The Complainant is The Estate of Edward Steichen, c/o Francesca Calderone-Steichen of Pennington, New Jersey, United States of America (the “US”), represented by Cowan, DeBaets, Abrahams & Sheppard LLP, US.
The Respondent is Museum Artists / Edward Steichen c/o Gift Services, Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On August 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2013, the Registrar transmitted by email to the Center its verification response stating that the registrant differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on August 20, 2013 providing the new registrant information disclosed by the Registrar. In response to a notification by the Center that the Respondent details differed, the Complainant filed an amended Complaint on August 21, 2013.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. On September 13, 2013, the Center notified the Respondent default. The Respondent filed his response on September 17, 2013 with a request for condoning the delay.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 26, 2013. 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.
The Panel condoned the delay in filing the Response, and allowed the Complainant’s supplemental filing dated September 25, 2013. The Center sent an Administrative Panel Procedural Order No. 1 dated September 27, 2013 in which the Panel invited the Respondent to file a reply to the Complainant’s supplemental submission by October 4, 2013. The Respondent filed the supplemental submission on October 5, 2013. The Panel accepted the Respondent’s supplemental submissions and informed the parties through the Center that the revised date of the Panel’s decision is October 14, 2013. 4. Factual Background
The Complainant is the Estate of Edward Steichen and it bases this Complaint on the common law trademark rights in the EDWARD STEICHEN mark. Edward Steichen was an American photographer and painter. He was director of photography at the Museum of Modern Art (MoMA) in New York, US, where he hosted notable exhibitions titled “The Family of Man” and “The Bitter Years”. His works are displayed in museums and art galleries across the world.
The WhoIs records show that the disputed domain name was initially registered on June 11, 2001. The name of the present registrant is mentioned as Edward Steichen c/o Gift Services, Inc. The disputed domain name resolves to a website that is a pay-per-click website which redirects Internet users to other websites. 5. Parties’ Contentions A. Complainant
The Complainant states Edward Steichen was born to immigrant parents from Luxembourg. He started his legendary career from Milwaukee in Wisconsin, US, and helped to found the photographic journal Camera Work. He served in World War I, pioneered aviation photography, and won the Legion of Honor medal from the French government in 1920. He was Chief of Photography and preeminent fashion photographer for Conde Nast, Vogue and Vanity Fair magazines during the years 1923 -1938, when he was considered to be the best known and highest paid photographer in the world. During World War II, he served in the pacific as head of naval combat photography. He received the academy award in 1945 for Best Documentary for his war film “The Fighting Lady”. He served as director of photography at MoMA till he retired in 1962 and created several important exhibitions including the groundbreaking “The Family of Man”, which travelled to countries around the world and is now on permanent exhibition in Luxembourg, along with his other MoMA exhibition “The Bitter Years”. He died on March 25, 1973 at the age of 94 and is survived by his two grand daughters Francesca Calderone-Steichen and Maria Steichen Calderone.
The Complainant asserts that personal names or surnames are protectable as trademarks if the names have acquired distinctiveness. The Complainant states that the EDWARD STEICHEN mark was well obtained much prior to the registration of the disputed domain name, as the public has come to identify the mark with Edward Steichen’s photography and art. Edward Steichen’s name is synonymous with development of photography as an art form, and he is considered one of the greatest photographers of the twentieth Century. The estate closely controls the distribution of authorized goods bearing or marketed under the name “Edward Steichen”, especially the use of goods and images in catalogues, museum gift shop, and other printed or online materials.
The Complainant states that the registrant of the disputed domain name, “Edward Steichen c/o Gift Services” was formerly listed as “Museum Artists” and strongly urges that the recent replacement of the registrant is a brazen use of the Edward Steichen name. The Complainant asserts that it is not connected with either Cayman Island based registrants “Gift Services, Inc.” or “Museum Artists”. The Complainant further argues that the Respondent has not used the disputed domain name for any bona fide or legitimate business, but as a fraudulent website prominently featuring the EDWARD STEICHEN mark with links to photography related websites. Such use is likely to create a false impression that the website is affiliated with the Complainant and would lead to consumer confusion, asserts the Complainant.
The Complainant states that the disputed domain name is identical to the EDWARD STEICHEN mark in which it has common law rights. The Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has registered and used the disputed domain name in bad faith, and on these grounds requests for the transfer of the disputed domain name. B. Respondent
The Respondent argues that the Complainant does not have registered trademark rights for the words “Edward Steichen” and that he has rights in the disputed domain name as it represents his name. He goes on to state that before receiving any notice of the dispute, he was preparing to use the disputed domain name in connection with a bona fide offering of services, and the disputed domain name was taken away from him before he could do so.
The Respondent states that he registered the disputed domain name on July 26, 2013 to use it as his personal website and his email address. He states that within a week of acquiring the disputed domain name he had replaced the old website design with a new one that provided links to popular online services like dating, jobs, real estate training, mortgage, home insurance and under general categories such as romance, travel, health, career and entertainment. The Respondent further states that he gets a fee when people click on the links on his site and are directed to the companies offering these services. The Respondent argues that his website does not refer to the Complainant which is an estate and is not a living person and that his website does not mention the Complainant or Edward Steichen the photographer as these are not popular on the Internet. He states the screenshots of the website filed with the Complaint are those put up by the previous owner of the disputed domain name and not by him.
The Respondent denies the disputed domain name is registered in bad faith, as it represents his personal name. He says he is not related to the Complainant or the deceased photographer Edward Steichen. He states he did not register it for purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to prevent the Complainant from reflecting its mark in a corresponding domain name. He denies having engaged in a pattern of registering domain names of artists and claims that conduct applies to the previous owner of the disputed domain name. He reiterates that he is not a competitor with the Complainant and did not register the disputed domain name to disrupt the Complainant’s business. He alleges the disputed domain name was not registered to intentionally attract Internet users for commercial gain to his website due to a likelihood of confusion with the Complainant’s mark as to the source.
He points out that the Complainant has no website or online location and therefore there is no possibility of confusion with the Respondent’s website. The Respondent states the disputed domain name was first registered in 2001 and argues that the Complainant has not given importance to the disputed domain name over the last thirteen years. He further argues that the Complainant does not own domain names like , or . The Respondent concludes by saying that he has as much right to the disputed domain name as the Complainant and requests to retain control of the disputed domain name to allow him to continue developing his website and using it for his email. C. Supplemental Submissions by the Parties Complainant’s Supplemental Submissions:
The Complainant in reply to the Respondent’s response states the Complaint was initially filed on August 14, 2013 but was rejected due to differing registrant record, consequently an amended Complaint was filed on August 21, 2013. The Complainant states that by the time the initial Complaint was reviewed by the Center, the registrant information had changed from “Museum Artists” to “Edward Steichen, C/o Gift Services Inc.”, however the Cayman Islands contact address and phone numbers remained the same. Given the timing of the change of registration details, the Complainant argues that the change of registrant name was not co-incidental.
The Complainant has filed as evidence of the registrant records from “Domain Tools Whois” and argues that it is unlikely that the Respondent could have acquired the disputed domain name on July 26, 2013. The Complainant states there has been a concurrent change in the appearance of the website and points out that the Respondent’s website that had photography related links when the initial and the amended Complaints were filed, after September 12, 2013 showed a change in appearance, removal of photography related links and the addition of a hyper link to a contact email address. The Complainant further argues that the Respondent has admitted that his page is a pay-per-click parking page and such use is not considered bona fide use and is indicative of bad faith registration and use.
The Complainant states that the current registrant is none other than the previous one and refutes the Respondent’s claim that he has not engaged in a pattern of registration of domain names. As evidence, the Complainant has placed the reverse WhoIs reports under the previous and current registrant names that shows the email address for Museum Artist owns about one hundred and seventy four domain names while the email address for Gift Services Inc. owns about twenty two domain names. The Complainant further points out that the exhibits show many of the domain names are of artists and famous personalities such as (NBC journalist and Today’s Show anchor), Adam Baker (New York based photographer) and , famous singer, songwriter and actor Ashley Parker Angel. The Complainant states that despite the different names of artists the basic website appearance for all the websites linked with the domain names are same, black background with blue text.
The Complainant argues that it is unlikely that the Respondent’s name happens to be the same as the famous photographer and who registered his personal domain name around the same time the Complaint was filed. The Complainant reiterates that it has common law trademark rights and publicity rights to the name and mark EDWARD STEICHEN. The Complainant dismisses the Respondent’s arguments of the Complainant’s lack of a website or online presence and that the Complainant is an estate and not a living person, as irrelevant and legally insignificant. The Complainant also argues that there is no statute of limitation in UDRP disputes and delay is not a valid defence if the three elements under the Policy are proved. Respondent Supplemental Submissions
The Respondent in his supplemental submission refutes the Complainant’s contention that the Respondent had changed the registrant name sometime between filing of the initial Complainant and August 21, 2013. He argues that no evidence has been filed by the Complainant that shows the registrant was named as “Museum Artists” on August 14, 2013 and the “Dotster Whois” page indicates the record was last updated on August 9, 2013. He says the discrepancy in the date could be due to the Complainant using the Domain Tools site, which is not accurate. He alleges the delays in updating the WhoIs records and his new website are due to problems with the Dotster system and as evidence of Dotster’s bad services, the Respondent has filed as evidence grievances made by third parties complaining about Dotster’s services. The Respondent offers to write to Dotster for a statement showing the last change of record for the disputed domain name occurred on August 9, 2013.
The Respondent has attached a statement by Sylvia Greenberg, who states she is the marketing director for Museum Artists and Gift Services and that the disputed domain name was registered on June 11, 2001 and was given to Edward Steichen on July 26, 2013. Due to technical problem faced by Dotster the details of the new registrant were uploaded only on August 9, 2013. She says that the new owner opted to have Gift Services as his contact address. Ms. Greenburg then goes on to state that the NBC Today morning show had featured their marketing of personalized domain names. The domain name was given to the television personality Matt Lauer at no cost, but Mr. Lauer or his office did not provide ownership information to enable the change of the name. Due to the failed attempts to transfer personalized domain names, she states it was decided to wait for requests to give away the domain names. As the Estate of Edward Steichen did not contact Museum Artists over the past twelve years, the disputed domain name she asserts has been properly given to the new registrant. She further states that the disputed domain name was not registered with intent to sell it to the Complainant or to disrupt the Complainant’s business or to confuse consumers seeking the Complainant who has no website. 6. Discussion and Findings
The underlying purpose of the Policy is to resolve disputes arising from abusive domain name registration. The Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to succeed and obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name 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 in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first requirement of paragraph 4 (a) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The two issues to be addressed in the present dispute are whether the Complainant has rights in the mark EDWARD STEICHEN and whether the estate of the deceased artist can seek to enforce such rights before this forum. It is well established that artists are entitled to a common law trademark or service mark without registration of their mark if the name of the artist has become synonymous with their work and is used in commerce. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.6. In The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services GroupWIPO Case No. D2009-0334. Jim Morrison was lead singer of a rock band and his estate filed a complaint for recovery of the domain name based on common law trademark rights in his name. See also JRR Tolkien Estate Limited v. Network Operations Center, Alberta Hot Rods, WIPO Case No. D2003-0837 and The Estate of Cheri Blum v. k, j,WIPO Case No. D2006-0103. Where the estate of a well-known painter and muralist Cheri Blum successfully took action against abusive domain name registration. The significant findings in these cases on the question whether a famous artist had enforceable rights in his or her name and whether the estate of the deceased artist could take action based on unregistered common law rights, it was found that common law trademark rights are recognized in the name of a famous artist if it is established that the name of the artist has acquired sufficient secondary meaning and association with the artist’s work and is used in trade and commerce. The estate of the deceased artist is not precluded from taking action for recovering a domain name registered in the name of the artist based on the artist’s common law trademark rights.
The underlying purpose or justification for protecting personal names of famous artists or other well-known personalities stems from the basic principles of trademark law to protect consumers who associate the name with the source of its origin. The other purpose for protecting names of famous personalities is to safeguard the goodwill, fame and reputation associated with the mark. See The Estate of Cheri Blum v. k, j, supra, for a discussion on this aspect and the differences between trademark protection and right to publicity under US law.
The Panel finds the Complainant has provided facts that demonstrate the name Edward Steichen has acquired secondary meaning based on Edward Steichen’s reputation as a famous photographer and artist whose works are displayed in numerous museums and art galleries. The Respondent does not rebut the recognition of the name Edward Steichen in the area of photography, and the very fact that the prior registrant, Museum Artists acquired domain names of famous museum artists bears testimony to the fact that Edward Steichen is among the list of famous museum artists. There is no dispute that Edward Steichen’s works have commercial value and his name has become synonymous with his work in photography art and these facts establish common law trademark rights in the name Edward Steichen. The Complainant as the estate of the famous artist is accordingly found to have successfully established its common law rights in the EDWARD STEICHEN mark.
The Panel finds the disputed domain name is identical to the EDWARD STEICHEN mark and the generic Top-Level Domain (gTLD) “.com” is generally disregarded in the finding of confusing similarity. The Complainant has successfully established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy enumerates some circumstances under paragraph 4(c) by which a respondent may demonstrate rights or legitimate interests:
(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 tarnish the trademark or service mark at issue.”
The Respondent’s defence plea is that Edward Steichen is his personal name, but has failed to file any evidence that he is known by the name Edward Steichen. It is recognized that the plea of the domain name reflecting the personal name of the respondent can be a valid defence, provided such a claim is substantiated with evidence. See G. A. Modefine S.A. v. A.R. Mani,WIPO Case No. D2001-0537, where the respondent succeeded in retaining his domain name based on documents showing he was known by the name.
For a respondent to establish his rights or legitimate interests based on his personal name, some evidence has to be filed. See Avid Dating Life Inc. v. IT Admin.,WIPO Case No. D2013-0891, where the respondent registered the domain name allegedly to reflect his personal name Ashley Nadison but offered no evidence, and was found to have no rights or legitimate interests in the domain name in the absence of evidence. The Respondent here has not submitted evidence to show that he is known by the name Edward Steichen and in the absence of evidence the Panel finds the Respondent’s submission that Edward Steichen is his personal name is untenable.
The Respondent has submitted that as the current registrant he has removed all photography related links placed by the previous registrant and currently uses the disputed domain name for a bona fide offering of links to popular services from his site. In his supplemental submissions the Respondent has addressed the issue of the date he acquired the disputed domain name and the discrepancy of date due to delay in updating the new registrant record. The Panel acknowledges, based on evidence filed, that the change of registrant details appears to have occurred on August 9, 2013, which is prior to the filing of the initial Complaint and not after August 14, 2013 as submitted by the Complainant. However the site linked to the disputed domain name is still dedicated to promoting third party sites, whether or not it was prior to notice of the dispute and such use of the disputed domain name does not in the circumstances of this case constitute bona fide use. The Respondent has not been able to establish that he has used the site for a bona-fide offering of services as claimed by him, but is merely a link farm website.
It is not the Respondent’s case that he is selling the works of Edward Steichen the photographer and artist and is making fair use of the artist’s name. See the discussion in Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-673, where the respondent had registered the domain name and used it to offer for sale lithographs, etchings and screen prints of the works of the artist Sam Francis. It was discussed in that case that the existence of the artist’s common law trademark does not prohibit or prevent art collectors or the public from referring to a piece as a “Sam Francis”. Works of a famous artist are often referred to by the name of the artist and it was discussed that the existence of a common law trademark or service mark does not prohibit the use of the phrase “Sam Francis” in a manner denoting that a gallery or exhibition, whether physical or virtual, is sponsored or authorized by Sam Francis or his estate for selling his works or other derivative works of the artist, and such use of the artists name would be considered nominative fair use.
The Panel finds the Respondent has not offered convincing evidence for the applicability of any of the provisions under paragraph 4(c) of the Policy. The Panel finds the Complainant has put forward a prima facie case that the Respondent lacks rights of legitimate interests in the disputed domain name as no authorization has been given to the Respondent to use the name. The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Respondent has admitted in his submission of being aware of the photographer Edward Steichen. It is clear from Sylvia Greenberg’s declaratory statement that the two companies Museum Artists and Gift Services are in the business of registering names of famous personalities. The facts and circumstances here indicate that Sylvia Greenberg has engaged in a pattern of registration of domain names that are of famous persons and particularly of famous museum artists. The Respondent has provided Gift Services as the contact address for the disputed domain name and the Panel finds this indicates there is some connection or nexus between the Respondent and Sylvia Greenberg of Gift Services. Based on these facts it can be inferred that the present Respondent and previous registrant are involved in a systematic pursuit of obtaining and stock piling valuable domain names without regard for third party rights in these names.
The website linked to the disputed domain name is admittedly being used as a pay-per-click parking page. The Respondent’s activity seems to be primarily motivated to derive commercial gain by diverting Internet users to sponsored links from his website. Domain name disputes are decided on the balance of probabilities and an asserting party would typically need to establish that it is more likely than not that the facts claimed are true. Merely making submissions or denying the conditions that illustrates bad faith registration and use under paragraph 4(b) of the Policy in the absence of evidence would be insufficient. The Respondent’s submissions are therefore found to be at variance with the discussed facts and circumstances. Delay in bringing action is not necessarily detrimental to a complainant if the facts show there is unauthorized use of a famous name or mark, see Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group, supra, where a domain name dispute was filed twelve years after the date of registration of the domain name and it was found that the domain name was registered thirty years after the artist Jim Morrison began using his name as a singer and his fame as a rock star, song writer and poet was established by that time.
The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: October 14, 2013
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