The Complainant is Alexander Andon (dba Alec Monopoly) c/o Eden Gallery Ltd., Israel, and Alec Monopoly, LLC (dba Alec Monopoly), United States of America (“United States”), represented by Liad Whatstein & Co., Israel.
The Respondent is Damien Picot, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, 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 June 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 9, 2021. On June 9, 2021, the Center sent an email in English and French regarding the language of the proceeding. The Complainant replied the same day and requested English to be the language of the proceeding. Once June 14, 2021, the Respondent replied in French but did not submit comments regarding the language of the proceeding. The Center verified that the Complaint together with the amendment to 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”). The Center received some communications from the Respondent on June 1, 2021, on June 3, 2021 and on June 14, 2021, to which the Center acknowledged receipt. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and French, and the proceedings commenced on June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on July 8, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on July 13, 2021. 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 has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent. 4. Factual Background The Complainant is Alexander Andon (dba Alec Monopoly), one of the most internationally renowned graffiti artists, and his holding company Alec Monopoly, LLC (dba Alec Monopoly). The latter owns, among others, the following trademark registrations for ALEC: - United States Trademark Registration No. 5208527 for ALEC and design, registered on May 23, 2017; - European Union Trade Mark Registration No. 018088600 for ALEC and design, registered on November 9, 2019. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on November 27, 2019, and it redirects to an “error” webpage, although when the Complaint was filed it redirected to a website where artworks of several artists, among which the Complainant, were offered for sale. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to both its trademark ALEC and the internationally renowned graffiti artist name and surname, “Alec Monopoly”. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark ALEC and the artist name and surname “Alec Monopoly” are distinctive and well-known, and therefore the Respondent targeted the Complainant’s trademark and artist name and surname at the time of registration of the disputed domain name, with the purpose to intentionally attract, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark ALEC and artist name and surname “Alec Monopoly” by pretending to be owned, endorsed or associated with the Complainant, while offering for sale the Complainant’s artworks in the website at the disputed domain name. B. Respondent The Respondent has made no formal reply to the Complainant’s contentions. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; and Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). In this case, the Respondent submitted three informal email communications in French, stating the following: "Bonjour, J'ai reçu en ce jour un e-mail concernant un litige sur le nom de domaine alecmonopoly-shop.com Pourriez vous m'éclairer sur la procédure à suivre s'il vous plaît ? Bien à vous” (June 1, 2021). "Bonjour, Je vous contacte suite à un mail reçu de la part de l'entreprise IONOS concernant la procédure UDRP C951927644. Je souhaite conserver l'usage du nom de domaine cité, je l'ai acheté et enregistré car il correspond en tout point au nom de mon entreprise Alec Monopoly Shop LTD basée en Irlande, spécialisée dans le e-commerce et consulting lié au e-commerce. Nous ne nous substituons en aucun cas le plaignant. Notre site web propose à la vente tout type de produit - tableaux, sculptures, décorations, or jusqu'à présent le plaignant n'a pas de boutique en ligne, mais souhaite se lancer je suppose ? Je comprends que l'enregistrement de ce nom de domaine puisse froisser certains de ses projets, cependant l'enregistrement a été fait a posteriori, je pense être en droit de le conserver de ce fait, le site web est par ailleurs en cours de mise à jour. Je reste à votre entière disposition pour toute information complémentaire ou échange. Bien à vous” (June 3, 2021). "Bonjour, Je tiens à préciser que l'enregistrement "privé" du nom de domaine n'est en rien une manœuvre afin de cacher mon identité. Cette option, gratuite, est sélectionnée par défaut lors d'enregistrement de noms de domaine sur le site iONOS 1 and 1. Cette pratique est donc largement répandue et n'est en aucun cas un geste de mauvaise foi. Je tiens par ailleurs à préciser que l'enregistrement du nom de domaine alecmonopoly-shop.com n'a pas été fait dans le but de se substituer ou usurper la personne d'Alec Andon connue sur les réseaux sociaux en tant que Alec Monopoly mais bien de représenter notre entreprise Alec Monopoly Shop Limited basée en Irlande. Notre boutique en ligne propose des impressions sur toiles, sculptures et décorations modernes. Nous travaillons sur un modèle de dropshipping via des sites web tel que aliexpress.com - si certains produits posent problème alors ils seront retirés. Nous proposons des produits de différents styles et notre site n'est en aucun cas défini par le style ou par les œuvres de l'artiste Alec Monopoly. Notre site web est actuellement en cours de mise à jour et attendons une décision finale afin de procéder aux derniers travaux et à la mise en ligne de la nouvelle version site. Je suis aussi entré en contact avec la personne concernée en Juillet 2019 via Instagram et par e-mail cependant mes messages ont été "VUS" et sans réponse puis mon profil a été bloqué des réseaux sociauxMes mails sont aussi restés sans réponse. Vous trouverez ci-joint le certificat d'enregistrement de notre entreprise. Bien à vous” (June 14, 2021). 6.1 Language of Proceedings According to paragraph 11(a) of the Rules, the Panel has decided that the language of the proceeding will be English. The language of the Registration Agreement is French, however, the Panel considers appropriate to conduct the proceeding in a language other than that of the Registration Agreement, since the language of the website at the disputed domain name when the Complaint was filed was only English and now that there is an “error” webpage it is in both English and French: therefore, the request to translate the Complaint into French would be an unfair burden as well as an unnecessary delay for the Complainant. Furthermore, the Respondent received the case-related communications from the Center both in French and English, the Respondent has not objected for English to be the language of the proceeding, and the Panel has taken into consideration the informal emails in French. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. 6.2 Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the registered trademark ALEC The Panel further finds that the Complainant has provided evidence of unregistered trademark for its artist and surname ALEC MONOPOLY for the purpose of the Policy (see sections 1.3 and 1.5 of the WIPO Overview 3.0). The Panel finds the disputed domain name is confusingly similar to the registered trademark ALEC and the unregistered trademark ALEC MONOPOLY. . Regarding the addition of the hyphen followed by the descriptive term “shop”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the hyphen followed by the word “shop” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark and artist name and surname. It is also well accepted that a generic Top-Level Domain, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services, because the Respondent’s website at the disputed domain name, by pretending to be somehow related to the Complainant, was not used for the genuine resale of the Complainant’s products, namely artworks. Should the Complainant’s artworks sold on the website to which the disputed domain name was redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that is confusingly similar to the Complainant’s trademark and artist name and surname in circumstances that are likely to give rise to confusion. According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1: “(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs 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. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. However, the website at the disputed domain name was making no reference to the lack of relationship between the Respondent and the Complainant and was offering also other artists’ artworks for sale. Thus, the Panel is of the opinion that this is sufficient to support the allegation of lack of rights or legitimate interests of the Respondent in relation to this disputed domain name. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. In fact, the Respondent, in his informal responses of June 1, 3 and 14, 2021 is basically stating that he registered the disputed domain name to reflect in Internet the name of his company, Alec Monopoly Shop LTD, incorporated in Ireland on October, 29, 2020 and operating in the field of e-commerce and e-commerce consultancy services, and to sell through Internet paintings, sculptures and decorations, although for the moment the website at the disputed domain name is being updated. The Respondent is also admitting that he knows the existence of the Complainant, as he tried to get in contact with the Complainant in July 2019 by Instagram and mail without receiving any reply, and that the registration of the disputed domain name could hurt some of the Complainant’s projects. From the analysis of the Respondent’s informal submissions, the Panel notes that, according to the incorporation certificate sent by the Respondent, the Irish Company Alec Monopoly Shop LTD, whose name consists of the name and surname of the Complainant, as he is known as a graffiti artist, apparently without the consent of the latter, was incorporated almost a year after the disputed domain name was registered and does not seem to belong to the Respondent but rather to Mr. Hugues and Joan Picot. The Panel is therefore on balance not able to find any demonstration of rights or legitimate interests of the Respondent in the disputed domain name. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain name, the Panel finds that the Respondent likely knew of the Complainant’s registered trademark ALEC and name and surname “Alec Monopoly” and deliberately registered the disputed domain name, especially because the Respondent himself, in one of his informal responses, stated that he tried to contact the Complainant in July 2019, that is before registering the disputed domain name, and, when the Complaint was filed, the website at the disputed domain name was offering for sale the Complainant’s artworks, together with other artists’ artworks. The Panel further notes that the disputed domain name was also used in bad faith since on the relevant website supposedly counterfeit and knockoff artworks of the Complainant were offered for sale, together with other artists’ artworks, and the word “shop” was displayed reproducing the same design as the Complainant’s trademark “ALEC and design”, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement. As regards the actual use of the disputed domain name, pointing to a landing “error” webpage, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has 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 Edoardo Fano
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
Sole Panelist
Date: July 16, 2021
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