WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc. Case No. D2010-0034 1. The Parties
Complainants are The Glorya Kaufman Dance Foundation (the “Foundation”) and Glorya Kaufman (individually and collectively, “Complainant”), both of Los Angeles, California, United States of America (“U.S”), represented by Traverse Legal, PLC, United States of America.
Respondents are Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation,” formerly Domains By Proxy, Inc. (collectively, “Respondent”), of Beverly Hills, California, United States of America. 2. The Domain Names and Registrars
The domain names in dispute are , , and (the “Domain Names”). The domain names and are registered with Network Solutions, LLC (“Network Solutions”), and the domain name is registered with GoD, Inc. (“GoD”). 3. Procedural History
On January 8, 2010, the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”).
On January 11, 2010, the Center sent Network Solutions and GoD requests for registrar verification of the Domain Names. On January 11, 2010, Network Solutions sent the Center its verification response in which it confirmed that Carolyn B. Baker & Associates is the registrant of the domain names and , and provided the contact information for Carolyn B. Baker & Associates as listed on WhoIs records for those Domain Names. On January 14, 2010, GoD sent the Center its verification response in which it indicated that GoD's privacy service Domains By Proxy, Inc. was no longer listed as the registrant of the domain name . GoD identified “Glorya Kaufman Dance Foundation” as the registrant, and provided the contact information listed on the updated WhoIs records for the Domain Name. GoD listed the registrant name as Complainant's name, and listed the postal mailing address and e-mail address as Carolyn B. Baker & Associates's contact information.
On January 15, 2010, the Center informed Complainant's of the post-filing change in the registration record for the domain name , and invited Complainant to submit an Amended Complaint listing the newly disclosed registrant “Glorya Kaufman Dance Foundation” as a respondent in the proceeding. Complainants filed the Amended Complaint on the same date.
Complainant provided in its Complaint evidence that it formerly owned the Domain Names, and that Carolyn B. Baker & Associates moved the Domain Names to its own control. Accordingly, the Panel identifies Respondent in this proceeding as Carolyn B. Baker & Associates, and includes “‘Glorya Kaufman Dance Foundation,' formerly Domains By Proxy, Inc.” in quotation marks to differentiate that name from Complainant and so that the respondent in the proceeding, be the registrant of the domain name as confirmed by the registrar.
The Center verified that the Complaint and the Amended 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 9, 2010.
The Center appointed David M. Kelly as the sole panelist in this matter on February 24, 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
Glorya Kaufman is a philanthropist who has used her name in connection with charitable activities for many years. Mrs. Kaufman is the widow of Donald Bruce Kaufman, co-founder of Kaufman and Broad (now KB Homes, a Fortune 500 company).
In 2008, Mrs. Kaufman founded The Glorya Kaufman Dance Foundation (the “Foundation”), a Delaware non-profit corporation. The Foundation's predecessor-in-interest, the Glorya Kaufman Charitable Foundation, was founded by Mrs. Kaufman as a California trust in 2000.
Over the years, Mrs. Kaufman and the Foundation, both separately and together, have donated tens of millions of dollars to many dance organizations and programs in the U.S. For example, Mrs. Kaufman and/or the Foundation donated more than USD 50,000,000 from 2006 - 2009 to University of California, Los Angeles “UCLA”, The Julliard School, the Alvin Ailey Dance Foundation, Inner-City Arts, the Geffen Theater, and the Los Angeles County Music Center. Many recipients have recognized these philanthropic gifts by naming the sponsored program after Mrs. Kaufman. For example, Mrs. Kaufman's name has been memorialized in connection with the Glorya Kaufman Hall at UCLA, the Glorya Kaufman Dance Studio at The Julliard School, the Glorya Kaufman Dance Foundation Pavilion at the Alvin Ailey Dance Foundation building, the Glorya Kaufman Dance Academy at the Inner-City Arts center, the Glorya Kaufman Patio at the Geffen Theater, and the “Glorya Kaufman Presents Dance at the Music Center” programs at the Los Angeles County Music Center.
In addition to arts philanthropy, Mrs. Kaufman has used her name in connection with other charitable activities such as funding scholarships and health programs.
The philanthropic activities of Mrs. Kaufman and the Foundation have received substantial publicity, appearing in national media outlets such as “The New York Times” “The Los Angeles Times”, and B.
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Mrs. Kaufman has also received numerous awards for her philanthropic activities.
In 2008, the Foundation registered the Domain Names, and the domain name was used for the Foundation's website.
Carolyn B. Baker was employed as Executive Director of the Foundation for a time until March 2009. Ms. Baker subsequently continued to work for Complainant as an outside contractor via her firm Carolyn B. Baker & Associates, and her work included website development work and marketing services.
In Fall 2009, the Domain Names were removed from Complainant's control. Specifically, in November 2009, the registrant of the domain names and was changed from Complainant's name to Carolyn B. Baker & Associates. In October 2009, the registrar for the domain name was changed from Network Solutions to GoD, and the contact information was changed to Respondent's contact information.
The domain name is used for the Foundation's former website. (Complainant has since registered and begun using a different domain name, ). The domain name is being used for a pay-per-click website posted by the registrar, and the domain name is being used for an “under construction” website.
In November 2009, Ms. Baker sent an e-mail to Complainant's accountant stating she would “provide the information” and restore the Foundation's website upon Complainant's payment of invoices in the amount of USD 30,220. Ms. Baker claimed intellectual property rights in the website, and threatened to remove the website permanently, use it for other purposes, or sell it to the highest bidder if the invoices were not paid.
Complainant sent demand letters to Respondent requesting the return of the Domain Names to Complainant, and Respondent has not complied with Complainant's demand. 5. Parties' Contentions A. Complainant
Mrs. Kaufman claims common-law trademark rights in the mark GLORYA KAUFMAN based on her long-standing use of her personal name for philanthropic services that have received a substantial amount of public recognition.
The Foundation claims common-law trademark rights in the mark THE GLORYA KAUFMAN DANCE FOUNDATION, which has been used to identify the Foundation's philanthropic services since 2008.
Complainant claims that the Domain Names are identical or confusing similar to its marks because the Domain Names encompass the marks THE GLORYA KAUFMAN DANCE FOUNDATION and GLORYA KAUFMAN in their entirety.
Complainant claims that Respondent does not have any right or legitimate interest under the UDRP, and that Respondent's unauthorized registration and use of the Domain Names constitutes bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has satisfied the first requirement of paragraph 4(a) of the UDRP.
Complainant has provided evidence of its common-law rights in the mark THE GLORYA KAUFMAN DANCE FOUNDATION. Common-law rights, such as Complainant's rights in the THE GLORYA KAUFMAN DANCE FOUNDATION mark, are uniformly found to be sufficient grounds for filing a complaint under the UDRP. See, e.g., Douglas Forrester v. Chris Hoffman d/b/a Planned Childhood, Inc., NAF Claim No. FA170644 (holding “It is well established that registration of a mark is not an essential element of proving that a complainant ‘has rights' in a mark pursuant to Policy ¶ 4(a)(i)” and that complainant's use of his common law mark DOUG FORRESTER for fundraising services is sufficient to grant standing under the UDRP).
Complainant has also established common-law rights in the personal name mark GLORYA KAUFMAN as evidenced by the use of this mark for many years in connection with philanthropy services. Further, the GLORYA KAUFMAN mark has acquired secondary meaning by virtue of the widespread public recognition of Complainant and her services offered under the GLORYA KAUFMAN mark. The use of a personal name as a trademark, such as Complainant's use of the GLORYA KAUFMAN mark, has been found to be sufficient grounds for filing a complaint under the UDRP. See, e.g., Earl G. Graves, Sr., Earl G. Graves Ltd., Earl G. Graves Publishing Company Inc. v. The O Vibe,WIPO Case No. D2008-0284 (complainant's use of his personal name marks and common law marks for philanthropy and business endeavors sufficient to proceed under the UDRP because his name has become widely-known); Kenneth Calvert v. Domain Strategy, Inc. c/o Richard Mandanice, NAF Claim No. FA162075 (complainant's use of his personal name mark and common law mark KEN CALVERT for political activities sufficient to proceed under the UDRP).
The Domain Names are virtually identical to Complainant's mark THE GLORYA KAUFMAN DANCE FOUNDATION because they include Complainant's mark in near entirety, and because omission of the article “the” from the mark is a minor, non-distinguishing difference. See, e.g., H. Savinar Luggage Co., Inc. v. xc2 c/o Internet Coordinator, NAF Claim No. FA810589 (finding the domain name confusingly similar to complainant's H. SAVINAR LUGGAGE CO. INC mark because it contains the dominant portion of complainant's mark and because omitting the “Co.”, “Inc” and “H” do not negate the confusing similarity between complainant's mark and the domain name).
The Domain Names are confusingly similar to Complainant's mark GLORYA KAUFMAN because they include Complainant's mark in its entirety with the term “foundation” that identifies Complainant's organization. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Steven Grotte, NAF Claim No. FA115347 (finding the domain names and confusingly similar to complainant's NORDSTROM mark despite respondent's addition of the term “inc”). B. Rights or Legitimate Interests
The Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the UDRP.
Under the UDRP, the respondent's rights or legitimate interests to the domain name are may be established by demonstrating any of the following three conditions: “(i) before 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.”
The Panel finds that Respondent has no legitimate interest in the Domain Names. Respondent has not used the Domain Names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent has not been commonly known by the Domain Names.
The record shows that Complainant owned the Domain Names, and that Respondent was an employee of, then contractor for, Complainant. Respondent became the registrant of the Domain Names without Complainant's permission or authorization. Respondent's registration or acquisition of the Domain Names as a former employee or contractor of Complainant does not demonstrate any right to or legitimate interest in the Domain Names. In cases involving the registration of domain names by employees, many UDRP panels have held that former employees do not have a right to or legitimate interest in domain names incorporating the marks of their former employers. See, e.g., Ruby's Diner, Inc. v. Joseph W. Popow,WIPO Case No. D2001-0868 (“An employee or former employee is not a licensee, and thus has no authorization to use a company's trademark or a confusingly similar variation thereof without permission. The Policy contains no exception providing a special right to use a trademark belonging to one's employer or former employer in a domain name. Consistent with such an interpretation, previous decisions have decisively refused to recognize such a right or interest.”); Savino Del Bene Inc. v. Graziano Innocenti Gennari,WIPO Case No. D2000-1133 (“…this Panel finds that, as a rule, former employees do not have a legitimate right or interest in registering in their own name their former employer's trademark as a domain name.”).
After becoming the registrant of the Domain Names, Respondent sent an e-mail to Complainant offering to return Complainant's website if Complainant paid Respondent's invoices, and threatened to take various actions regarding Complainant's website if the invoices were not paid. Using a domain name for leverage in a business deal, as Respondent has done here, does not establish a right to or legitimate interest in the domain name under the UDRP.
Respondent's threat to sell the Domain Names to a third party is further evidence of Respondent's lack of right to or legitimate interest in the Domain Names. See, e.g., The PNC Financial Services Group, Inc. v. BrianThaoms c/o Featured on CNN.com-Over 1.5 Million Hits Daily, NAF Claim No. FA495474 (holding respondent's offer to sell the domain name is evidence that respondent lacks rights and legitimate interests in the domain name); State Farm Mutual Automobile Insurance Company v. Transure Enterprise Ltd c/o Host Master, NAF Claim No. FA1176762 (holding respondent's offer to sell the domain name is “evidence that [r]espondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
Finally, the Panel notes that there is nothing in the present record to support Respondent's suggestion that she has intellectual property rights in Complainant's former website and, by extension, in the Domain Names. In analogous cases involving the invention or conception of a trademark, it is well settled under U.S. law, which is pertinent here to this case involving U.S. parties that trademark rights are established by use of the mark, and not mere invention of it. Trade-Mark Cases, 100 U.S. 82 (1879). U.S. courts have thus consistently held that advertising/marketing agencies are accorded no rights merely for creating or conceiving the idea to use a particular mark for their clients. Arvelo v. American Int'l Ins. Co., 875 F. Supp. 95, 101 (D. P.R. 1995) (publicist who developed RETAIL PLUS as proposed mark for a new type of insurance did not own trademark rights simply because he invented mark and presented to client); Invisible, Inc. v. National Broadcasting Co., 212 USPQ 576 (C.D. Cal. 1980) (advertising agency which developed slogan for use by TV Station clients does not have service mark rights; slogan identifies client, not advertising agency). C. Registered and Used in Bad Faith
The Panel finds that Complainant has satisfied the third requirement of paragraph 4(a) of the UDRP.
Respondent registered or acquired the Domain Names from Complainant without Complainant's authorization, and requested payment from Complainant in exchange for the return of Complainant's website. Respondent also threatened to sell Complainant's website, i.e. the Domain Names, to a third party. Respondent's actions constitute a bad-faith offer to sell the Domain Names under paragraph 4(b)(i) of the UDRP. See, e.g., Yahoo! Inc. v. Somsak Sooksripanich and Others,WIPO Case No. D2000-1461 (finding “clear evidence of bad faith use” respondent's offer to sell the disputed domain names to complainant).
Respondent's use of the Domain Names as leverage for the purpose of extracting a favorable business arrangement from Complainant is also evidence of bad faith under prior UDRP decisions. See, e.g., Kinko's Inc. c. eToll, Inc. f/k/a E Corp, NAF Claim No. FA94447 (finding bad faith where respondent registered the domain name without permission as a form of leverage to extract a business deal from complainant); Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (holding respondent's request for the establishment of a business arrangement with the complainant that would be beneficial to respondent, in exchange for the transfer of domain name, constitutes bad faith).
Finally, because Respondent was an employee of Complainant, there is little question that she knew of Complainant's rights in its marks THE GLORYA KAUFMAN DANCE FOUNDATION and GLORYA KAUFMAN when she registered the Domain Names, i.e., when she acquired the Domain Names from Complainant without Complainant's permission. By registering the Domain Names with knowledge of Complainant's rights in its marks, Respondent acted in bad faith. UDRP panels have consistently held that registration of a trademark-related domain name by an employee with knowledge of the trademark owner's rights in the mark constitutes bad faith. See, e.g., Kinko's Ventures, Inc. v. Fernando Rigonan, NAF Claim No. FA100168 (“…because Respondent was an employee of Complainant when it registered the domain name, registration of the infringing domain name is considered an act of bad faith.”); Savino Del Bene Inc. v. Graziano Innocenti Gennari,WIPO Case No. D2000-1133 (“[r]espondent's registration of the company name of his former employer as a domain name is an act of bad faith.”). 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 names , , and be transferred to Complainant.
David M. Kelly
Sole Panelist
Dated: March 11, 2010
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