The Complainant is Gallerie degli Uffizi of Florence, Italy, internally represented.
The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States of America / BoxNic Anstalt of Vaduz, Liechtenstein, represented by Enzo Fogliani, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2018. The amended Complaint was filed with the Center on January 25, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on February 9, 2018.
The Center verified that the Complaint together with the first and second amended Complaints 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 February 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2018. The Response was filed with the Center on March 5, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 19, 2018. 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 Complainant is Gallerie degli Uffizi, Florence, also known as Uffizi Galleries, doing business as “Uffizi” or “Uffizi Gallery”. The Complainant describes itself as one of the most popular museums in the world. The Complainant is the owner of European Union registered trademark no. 17158114 for a figurative mark consisting of a “GU” device together with the words LE GALLERIE DEGLI UFFIZI, filed on August 30, 2017 and registered on January 25, 2018 in multiple use classes.
The Respondent is an entity with an address in Lichtenstein. The disputed domain name was created on December 18, 1998. The Respondent is the owner of European Union registered trademark no. 15655459 for a figurative mark consisting of the words “U” together with a red and gold fleur-de-lis device, filed on July 13, 2016 and registered on October 31, 2016 in use class 35.
A screenshot of a page on the website associated with the disputed domain name dated September 13, 2008 shows a top banner stating “Online Booking Uffizi Gallery tickets” and a prominent left hand banner featuring a fleur-de-lis design below which are the words “Uffizi / Uffizi Gallery”. The site describes how to reserve “Uffizi tickets”, adding “Official web site of Uffizi Museum is: .”
A screenshot of the homepage for the website associated with the disputed domain name dated February 24, 2018 shows a header stating “Uffizi Ticket Online Booking”, with a first menu item after the Respondent’s logo and figurative mark headed “UFFIZI GALLERY” followed by items such as “BUY TICKETS” and “FLORENCE MUSEUMS”. Below an image banner are the words “Book now UFFIZI TICKETS and avoid long QUEUES! Skip the line!”. In a center column, a prominent calendar system invites the user to select dates for the purchase of tickets. In a left hand column the following statement is written:
“Everyone knows that in order to visit the Uffzi have to wait long queues [sic]. This is because only small groups of visitors can enter, to not spoil the magnificent works kept in the museum. If you do not want to do long queues under the Tuscan’s sun or the bitter cold of Florence, you can buy tickets in advance, paying only a small fee. The tickets will be delivered by email also on your smartphone, so when you will get to Florence, you will only have to arrive a few minutes before the booked time and visit the Uffizi Gallery.
U is a ‘gift’ to the well known museum we are not the official site and we haven’t got connection to the Uffizi Gallery or other museums.”
The Respondent’s said website goes on to describe the Complainant’s gallery/museum as “[o]ne of the most important Italian museums, and the most visited, it is also one of the largest and best known in the world”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that it is one of the most popular museums in the world and notes that it also does business under the names “Uffizi” and “Uffizi Gallery”. The Complainant explains that it registered the trademark described in the factual background section above for a further protection against abuses. The Complainant submits that its trademark registration protects it against improper third party use of such mark and prevents the risk of confusion for the public arising from third party use of trademarks and domain names similar to those of the Complainant.
The Complainant asserts that where the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the disputed domain name should be transferred to the Complainant. The Complainant points out that the name “Uffizi” is identical to the disputed domain name and asserts that the disputed domain name should therefore be transferred to the Complainant.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name and contends that the Complainant should be entitled to its exclusive use. The Complainant asserts that the disputed domain name is a distinctive sign and reiterates that the Complainant’s brand is a trademark which guarantees protection to the owner from improper use by third parties.
With regard to registration and use of the disputed domain name in bad faith, the Complainant notes that paragraph 4(b)(iv) of the Policy provides that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or of a product or service on your web site or location”. The Complainant contends that the website associated with the disputed domain name confuses customers and causes lost profits for the Complainant via the online sale of higher priced tickets for the Complainant’s museums. The Complainant adds that this gives rise to considerable economic damage to the Complainant. B. Respondent
The Respondent requests the Panel to deny the remedy sought by the Complainant.
The Respondent denies that the disputed domain name creates any confusion with the Complainant’s trademark, noting that such mark was registered more than a year after the Respondent’s trademark was registered. The Respondent also notes that “uffizi” is an Italian common word being the plural of “uffizio”, an old-fashioned version of the word “ufficio” meaning “office”. The Respondent states that the Complainant’s name “Gallerie degli Uffizi” derives from the fact that it is located in the same building where in the 16th century the famous Medici family who governed Florence at the time had established the city’s administrative offices or “uffizi”. The Respondent provides copies of two third-party websites showing a translation of the “offices” component of the Complainant’s name into French and Spanish respectively, namely “Galerie des Offices” and “Galeria de los Oficios”.
The Respondent asserts that, being a common word, “uffizi” can be the subject of an exclusive right only when joined to and in conjunction with other words in order to attribute a sufficiently distinctive character. The Respondent produces evidence that 76 trademarks containing the term “uffizi” have been registered and asserts that the Complainant thus has no exclusive right to the word on its own but only as “Gallerie degli Uffizi”. The Respondent submits that there is no evidence to the assertion that the Complainant is doing business under the names “Uffizi” and “Uffizi Galleries”.
The Respondent asserts that it has rights in the disputed domain name corresponding exactly to the Respondent’s own registered trademark and asserts that this possesses strong distinctiveness due to the presence of the “.com” suffix. The Respondent notes that its mark has never been challenged by the Complainant. The Respondent adds that the disputed domain name has been known on the Internet since 2007 and that since 2008 it has been selling agency tickets for museums and cultural and sporting events. The Respondent acknowledges that among such tickets are those for the Complainant’s museum but besides these there are tickets available for other attractions such as the Museums of Rome and the Colosseum. The Respondent adds that its site has always stated expressly “We are not the official site and we have not got connection to the Uffizi Gallery or other museums”.
The Respondent contrasts its alleged good faith activities over the preceding decade with the activities of the Complainant, noting that the Complainant only acquired its present domain name and began to sell tickets online in 2013, more than five years after the commencement of the activity at the disputed domain name. The Respondent states that it is not damaging the business of the Complainant but is enlarging it by purchasing tickets from the Complainant or its resellers, thus expanding the number of visitors to the museum and increasing the Complainant’s sales. The Respondent adds that the Complainant’s website is offered only in Italian and English while the Respondent’s site is aimed at visitors and speakers of six different languages which also serves to increase ticket sales. The Respondent submits that such ticket sales are perfectly legal and that such tickets allow visitors to enter the Complainant’s museum. The Respondent adds that there are many other websites which sell the same tickets for access to the Complainant’s gallery and produces multiple examples.
The Respondent denies that it is confusing customers or selling the Complainant’s tickets at higher prices. The Respondent reiterates that its site carries a disclaimer and that its ticket sales page clearly states the cost of the ticket and amount of commission due to the Respondent for the service rendered. The Respondent asserts that the Complainant does not lose any profits as the Complainant collects the same amount for tickets sold by the Respondent as those sold online from the Complainant’s website. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical 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; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary Matter: Language of the Administrative Proceeding
The Complainant states in the Complaint as originally filed: “Uffizi Gallery is one of the most popular museums in the world, located in Florence, Italy; so the Italian Language would most probably be familiar for carrying on the procedure”. The Complaint was however submitted in English. The language of the registration agreement for the disputed domain name is English. The Respondent is located in Liechtenstein and has communicated with the Center in English. The Center wrote to the Parties on February 8, 2018 noting these facts and stating that in accordance with paragraph 11(a) of the Rules and subject to the Panel’s discretion it would proceed with English as the language of the administrative proceeding. In light of the Center’s notification, the Complainant appears to have deleted its original comment from the second amended Complaint, also submitted in English. Nevertheless, the Panel will briefly address the language issue for the sake of completeness.
Paragraph 11(a) of the Rules states that unless otherwise agreed by the Parties or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, it is clear to the Panel that both of the Parties are capable of understanding and communicating in English, this being the language used in both Complaint and Response, notwithstanding the Complainant’s original request. The Panel therefore sees no reason for departing from the usual “default” language, noting that no scenario such as those described in section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) is present in the circumstances of this case. B. Identical or Confusingly Similar
In order for the Complainant to make out its case under this element of the Policy, it must show that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark. The mark on which the Complainant expressly relies for this purpose is its European Union registered trademark described in the factual background section above. This mark is figurative in nature and so it is convenient to consider the terms of section 1.10 of the WIPO Overview 3.0 which indicates that, in the case of such a mark, panel assessment of identity or confusing similarity involves comparing the alphanumeric domain name and the textual components of the relevant mark, noting that to the extent that design or figurative/stylized elements would be incapable of representation in domain names, these elements are largely disregarded for the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy. The section goes on to note that trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity, adding a caveat that where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements, panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the Policy.
With these observations in mind, the Panel notes that the only design elements in the Complainant’s mark are the stylized “GU” logo. The remainder of the mark, LE GALLERIE DEGLI UFFIZI, is in textual form and may usefully be compared to the disputed domain name. The Panel disregards the generic Top-Level Domain (“gTLD”) “.com” for the purposes of comparison as is customary in cases under the Policy on the grounds that it is required for technical reasons only. This leads the Panel to a relatively straightforward side-by-side comparison of the domain name and textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name (see section 1.7 of the WIPO Overview 3.0) namely in this case between “uffizi” and LE GALLERIE DEGLI UFFIZI. Where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. Here, the Panel finds the word “UFFIZI” to be the dominant portion of the mark, in that the mark may be translated as “The Uffizi Galleries” such that all of the focus of the additional words is upon the “Uffizi” component which provides specificity as to the galleries concerned.
The Respondent’s submissions as to whether there is any confusion between the Complainant’s mark and the disputed domain name are not relevant to the first element test of identity or confusing similarity. The fact that the disputed domain name may consist of a common word would not, of itself, prevent a finding of confusing similarity provided that, as here, the dominant portion of the mark may be readily identified within the disputed domain name on the basis of the comparison discussed above. Similarly, to the extent that the Respondent is taking issue with the fact that the Complainant’s registered mark post-dates the registration date of the disputed domain name, the Panel notes that while this may be relevant to the analysis of the second and third elements of the Policy it is not relevant to the first element. What is required is that a complainant demonstrates that it has UDRP-relevant rights at the date when it files the complaint in order to be able to show standing for the purposes of the administrative proceeding (see section 1.1.3 of the WIPO Overview 3.0 which observes that where a domain name may have been registered before a complainant has acquired trademark rights this does not by itself preclude a complainant’s standing to file a UDRP case nor a panel’s finding of identity or confusing similarity under the first element).
While the above analysis demonstrates that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy, it is convenient at this point to consider those of the Complainant’s submissions which appear relevant to the question of unregistered trademark rights which it may possess in the word or mark UFFIZI. Section 1.3 of the WIPO Overview 3.0 states that in light of the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.
The Complaint itself provides no evidential support for its averments that it does business under the UFFIZI mark and is one of the most popular museums in the world. By themselves, these averments would not go far enough to establish unregistered or common law rights in a mark. Section 1.3 of the WIPO Overview 3.0 indicates that a complainant’s alleged unregistered or common law mark must have become a distinctive identifier which consumers associate with the complainant’s goods and/or services, and that relevant evidence should disclose, for example, (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. The section also notes that conclusory allegations of such rights, even if undisputed in the particular case, would not normally suffice to show secondary meaning, adding that in cases involving unregistered or common law marks comprised of descriptive terms which are not inherently distinctive there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
This is not however the end of the matter in this particular case which has the relatively unusual feature that the Respondent has provided extensive evidence which is strongly supportive both of the Complainant’s assertions and of the notion that the term UFFIZI has acquired a secondary meaning denoting the Complainant and its gallery/museum. In particular, the Respondent produces screenshots from no less than ten independent websites which attest to the worldwide fame of the Complainant’s museum, originally constructed as the “Uffizi palace” in 1560, opened to visitors on request during the 16th century and officially opened to the public as a museum in 1765. These websites provide ample evidence of the fact that the Complainant is known both by tour operators and by the public (several of whom who left corresponding reviews on those websites) as “the Uffizi” as much if not more so than it may be known by its full name in Italian as found in the Complainant’s registered trademark. This evidence further shows that the capitalized term “Uffizi” is used adjectivally in phrases such as “Uffizi tours”, “Uffizi tickets” and, even on the Respondent’s own website, as “Uffizi Ticket Online Booking”. “The Uffizi”, as the Complainant’s gallery/museum therefore appears to be widely known in short form, is demonstrably popular with the general public given that the websites produced by the Respondent appear to be selling priority tickets while noting in some cases, as does the Respondent’s site, that there are very long waits in line to be expected for those who do not pre-book such access.
The Respondent notes that the “Uffizi” element of the Complainant’s name is derived from the word “uffizi” being an archaic form of “uffici” meaning “offices”. This is corroborated by those of the websites produced by the Respondent which offer a description of the origin and history of the Complainant’s name. The Respondent goes on to extrapolate that this means that the Complainant can claim no distinctiveness and thus presumably that no secondary meaning could be established in the term on its own. This argument holds no water. First, it is worthy of note that the word “uffizi” is archaic and there is no evidence before the Panel that it remains in common or widespread use in this older form. Secondly, to the extent that this word might have been regarded as not inherently distinctive, the material produced by the Respondent has more than discharged the criteria as outlined in section 1.3 of the WIPO Overview 3.0 to present evidence of acquired distinctiveness/secondary meaning. It is worth noting that some of the websites choose to de-capitalize the word “uffizi” when explaining the “offices” origin of the name and to capitalize it as “Uffizi” when referring to the Complainant’s mark in phrases such as “your Uffizi tour”. Furthermore, in reaching its Decision, it has been impossible for the Panel overlook the fact that its own built-in spell-checker within its word processing software appears to be set by default to automatically correct any attempt to type a lower case instance of the word “uffizi” to the capitalized form thus adding to the notion that such secondary meaning has somewhat eclipsed the original term.
In the Panel’s experience the extraordinary level of evidential support and corroboration for the Complainant’s position as found in the annexes to the Response far exceeds that which would be expected of the typical complainant seeking to establish secondary meaning in a name or mark and encompasses multiple examples of both consumer and industry recognition for the term. The Panel observes that the Complainant took a considerable risk in evidential terms by leaving matters to the Respondent to make its case out for it on the question of its rights in the UFFIZI name or mark. Indeed, had the Respondent remained silent, the Complainant’s claim regarding this term may have even failed for lack of evidence. That said, the Panel is required to weigh all of the evidence before it in the balance, regardless from where it originates, and in those circumstances finds it established that the Complainant has rights in an unregistered mark for the term UFFIZI due to the extent of the mark’s recognition and the length of time that the Complainant and its predecessors have used it in connection with the eponymous gallery/museum, dating back at least to 1765 when it was first opened to the public. Given that the Respondent’s evidence from multiple independent sources describes the centuries old history of the Complainant’s activities linked to the UFFIZI mark and praises the eponymous institution as “world-renowned”, “one of the first modern museums in the world”, “one of the most important museums in Italy”, and “the earliest museum in modern Europe” which “displays the greatest paintings from every age”, the Panel is convinced on the balance of probabilities of the existence of such rights and the fact that these long pre-date the registration of the disputed domain name. While, as noted above, this is not essential to the decision on the first element, it is of crucial importance to the second and third elements to which the Panel will now turn.
In the above circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Panel finds that the requisite prima facie case has been made out by the Complainant, albeit marginally, on the basis of its submissions that it is one of the most popular museums in the world and that the Respondent is trading off the Complainant’s name by selling tickets to the Complainant’s museum which is confusing its customers. The Panel makes the reasonable inference from these submissions that the Complainant has granted no permission, licence or otherwise for its UFFIZI mark to be used for such purpose in commerce by the Respondent, and that the Complainant did not invite or permit the Respondent to acquire a domain name that is confusingly similar to such mark.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. The essence of the Respondent’s submissions on this topic are that it has rights in the disputed domain name in consequence of its registered trademark, by virtue of the fact that it has been known on the Internet under such name since 2007 and has been selling agency tickets since 2008, and on the basis that the disputed domain name is a dictionary word with the implication being that it is making legitimate fair use of such term. These submissions correspond approximately to a claim of use of the disputed domain name before notice of the dispute in connection with a bona fide offering of goods or services in terms of paragraph 4(c)(i) of the Policy and a claim of having been commonly known by the disputed domain name and under the corresponding registered trademark, being a variant of the provisions of paragraph 4(c)(ii) of the Policy.
Dealing first with paragraph 4(c)(i) of the Policy, the Respondent provides supportive evidence that it has been trading in tickets since 2008 using the disputed domain name by way of a screenshot of the associated website dated September 13, 2008. The problem for the Respondent’s case, however, is that this screenshot demonstrates what in the Panel’s view is a use of the disputed domain name which could easily be confused with the Complainant’s mark by visitors. The exclusive use of the word “uffizi” in the disputed domain name provides, in itself, an attraction for the Respondent’s business on the basis that, by the use of this exact term alone, consumers may wrongly assume that they are visiting an official or at least an authorized website of the Complainant. Such confusion is not immediately dispelled by the website itself which was then headed “Online Booking Uffizi Gallery tickets”. It is only by reading the central panel rather carefully that visitors would be able to identify the fact that the website also lists the URL of the Complainant’s original website and indicates that reservations can be made by telephoning what the Panel assumes to be the Complainant’s booking line. Directly below this advice, however, in bold text, is the wording “We suggest to booking Uffizi Tickets: this means you don’t have to wait in long queues at the entrance”. The site goes on “If you want, it’s possible to booking tickets online filling the online form powered and provided by WAF [hyperlinked term]. Prices included also reservation fee and may be more expensive that directly purchased at the ticket office”. In the right hand column of the site are banner advertisements under the title “Advertising Uffizi” for tourist accommodation and a resort. Hyperlinks at the foot of the page appear to relate to the Complainant’s museum and other attractions.
The Panel considers that the use of the disputed domain name in 2008 could not be described in Policy terms as a bona fide offering of goods or services. It is apparent to the Panel that the Respondent was well aware of the name of the Complainant’s gallery and was taking full advantage of the fact that it controlled the disputed domain name, likely to be confusing in and of itself insofar as it is the exact term by which the Complainant is commonly known, to promote online ticket sales which by its own admission on the website were for the Complainant’s attraction and were more expensive than those offered by the Complainant. Although the focus of the site was on such tickets, the Respondent also promoted third-party services using the attractive force of the Complainant’s UFFIZI mark. The Panel finds it difficult to imagine how the Respondent could conceive of this particular use as a bona fide offering of goods or services given the use of the Complainant’s UFFIZI mark in both as the disputed domain name itself and prominently on the associated website.
While the above analysis discusses the position in 2008, as noted by section 2.11 of the WIPO Overview 3.0, panels tend to assess claimed respondent rights or legitimate interests in the present with a view to the circumstances prevailing at the time of the filing of the complaint. The Panel therefore turns to consider the use of the Respondent’s website in the most recent screenshot provided by the Respondent which is dated February 24, 2018. This is headed “Uffizi Ticket Online Booking” with the first two hyperlinks in a top row menu of “UFFIZI GALLERY / BUY TICKETS”. Below this is a full width image of classical artwork with a large text prominent overlay of the words “Uffizi Gallery / The heart of Renaissance”. Under this image there are three columns, the first of which contains the wording described in the factual background section above and the second of which provides a diary system for selecting dates under the header “BOOK NOW UFFIZI TICKETS”. In the Panel’s opinion, the Respondent’s use of the disputed domain name in its present form is misleading as to source or sponsorship and the Respondent’s suggestion on the website that it is a “gift” to the Complainant is particularly disingenuous. The Panel notes that a form of disclaimer is present, but this is not particularly prominent and could easily be overlooked by consumers using the site to book tickets to the Complainant’s museum/gallery.
The Response points out that the Respondent is selling the Complainant’s own tickets at the same face value in support of its claim to rights and legitimate interests. While there is no express assertion that the Respondent is thereby making nominative fair use of the UFFIZI mark in the disputed domain name, the Panel will consider briefly whether the Respondent may be treated as a reseller of the Complainant and may thereby be able to establish a legitimate interest in the disputed domain name. Section 2.8.1 of the WIPO Overview 3.0 describes the “Oki Data test” which derives from Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and which recognizes that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Before applying the test, the Panel notes that a claim to alleged nominative fair use encounters an initial difficulty in the present case. As provided in section 2.8.2 of the WIPO Overview 3.0, cases applying the test usually involve a domain name comprising a trademark plus a descriptive term. In the present case, the Complainant’s mark is not accompanied by any descriptive terms such as, for example, UFFIZI + “tickets”. Section 2.8.2 of the WIPO Overview 3.0 goes on to add that the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark, as is the case here.
Even if the cumulative requirements of Oki Data, supra, are applied to the facts of this case for the sake of completeness, notwithstanding the issue identified in section 2.8.2 of the WIPO Overview 3.0, it may be seen that the Respondent’s use of the disputed domain name does not pass the test. The first requirement is that the Respondent must actually be offering the goods or services at issue, which is the case here. However, the Respondent’s website fails the second requirement which is that such site should sell only the trademarked goods or services. Furthermore, there is some doubt in the Panel’s mind that the Respondent meets the third requirement which is that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder. The site’s unofficial status is noted but this is found at the foot of a sidebar and, as indicated above, could hardly be described as prominent. The final requirement of the test is that the Respondent must not try to “corner the market” in domain names that reflect the trademark and this is not of particular relevance to the present case.
The Panel turns to consider the Respondent’s case regarding its own registered trademark and the suggestion that it has been commonly known by the disputed domain name. Section 2.12.2 of the WIPO Overview 3.0 notes that the existence of a respondent trademark does not automatically confer rights or legitimate interests on such respondent, adding that panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise to prevent the complainant’s exercise of its rights. The section cautions that absent evidence of such circumstances indicating pretext, however, panels have been reluctant to reject a respondent trademark registration out of hand.
Nevertheless, as the panel in BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298 notes:
“When considering the question of ‘rights or legitimate interests’ under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.”
In the case of Aukro Ukraine LLC v. PrivacyY, Igor Spodin,WIPO Case No. D2013-1568, the panel questioned the legitimacy of the respondent’s trademark on the above basis. Such trademark was a figurative mark containing the words “VCENE com”. This mark thus corresponded to which was the domain name in respect of which the complaint had been brought. The panel noted that the trademark had been registered some three years after the complainant registered its own trademark and began trading while the dominant and distinctive element of the respondent’s trademark was phonetically identical and visually confusingly similar to the complainant’s trademark. The respondent in that case did not deny that it was aware of the complainant and its business when it acquired the domain name. The panel noted:
“In these circumstances, it appears likely to the Panel that the Respondent has applied for and has registered its trademark in attempt to secure to himself trademark rights in the term ‘vcene’ and thus to legitimize its ownership of the disputed domain name and circumvent the application of the Policy, while being well aware of the Complainant, its goodwill in its trademark and website and its established position on the Ukrainian market for almost three years. In this situation, the Panel is not prepared to accept that the Respondent’s trademark was applied for and registered in good faith and that the conduct of the Respondent gives rise to rights or legitimate interests of the Respondent under the Policy in the disputed domain name.”
The Panel in the present case is faced with broadly analogous circumstances. The Respondent has obtained a registered trademark for a figurative mark which corresponds to the disputed domain name. It was registered many years after the Complainant began to use the name and mark UFFIZI. The Respondent has not denied that it was aware of the Complainant when it acquired the disputed domain name, nor could it have done so credibly to any extent given that its intent appears to have been to use both the disputed domain name and trademark for a purpose which is intimately connected with the Complainant and its rights, namely to offer what it describes as “Uffizi Tickets” for sale. In other words, both the disputed domain name and the Respondent’s registered trademark featuring the disputed domain name have only ever been used by the Respondent for the purpose of the associated website. Given that the Respondent’s disclaimer is not particularly prominent, such website effectively constitutes a misrepresentation that the Respondent is either the Complainant itself or at least is a specially authorized agent of the Complainant. A trademark which appears to have been registered and used exclusively for such a purpose cannot in the mind of the Panel confer rights or legitimate interests upon the Respondent. The Panel notes in passing that to the extent that the Response implies that the Respondent has been commonly known by the disputed domain name, no evidence along the lines anticipated by section 2.3 of the WIPO Overview 3.0 has been put forward to support such a contention.
Turning to the Respondent’s argument that the term “uffizi” is a dictionary word, the Panel notes that section 2.10 of the WIPO Overview 3.0 provides that merely registering a domain name comprised of a dictionary word does not by itself automatically confer rights or legitimate interests upon a respondent. The section goes on to add that in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for use, in connection with the relied-upon dictionary meaning and not to trade off third party trademark rights. In these circumstances, the Respondent’s argument can be swiftly disposed of. There is no evidence before the Panel that the Respondent has ever used or intended to use the disputed domain name in connection with the archaic meaning of the word “offices”. On the contrary, the Respondent openly uses the disputed domain name to sell tickets to the Complainant’s gallery/museum, thus trading off third party trademark rights. While, as the Respondent points out, third parties have evidently adopted the use of the term in their own trademarks, this in no way weakens or dilutes the Complainant’s rights in its mark and it is this mark and this mark only to which the Respondent’s use of UFFIZI in the disputed domain name is targeted.
To put matters another way, the Panel accepts the Respondent’s contention that the Complainant’s use of the name “Uffizi” has its origins in a dictionary term. In the Panel’s opinion, however, for the reasons outlined in connection with the first element above, the Complainant’s UFFIZI mark now functions as an “arbitrary” trademark (see section 2.10 of the WIPO Overview 3.0) in that the word itself is being used in connection with but does not relate to the goods or services, being gallery/museum tours, which the Complainant provides. The Respondent uses the mark for exactly the same goods or services and not to refer to “offices”.
Section 2.10.1 of the WIPO Overview 3.0 provides a similar example of a hypothetical respondent which might have a legitimate interest in the domain name if it uses this for a website providing information about the fruit or the color orange, whereas it would not have such a legitimate interest if the corresponding website is aimed at goods or services that target a third party trademark which uses the same term as a trademark in a non-dictionary sense (in this example: Orange, well-known inter alia for telecommunications and Internet services).
In short, there is no obvious connection between the word “uffizi” and the sale of tickets for museums and cultural events which is apparent to the Panel, other than through the Complainant’s UFFIZI name and mark. It is worth adding that one of the two dictionary definitions presented by the Respondent specifically mentions the Complainant’s name, which it describes as a “traditional designation”, thus itself demonstrating the longevity of the Complainant’s use of the word and its intimate association therewith.
In all of the above circumstances, the Panel considers that the Respondent has failed to meet the Complainant’s prima facie case by way of rebuttal and accordingly that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
There are two elements to the inquiry under this part of the Policy. These are conjunctive. The Panel must first determine whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, the Panel must decide whether the disputed domain name is being used in bad faith. For the Complainant to prevail, both elements of bad faith registration and use must be found to be present.
Before the Panel can consider the element of registration in bad faith, it must give consideration to the timing of the Respondent’s acquisition of an interest in the disputed domain name. The Response is silent on this matter. This is surprising given that it is a matter uniquely in the Respondent’s knowledge. According to the WhoIs record, the disputed domain name was created in 1998. However, all that the Respondent says on this topic is that the disputed domain name “has been known on the Internet since 2007” and that since 2008 it has been used to sell agency tickets for museums and cultural and sporting events.
The earliest screenshot produced by the Respondent of the website associated with the disputed domain name dates from 2008. It is taken from the Internet Archive “Wayback Machine”. A later screenshot of the same site dated February 24, 2018, also from the “Wayback Machine”, features a header which states that over 800 such historic screenshots are available dating as far back as January 25, 1999. Why did the Respondent provide nothing earlier than 2008, when such evidence is clearly available on the “Wayback Machine”? The Panel does not know the answer to that question.
The Panel considers that the omission of any earlier history of the disputed domain name or its associated website is significant and is intentional rather than accidental on the part of the Respondent. It is not a matter which the Panel could imagine being easily overlooked, given that the Respondent is represented by legal counsel and has provided a careful account of its activities from 2008 onwards with a supporting reference to the “Wayback Machine”. Had there been any prior use of the disputed domain name by the Respondent between the date of its original creation in 1998 and the described first use of 2008 which was supportive of the notion that it was registered or acquired in good faith, the Panel would have expected to find this in the Response, all the more so when it is evident that the Respondent is well aware that additional historic data is available in the location from which it has already retrieved evidence. In all of these circumstances and in the absence of evidence to the contrary, the Panel considers it reasonable to infer that the disputed domain name was acquired by the Respondent in 2007-2008. In any event, it ultimately does not matter; moreover the Panel is left to assess the Respondent’s conduct on the above-noted evidence before it. See in this respect WIPO Overview 3.0, section 3.2.1.
On the basis of the evidence before it, the Panel is satisfied that the Respondent’s intention in acquiring the disputed domain name was to use it for the purpose for which it is currently used, namely to sell tickets to the Respondent’s gallery/museum alongside related third-party services such as tickets to other attractions, tours and hotel accommodation. It is therefore self-evident that it was acquired with knowledge of and intent to target the Complainant’s longstanding UFFIZI name and mark. This could neither be considered a good faith purpose for the registration nor a good faith use of the disputed domain name.
The Respondent seeks to mitigate its conduct by arguing that tickets to other attractions are available on its website and/or that third parties also sell such tickets. In contrast to the third-party websites, however, the Respondent is using the UFFIZI mark without adornment or qualification in its domain name to draw large numbers of visitors to its site via its attractive force. Again in contrast to such third-party sites, visitors to the Respondent’s site are likely to be confused by the content as to whether the Respondent is the Complainant itself or whether there is a commercial connection with the Complainant or endorsement by it. This results from the prominent use of the UFFIZI mark not only as the disputed domain name, which has drawn the visitor in, but also in multiple headings such as “BOOK NOW UFFIZI TICKETS” in connection with what is evidently the Complainant’s gallery/museum.
The Respondent argues that the presence on its website of a disclaimer serves to dispel any potential confusion. Section 3.7 of the WIPO Overview 3.0 deals with the question of how a disclaimer on a webpage to which the disputed domain name resolves may impact a panel’s assessment of bad faith, noting that where a respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. An example cited is the Oki Data test if the respondent is legitimately providing goods and services related to the complainant’s mark only. The section notes that this can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users. The section goes on to note that on the other hand, where the overall circumstances of the case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure this and indeed may be considered an admission by the respondent that users may be confused.
In the present case, the Panel takes the view that the disclaimer on the Respondent’s website is insufficiently prominent. Furthermore, it amounts to an admission that users may otherwise be confused. As noted above, there are no circumstances conferring a right or legitimate interest upon the Respondent such as those arising from the Oki Data test. The statement in the disclaimer that the website is “a gift” does nothing to dispel the confusion already generated. In terms of prominence, the website title, imaging and extensive use of the UFFIZI mark in headings above the diary booking system all support the notion that the site is that of the Complainant or is commercially connected to or specially endorsed by the Complainant. To identify that this is not the case, the visitor must scroll to the left hand sidebar and read the fourth paragraph of four, all of which are presented in grey text on a white background in a relatively small typeface. The eye is not drawn to this sidebar but rather to the full width image at the top of the page with its large white overlaid text, together with the large black text below with the words “BOOK NOW UFFIZI TICKETS”.
The Panel notes the Respondent’s submission that it has been using the disputed domain name for its present use over almost a decade without complaint or objection from the Complainant. Section 4.17 of the WIPO Overview 3.0 notes that panels have widely recognized the fact that mere delay between the registration of a domain name and the filing of a complaint neither bars a complaint from filing such case, nor from potentially prevailing on the merits. The section adds that panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. A qualification to this approach is noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.
In the Panel’s opinion, the qualification to the general rule on delay does not apply in the present case. There is no evidence that the Complainant was or should have been aware of the Respondent’s activities prior to the filing of the Complaint, nor that the Respondent has acted to its detriment in reliance on such knowledge. Those cases which apply the qualification appear in the Panel’s opinion to be based upon very specific facts and circumstances which do not apply here, such as, for example, the fact that a complainant was a previous registrant of the domain name concerned and after some years of inactivity took steps to reassert rights over such domain name after other parties had arranged their own affairs and taken steps to advance their own interest therein (see NYLSTAR S.A. v. Domain Administrator, Meryl Blog,WIPO Case No. D2016-0561) or the fact that a complainant knew of and condoned the use over a lengthy period of the domain name concerned for a fan site which did not compete and could not be confused with such complainant (see Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon,WIPO Case No. D2016-1455).
In summary, the Panel upholds the Complainant’s contention that on the balance of probabilities the Respondent acquired and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or of products or services on such website, conform to paragraph 4(b)(iv) of the Policy. The Panel has also found that the disclaimer on such site is insufficiently prominent to avoid the likelihood of confusion and serves to confirm that the Respondent is fully aware of such likelihood and is seeking to benefit thereby. The fact that the Respondent may have done this for some time already and has recently registered a figurative trademark to support such activity does not in the Panel’s opinion shield it from a finding of bad faith in terms of the Policy.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: April 2, 2018
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