Complainant is Jane Corkin Gallery Inc., Toronto, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Terra Serve, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. On July 26, 2010, the Center transmitted by e-mail to R Corp. a request for registrar verification in connection with the Domain Name. On July 26, 2010, R Corp. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on August 25, 2010.
The Center appointed Robert Badgley as the sole panelist in this matter on September 6, 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
The following facts are alleged in the Complaint, supported by annexes in the record, and unrebutted by Respondent.
Complainant has used the mark JANE CORKIN GALLERY and JANE CORKIN since its founding in 1979. Complainant is recognized as one of Canada’s pre-eminent purveyors and exhibitors of historical and contemporary fine art photography, as well as modernist and contemporary sculpture and painting. Complainant undertakes 10 to 20 art exhibitions per year. Complainant’s founder, Jane Corkin, has become well-known in the art world, and she and her activities have received a great deal of attention in the press.
Complainant operated its website at the Domain Name from 1998 to 2006. In 2006, Complainant inadvertently failed to renew the Domain Name. Respondent then registered the Domain Name.
The WhoIs information for the Domain Name indicates that the Domain Name is “for sale.” The Domain Name resolves to a pay-per-click website displaying links to competitors of Complainant. The website also provides a means by which end users can search for links to competitor sites.
Complainant sent a cease-and-desist letter to Respondent on March 31, 2010. Respondent did not respond. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual contentions are set forth in the “Factual Background” section above. Complainant’s arguments will be discussed in the “Discussion and Findings” section below. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
Complainant clearly has common law rights in the mark JANE CORKIN through longstanding and extensive use. The record amply supports this conclusion, and Respondent has not disputed it. The Domain Name is identical to the mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (Apr. 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Respondent has not claimed any noncommercial or fair use of the JANE CORKIN mark in the Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Complainant relies on all four of the foregoing bad faith grounds. The Panel agrees with Complainant in all respects but one.
As respects paragraph 4(b)(i), it has already been observed that the Domain Name is listed as being for sale. Even if a purchase price is not specified, the solicitation of an offer can constitute bad faith Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me A W, WIPO Case No. D2000-1722 (February 28, 2001). The Panel so concludes.
As respects paragraph 4(b)(ii), Complainant has cited three prior instances of Respondent being held in bad faith in other cases under the Policy. Complainant has also alleged that Respondent owns more than 9,000 domain names. The Domain Name is identical to Complainant’s mark. Under these circumstances, a pattern of preclusive registrations in violation of paragraph 4(b)(ii) is found.
As respects paragraph 4(b)(iii), the Panel rejects the argument that the Domain Name was registered primarily to disrupt the business of a competitor. There is no evidence that Respondent operates within the same commercial or artistic milieu as Complainant, and hence Respondent is not a competitor of Complainant under the Policy. In the Panel’s view, providing links to the sites of Complainant’s competitors does not in itself render Respondent a competitor of Complainant.
Finally, as respects paragraph 4(b)(iv), the undisputed evidence indicates that Respondent derives per-click revenue from the website to which the Domain Name resolves. The Panel concludes that these activities constitute an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Complainant.
Robert A. Badgley
Sole Panelist
Dated: September 20, 2010
Full & Egal Universal Law Academy