph 15, the Panel orders that the disputed domain name, , be transferred from the Respondent, M. Ohannessian, to the Complainants Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum.
Dennis A. Foster
Sole Panelist
Dated: October 21, 2001
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