WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Southwestern Association for Indian Arts, Inc. v. Indian Art of America and A. Mata Case No. D2009-1774 1. The Parties
The Complainant is Southwestern Association for Indian Arts, Inc. of Santa Fe, New Mexico, United States of America, represented by Sutin Thayer & Browne, P.C., United States of America.
The Respondents are Indian Art of America and Anthony Mata both of Laguna Hills, California, United States of America, represented by Steven L Rinehart, United States of America (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 28, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 28, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.1 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2010. The Response was filed with the Center on January 28, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on February 3, 2010. 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
Indian Market, an annual event held each August in Santa Fe, New Mexico, is generally acknowledged as the largest and oldest juried Native American art show in the United States. Originally established in 1922 to encourage the continuation of traditional Native American arts and crafts and provide artists with a marketplace, Indian Market (sometimes referred to as the Santa Fe Indian Market) now includes on a regular basis some 1,200 artists from approximately 100 tribes who show their work in over 600 booths. The event attracts more than 80,000 visitors from around the world each year, and annually generates more than USD 100 million of revenues for the local Santa Fe economy.
Indian Market is sponsored by the Complainant, a non-profit organization that, according to the Complainant's mission statement, serves as an advocate for Native American arts and culture. The Complainant owns a United States trademark registration for INDIAN MARKET for “entertainment and educational services, namely, conducting fairs featuring Indian arts and crafts, and organizing festivals featuring Indian culture, activities, art exhibitions, and the like”. The United States Patent and Trademark Office (USPTO) issued a registration for INDIAN MARKET to the Complainant in April 2006, based on an application initially submitted in November 2004. The registration certificate reflects the first use of the mark with the goods and services identified therein in September 1936.2
The Respondent Anthony Mata, a resident of California, does business under the assumed name Indian Art of America. It appears from the record that since at least the 1970s, the Respondent has been involved in exhibiting and selling Indian art and other Indian merchandize. The Respondent registered the disputed domain name on December 14, 1996. The disputed domain name resolves to a website containing links to websites of various art galleries, museums and art dealers. The Respondent's website also features a link to the Indian Gaming Network website (), as well as numerous links to hotels, restaurants, bars, and other entertainment venues in the Santa Fe, New Mexico area. 5. Parties' Contentions A. Complainant
The Complainant asserts that it has trademark rights in INDIAN MARKET and SANTA FE INDIAN MARKET. The Complainant asserts common law trademark rights in SANTA FE INDIAN MARKET, and relies upon registration rights, which in turn are based upon acquired distinctiveness, for INDIAN MARKET. The Complainant asserts that both marks serve as an indication of source for both the Complainant's service of organizing and conducting fairs, festivals and exhibitions featuring Indian arts and crafts and advancing Indian culture, and respecting the Complainant's direct sale of arts, crafts, artifacts and Indian goods.
According to the Complainant, its rights in both marks have been acquired through long and continuous use of the marks (i.e., secondary meaning), and such rights were established long before the Respondent registered the disputed domain name in 1996. The Complainant further asserts that its marks were famous at the time of the registration of the disputed domain name, based on what the Complainant characterizes as “overwhelming evidence of secondary meaning.”
In support of the assertion of trademark rights based on secondary meaning, the Complainant has proffered evidence of (1) the length and continuity of the use of the marks, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales and attendance figures. Based in large measure on the affidavit of Bruce Bernstein, the Complainant's executive director, the Complainant submits that it regularly spends in excess of USD 200,000 annually in connection with advertising related to the marks, and that Indian Market is attended by upwards to 100,000 consumers from around the world, who purchase USD 16 million in art annually and contribute more than USD 120 million each year to the local economy.
According to Mr. Bernstein's affidavit, the Complainant maintains that in 1996 it spent approximately USD 36,000 in advertising in connection with the Indian Market event, and generated revenues of USD 1.6 million. The Complainant asserts that it also generates significant revenues from direct sales of arts and crafts under the INDIAN MARKET and SANTA FE INDIAN MARKET marks, which amounted to USD 112,000 in 1996, and were USD 208,795 last year. The Complainant additionally asserts that it receives approximately USD 100,000 annually from licensing the marks for use to third parties.
The Complainant has also provided references to and/or partial copies a number of scholarly books and other publications, which the Complainant maintains support its claim of o secondary meaning for the INDIAN MARKET and SANTA FE INDIAN MARKET marks. In addition, the Complainant has submitted copies of unsolicited media coverage as well as its own promotional and marketing materials to support its position.3
The Complainant contends that the disputed domain name is identical to the Complainant's SANTA FE INDIAN MARKET mark and confusingly similar to the Complainant's INDIAN MARKET mark. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. To the contrary, the Complainant contends that the Respondent registered and is intentionally using the disputed domain name to attract visitors to the Respondent's website for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Complainant also alleges that the Respondent contacted the Complainant in an attempt to sell the disputed domain name for valuable consideration in excess of the Respondent's costs directly related to the domain name, evidencing the Respondent's bad faith. B. Respondent
The Respondent contends that the “Complaint presents baseless claims that warrant a reverse domain name hijacking decision”, and asserts that the Complainant has abused this administrative proceeding in an attempt to “rob the Respondent of its domain name”. According to the Respondent, the Complainant knew that the disputed domain name was registered and continuously used in good faith at a time when the Complainant “had no rights in any mark, let alone the mark incorporated by the Disputed Domain.” The Respondent contends that the disputed domain name is not confusingly similar to the Complainants' marks, and asserts that the INDIAN MARKET mark was “twice rejected as descriptive and/or generic” by the USPTO.
According to the Response, Anthony Mata is a 71 year old American Indian and Indian Art enthusiast residing in California, and the sole owner of Respondent Indian Art of America. The Respondent maintains that since the early 1970s he has been exhibiting his collection of Indian art at various trade shows, gift shows, art festivals and similar events across the United States. According to the Respondent, he also has sold his Indian merchandize at retail through two stores, The Indian Store and The Indian Store II, located in Guemeville, California and Santa Rosa, California, respectively. The Respondent maintains that he is well-known and respected in “the industry of American Indian Art”.
The Respondent avers that he registered the disputed domain name solely for the purpose of marketing and retailing his Indian merchandize on the Internet in order to reach a greater pool of potential customers. According to the Respondent, much of the merchandize he sells is produced by artisans headquartered or residing in Santa Fe, New Mexico, or is stylistically reminiscent of Indian art from the Santa Fe area.
The Respondent disputes that the Complainant has established trademark rights in INDIAN MARKET and SANTA FE INDIAN MARKET, either now or at the time the Respondent registered the disputed domain name in December 1996. The Respondent notes that the United States trademark registration for INDIAN MARKET was not issued until 2006, and that the USPTO Examining Attorney refused registration of INDIAN MARKET in the absence of proof of acquired distinctiveness, on the grounds that it was merely descriptive of the Complainant's services. In addition, the Respondent points out that the Complainant has not sought to register SANTA FE INDIAN MARKET as a trademark. The Respondent further contends that all of the evidence of secondary meaning relied on by the Complainant postdates the Respondent's registration of the disputed domain name.
The Respondent maintains, notwithstanding the registration of INDIAN MARKET as a trademark on the USPTO's Principal Register, that “Indian Market” is a generic or commonly used term referring to a market where Indian good are sold, and that “Santa Fe Indian Market” is generic and “simply describes the general market for Indian art in Santa Fe, New Mexico, which city is filled with Indian artisans of every kind.” Accordingly, the Respondent argues that “Santa Fe Indian Market” does not “denote the Complainant or its festival, but rather the place where Complainant is located and the market that predominates there.”
The Respondent maintains that he registered and is using the disputed domain name in good faith based on its attraction as a dictionary word, and not because of its value as a trademark. The Respondent further maintains that he is using the disputed domain name consistent with its descriptive meaning – “to display the merchandize and historic pieces that [Respondent] own[s] and sell[s]” – and thus has established rights and legitimate interests in the domain name. According to the Respondent, this was his purpose in registering the disputed domain name.
The Respondent denies ever initiating contact with the Complainant in an effort to sell the disputed domain name. According to the Respondent, he was first contacted by the Complainant, and after he would not sell the disputed domain name directly to the Complainant, the Complainant employed straw men in an attempt to purchase the disputed domain name. When this did not work, according to the Respondent, the Complainant threatened the Respondent with a lawsuit, before resorting to this proceeding, which the Respondent submits is meritless. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established trademark or service mark rights in INDIAN MARKET and SANTA FE INDIAN MARKET. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant's goods and services from those of others.
The Panel concludes that the Complainant has established service mark rights in INDIAN MARKET for purposes of paragraph 4(a)(1) of the Policy, by virtue of the registration of the mark on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act. Section 2(f) provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness” as used with the applicant's goods or services. Proof of five years use is not always deemed sufficient during the examination process to establish that the mark has acquired distinctiveness. The nature, extent and duration of proof needed to establish secondary meaning depends largely on the nature of the mark in relation to the specified goods or services. See 37 C.F.R. §2.41(b).
In this instance, the Examining Attorney, based on initial concerns regarding the descriptive nature of INDIAN MARKET in relation to the Complainant's services, invited the Complainant to amend its application and submit evidence of acquired distinctiveness sufficient to satisfy the requirements of section 2(f) of the Trademark Act. The Complainant did so. Given the Examining Attorney's initial view regarding the nature of the mark in relation to the Complainant's services, the Complainant was required to submit extensive evidence to demonstrate that INDIAN MARKET had acquired secondary meaning, going back well beyond a five-year period.4 It is thus clear that the Complainant's application was subjected to a rigorous examination process, following which the Examining Attorney found, based on the Complainant's submissions, that INDIAN MARKET has acquired distinctiveness in relation to the Complainant's services and that the mark was entitled to registration on the USPTO Principal Register under Section 2(f) of the Trademark Act.
The Respondent argues that the USPTO should never have registered the Complainant's INDIAN MARKET mark because it is either generic or merely descriptive with respect to the Complainant's services. Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Other panels have concluded that the complainant's holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent's claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S. A. v. Idealab,WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700.
Given the limited scope of the Policy and this Panel's narrowly circumscribed jurisdiction, this Panel's inclination is to adopt the reasoning of the Panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel, having carefully reviewed the record in this case in light of the arguments presented by the Respondent, concludes that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant's mark.
Evidence looked to by both the USPTO and United States courts as relevant in determining secondary meaning includes evidence as to (1) the length and continuity of a mark's use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). Both in this proceeding and before the USPTO, the Complainant submitted evidence of secondary meaning based on such considerations. This evidence is sufficient to demonstrate that the Complainant's INDIAN MARKET has acquired distinctiveness sufficient to be entitled to registration on the USPTO's Principal Register under section 2(f) of the Trademark Act.
The Panel is disinclined to second guess the USPTO based on the record in this proceeding. As Section 2(f) of the Trademark Act reflects, what is required for secondary meaning is “substantially exclusive and continuous use”, and not the total exclusion of any third party use. The evidence submitted by the Complainant indicates continuous use of “Indian Market” in relation to the Complainant's annual event in Santa Fe, New Mexico going back some 70 years. The Panel notes that none of the exhibitions that the Respondent submitted evidence of attending, some of which date back to the 1970s, appeared to have promoted themselves using the designation “Indian Market”. 5
In the Panel's judgment, the documented evidence of third party use of “Indian Market” contained in the record in this proceeding is not sufficient to call into question the USPTO's determination that the Complainant was entitled to register INDIAN MARKET under section 2(f) of the Trademark Act, based on evidence of “substantially exclusive and continuous use”. The Respondent's assertion that the Complainant submitted no evidence to the USPTO that would demonstrate secondary meaning at times prior to the Respondent's registration of the disputed domain name is misplaced, given the prosecution history of the Complainant's INDIAN MARKET application available online at the USPTO, and the materials submitted as Annex I to the Response.
Having determined that the Complainant has established trademark rights in INDIAN MARKET, the Panel turns to the question of identity or confusing similarity under paragraph 4(a)(1) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. Based on such a comparison, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's INDIAN MARKET mark. The disputed domain name incorporates the Complainant's mark in its entirety, and given that the art show associated with the Complainant's mark has been held exclusively in Santa Fe, New Mexico for more than 70 years, the inclusion of the geographically descriptive term “Santa Fe” does not dispel such confusing similarity, and may well exacerbate such confusion.
The services for which the Complainant asserts common law trademark rights in SANTA FE INDIAN MARKET appear to be identical to the Complainant's services for which the Complainant's INDIAN MARKET mark is registered and used. Given that the Complainant's INDIAN MARKET show has been held exclusively in Santa Fe, New Mexico for more than 70 years, the Panel considers that the public most likely would perceive SANTA FE INDIAN MARKET along with INDIAN MARKET as indicators of source for the Complainant's services. The disputed domain name and SANTA FE INDIAN MARKET, when directly compared, are identical.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Respondent does not deny awareness of the Complainant and its use of the INDIAN MARKET designation at the time the disputed domain name was registered. The Respondent has no apparent relationship with the Complainant, and there is no evidence that the Respondent has been commonly known by the disputed domain name. Nonetheless, without obtaining the permission of the Complainant, the Respondent appropriated the Complainants' mark for use in his own domain name, and the Respondent has used the disputed domain name to attract Internet users to a website that since its launch has contained advertising links to various third party commercial websites. By all appearances, and even assuming the Respondent's use of the website in part for the retailing of Indian merchandize, the Respondent has used and continues to use the disputed domain name to attract Internet traffic to his website for commercial gain.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted above, the Respondent maintains that he registered and is using the disputed domain name in good faith based on its attraction as a dictionary word, and not because of its value as a trademark. The Respondent further maintains that he is using the disputed domain name consistent with its descriptive meaning. A number of panels, including this one, have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
The Panel is not persuaded from the record of the case that the Respondent registered the disputed domain name based on a good faith belief that the disputed domain name's value was attributable to its generic or descriptive characteristics. Nor in the Panel's opinion does the record reflect the use of the domain name consistent with such good faith belief. The Respondent does not deny awareness of the Complainant or the Complainant's long use of INDIAN MARKET in connection with the annual Santa Fe show sponsored by the Complainant. Given the Respondent's long time status as an “American Indian and Indian Art enthusiast” and his familiarity with “the industry of American Indian Art”, it can scarcely be gainsaid from the record before this Panel that the Respondent was unaware of the name and reputation of the Complainant's INDIAN MARKET when he registered the disputed domain name.
While the Respondent asserts that “Santa Fe Indian Market” is a generic term that “simply describes the general market for Indian art in Santa Fe, New Mexico, which city is filled with Indian artisans of every kind”, there is no indication in the record that the Respondent's website has been used primarily, if at all, for the purpose of promoting this geographic marketplace for Indian art.
Even were the Panel to assume that the Respondent registered the disputed domain name solely for the purpose of retailing his Indian merchandize, the Panel in the circumstances of this case still would not consider this to be a descriptive use of the disputed domain name.
In light of the foregoing consideration and after consideration of the totality of circumstances in the record, the Panel is of the opinion that the Respondent registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainants' mark, so as to attract Internet users to the Respondent's website. Under such circumstances, neither the sale of the Complainants' products or the generation of paid advertising revenues from other commercial links on the website constitutes a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319. See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For reasons discussed under the preceding heading, the Panel concludes from the facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant and the Complainant's INDIAN MARKET mark when registering the disputed domain name. See, Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The Respondent's claim that the public had not come to associate INDIAN MARKET with the Complainant's art show at the time the Respondent registered the disputed domain name is not credible, and against the great weight of the evidence. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
The Panel further finds that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's rights, thus establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy. See Aubert International SAS and Aubert France SA v. T Co., supra. For the reasons discussed under the preceding heading, the Panel does not believe that the Respondent could have formed a good faith belief that the disputed domain name's value was attributable to any generic or descriptive characteristics such as those alleged in the Response. Rather, the Panel is of the view that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See E, v. Ult. Search Inc.,WIPO Case No. D2001-1319. E. Laches
The Respondent has not specifically asserted the defense of laches in this case, but the Panel notes that the parties are located in the United States, where courts generally recognize the equitable doctrine of laches (undue delay in asserting a legal claim by one party, resulting in demonstrable prejudice to the other party). The equitable defense of laches generally has been held not to apply in a proceeding under the Policy, on various grounds. See The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods,WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).6 This Panel adheres to the prevailing view as expressed in the foregoing decisions. F. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd.,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. The Respondent has made no such showing. 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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: February 19, 2010
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