The Complainant is Sonja Junkers of Berlin, Germany, represented by Bressler Law PLLC, United States of America (“United States”).
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 14, 2017. 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 relevant facts are largely straightforward and can be summarized as follows.
The Complainant is an individual based in Germany. She owns and operates a contemporary art gallery in Munich named Galerie Sonja Junckers. She is well known in the international art world, and she uses her name SONJA JUNKERS to organize and promote art trade, exhibitions, curation and philanthropy services. The Complainant operates internationally. By way of example since 2016, she has rendered services under her name to the Chisenhale Gallery in London as a member of its Development Committee. Chisenhale Gallery commissions and produces contemporary art. From 2013 to 2016, the Complainant rendered her art trade, exhibition and curation services under her name and mark SONJA JUNKERS to the Abu Ghazaleh Collection located in Amman, Jordan. Since 2013, under her name SONJA JUNKERS, the Complainant has coordinated and supported the Abu Ghazaleh Collection’s funding of art exhibitions and curatorial posts to benefit international art institutions such as Tate Modern, Serpentine Gallery, Whitechapel Gallery and Chisenhale Gallery, all in London, as well as the New Museum (New York), the Centre Georges Pompidou (Paris), and the Venice Biennial (Venice, Italy).
The Complainant has provided in evidence examples of articles and material showing how her name is used and recognized. The following are a few of the many examples the Complainant has placed in evidence:
- A review of GALERIE SONJA JUNKERS published in the Frieze periodical, dated January 2011;
- Advertising for GALERIE SONJA JUNKERS placed in the ArtForum periodical, dated April 2010;
- Selected pages from the Chisenhale Gallery Internet website promoting SONJA JUNKERS as a Member of its Development Committee;
- A preview for GALERIE SONJA JUNKERS’ exhibition with Brandt Junceau (Cat Girl) published in September 2009 in the German edition of Vogue.
The Complainant was in the past the registrant of the Disputed Domain Name and operated a website linked to it. The Panel has not been told how or why the Complainant allowed her registration to lapse but it is clear that the Respondent obtained it on September 6, 2016. The Respondent has used it to link to a web site. In this regard as at the date of writing this decision the Disputed Domain Name links to a simple “website under construction” notice, but it appears from the filed evidence that previously it linked to an active website. The Panel has relied on the evidence filed by the Complainant as to the nature of this website. That evidence is not entirely easy to follow (not least because the Panel cannot see how various embedded links actually operate) but as the evidence has not been challenged by the Respondent the Panel accepts what the Complaint says, which in substance is as follows: the Respondent’s website in large measure copies the Complainant’s earlier website but in addition contains various links embedded in the text of the website which link to external sites promoting various German escort and “erotic pleasure” services. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are straightforward. Numerous previous WIPO decisions are relied upon by the Complainant. It is not necessary to repeat those here – where relevant they are addressed in the Panel’s discussion below. The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical to her name SONJA JUNKERS. Although she has no registered trademarks the nature and extent of activity she has carried out clearly establish unregistered rights in her name.
The Complainant says that the Respondent’s selection of the Disputed Domain Name cannot be a coincidence as SONJA JUNKERS is not a descriptive or generic term; it is a famous and well-known trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “Sonja Junkers”. There is no commercial meaning associated with SONJA JUNKERS other than in relation to the Complainant and her business.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The linking of the Disputed Domain Name to a website which promotes escort services clearly tarnishes her name and reputation by associating her falsely and maliciously with the sex trade and is evidence of bad faith. B. Respondent
No Response has been filed. 6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark SONJA JUNKERS. The filed evidence establishes she has a substantial commercial reputation in her name in connection with her business activities. She does not have any registered trademarks but the Panel does not consider this matters given the facts of this case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses this issue as follows:
“1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
In the present case given the evidence the Panel has no hesitation in concluding the Complainant has established that her name has acquired the distinctiveness necessary to satisfy this requirement and amounts to a trademark in which she has rights.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
The Panel finds “SONJA JUNKERS” is a term with no other commercial meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SONJA JUNKERS trademark. The Complainant has prior rights in the SONJA JUNKERS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the SONJA JUNKERS trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the SONJA JUNKERS trademark, and the identical nature of the Disputed Domain Name to the SONJA JUNKERS trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Respondent’s motives are somewhat obscure. Using the Disputed Domain Name to link to a website which reproduces the Complainant’s own website but then contains embedded links to third party escort service sites is a rather obscure way of promoting those third party sites. However it seems to the Panel the Respondent can only have one of two motives. Either (i) it selected the Disputed Domain Name precisely because of its association with the Complainant and presumably thought the name would be readily remembered and provide a convenient way to promote services, even though those services are in a field of activity (escort services) entirely unrelated to the Complainant’s field of activity; or (ii) it set about this venture because it thought the embedded links in what appears to be the Complainant’s website would in some way embarrass her and tarnish her reputation and/or would provide some sort of incentive for her to seek to purchase the Disputed Domain Name. Either possibility is, in the opinion of the Panel, conduct which amounts to bad faith registration and use.
In this regard the Panel agrees with the Complainant that linking of the Disputed Domain Name to a website which promotes (via embedded links to third party sites) escort services tarnishes the Complainant’s trademark. In this regard the Panel adopts the reasoning of the panel in Eidos Interactive Limited v. Moniker Privacy Services/Taranga Services Pty Ltd,WIPO Case No. D2009-0124: “With respect to the Respondent’s use of the domain name to attract Internet users to an adult content website, it is commonly understood, under WIPO panel decisions and it is the Panel’s view in the pending case, that, whatever might be the Respondent’s motivation, the use of domain names to divert users to pornographic sites is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith (see Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall,WIPO Case No. D2000-0568)”. In the present case the Respondent’s site and those sites to which it links are not said to be pornographic, but the Panel considers the same principles apply in relation to the promotion of escort and “erotic pleasure” services.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Names be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: June 28, 2017
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