The Complainant is Indivision Picasso, also called the Picasso Estate, France, represented by Sarrut Avocats, France.
The Respondent is Domains By Proxy, LLC, United States / JIAOLONG LIU, Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2021. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 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 December 1, 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 amended Complaint December 2, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2021.
The Center appointed Andrew D. S. Lothian, Jérôme Huet and Cherise Valles as panelists in this matter on January 25, 2022. The Panel finds that it was properly constituted. Each member of 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 BackgroundThe Complainant is Indivision Picasso, also known as The Picasso Estate. It is a French gathering of all of the living heirs of the late artist Pablo Picasso and manages all intellectual property rights deriving from the work and name of Pablo Picasso including copyright and trademark rights.
The Complainant owns a variety of registered trademarks consisting of the word PICASSO and figurative representations of the late artist’s signature. For example, the Complainant is the owner of European Union Registered Trademark no. 765586 for the word mark PICASSO, registered on June 18, 1999 in Classes 9, 16 and 42. Said mark has been converted into a national United Kingdom (“UK”) Registered Trademark (no. 900765586) as a result of the UK exiting the European Union, and is treated as having been registered on the same date as the European Union mark.
The disputed domain name was registered on October 14, 2021. Screenshots produced by the Complainant of the website associated with the disputed domain name are entitled “Picassol Solana Blockchain NFT Project “The Private Auction””. The website claims that it has “a mandate to re-visit Picasso’s artwork...". The website also proposes to sell non-fungible tokens (“NFTs”) of artwork to a “community of VIP Buyers” by private auction. The NFTs are said to consist of hand-drawn art pieces created “with official approval from current owners of Pablo Picasso’s art pieces” which have been created by the Respondent’s team of artists.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Identical or confusingly similar
The Complainant is the only legitimate owner of all intellectual property rights deriving from the work and name of Pablo Picasso. The Complainant has filed numerous trademarks to protect the name and work, aiming to forbid the use of the name in the course of trade without authorization, avoiding misleading of the public as to the genuine origin of the work. The Complainant’s UK mark is fully valid in the British Indian Ocean Territory (for which “.io” is the country code Top-Level Domain) by virtue of UK Government guidance entitled “Extension of UK IP right abroad”.
The disputed domain name repeats the name “Picasso” with an additional irrelevant letter “l”, which does not alter or lower the risk of confusion. Previous cases under the Policy show that the addition of one letter to a mark within a domain name implies a likelihood of confusion. Furthermore, if a search is performed on “picassol” on Google, the response first shows “try with the spelling picasso”. The first result refers to the Respondent’s website but the second is the Wikipedia page for Pablo Picasso and all the associated searches refer to his life, work and family.
Rights or legitimate interests
The Respondent’s site refers to “Project Picassol” to “eulogize famous Spanish painter Pablo Picasso” and states that it has a mandate to re-visit Picasso’s work, although no such mandate is found on said site. Should there be one or several, these mandates would be false and illegal, since no owner of a Picasso painting has the right to display his/her painting anywhere, including on the Internet, without the express consent of the Complainant. The Complainant has given no such mandate or authorization of any kind to the Respondent to use Picasso’s works. The representations of such works on the website associated with the disputed domain name are absolute infringements. No permission has been given to the Respondent to re-use computerized forms of said works as NFTs. The Respondent has not demonstrated any preparations to use the disputed domain name in connection with a bona fide offering of goods or services and there has been no authorization request made to the Complainant.
The Respondent proposes to mint computer tokens allowing the corresponding NFT, made from Picasso’s paintings, to be resold for an allegedly high amount of money. The Respondent is making an illegitimate and unfair use of the disputed domain name with intent for commercial gain and to mislead and divert consumers as to the origin and legal authorization status of the works. The Complainant is not willing to make any NFT from Picasso’s artwork and has never authorized anyone to do so.
Registered or used in bad faith
The Respondent’s “Project Picassol” has been so-named to create a likelihood of confusion with the Complainant’s marks as to the source, affiliation and endorsement of the Respondent’s website and the goods thereby sold. The Respondent has intentionally attempted to attract to its website, for commercial gain, Internet users named “VIPs” in order to be part of a project which infringes the Complainant’s intellectual property rights, both in the Complainant’s trademarks and in the artwork of Picasso.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn terms of paragraph 4(a) of the Policy, for the Complaint to succeed, the Complainant must prove each of the following:
(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 or is being used in bad faith.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must have UDRP-relevant rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark.
The Panel finds that the Complainant has established that it has UDRP-relevant rights in its PICASSO registered trademark as described in the factual background section above. The Complainant asserts that the disputed domain name is confusingly similar to such mark. The disputed domain name incorporates said trademark in its entirety with the addition of the letter “l”. As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) , where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark. Thus, the inclusion of the letter “l“ in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s PICASSO trademark.
It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “.com“, “.club“, “.nyc“) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”. In the present case, the TLD “.io” is disregarded under the first element of the confusing similarity test.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
“(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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences from this failure, where appropriate, in accordance with paragraph 14(b) of the Rules.
It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case under the second element of the Policy, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name concerned (see, for example, Linkedin Corporation v. Privacy service provided by Withheld for Privacy ehf / Scrap Linkedin,WIPO Case No. DIO2021-0019; Bayerische Motoren Werke AG v. Domain Privacy Ltd/ DNS Admin, WIPO Case No. DIO2021-0012; and the discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the present case, the Panel finds that the Complainant has established the requisite prima facie case. The evidence demonstrates that the Complainant is the owner of the PICASSO mark. The Complainant makes the unopposed assertion that it is also the legitimate owner of all intellectual property rights associated with the work of the late Pablo Picasso, and submits that it has never given any authorization to the Respondent in connection with any dealings involving said works. The Complainant notes that the disputed domain name contains a close typographical variant of the Complainant’s PICASSO mark, of only one (additional) letter difference. Furthermore, the Complainant’s evidence shows that the Respondent proposes to mint computer tokens for resale made from the late Pablo Picasso’s paintings via the website associated with the disputed domain name. The Complainant submits that the Respondent’s activities with the disputed domain name are conducted with intent for commercial gain to mislead and divert consumers by causing confusion regarding, first, the origin and, secondly, the lack of any official authorization of the said computer tokens.
On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not appear to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s PICASSO trademark in any manner, notably in, or as part of, the disputed domain name.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, it asserts that the Respondent has not demonstrated that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
Furthermore, the disputed domain name, consists of the Complainant’s PICASSO mark, suffixed with a single additional letter, and therefore carries a risk of implied affiliation. The disputed domain name cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and accordingly concludes that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithOn this topic, the Complainant is required to prove that the disputed domain name was registered or that it was used in bad faith. The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:
(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.
In the present case, the Complainant’s submissions relate to paragraph 4(b)(iv) of the Policy. The Complainant asserts, in particular, that the Respondent’s “Project Picassol” is so-named to create a likelihood of confusion with the Complainant’s widely-known PICASSO mark as to the source, sponsorship, affiliation, or endorsement of its website or the products sold on such site.
Previous panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typographical variants or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. In the present case, the Respondent seeks to attract Internet users interested in the works of Pablo Picasso to its website by creating a likelihood of confusion with the Complainant’s famous PICASSO trademark and with the legitimate works of the late artist.
The Respondent states on its said website that it has received permission from the owners of certain works to create digital representations thereof and is offering these for sale as NFTs. The Complainant makes the uncontested allegation that the Respondent has not received any authorization from the Complainant itself, either to use its PICASSO trademark or to deal in the Complainant’s intellectual property rights in the artwork of the late artist. The Respondent’s use of a typographical variant of the mark in the disputed domain name, in order to deal in digital representations of the said artwork, cannot be a good faith activity in the circumstances of the present case.
The Respondent has not participated in the administrative proceeding and has not answered the Complainant’s contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration or use of the disputed domain name in the face of the Complainant’s contentions can be regarded as an indicator of registration or use in bad faith (see, for example, Novartis AG. v. Mathew French,WIPO Case No. DIO2020-0011).
Accordingly, the Panel concludes that the Complainant has carried its burden of showing bad faith registration or use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Andrew D. S. Lothian
Presiding Panelist
Jérôme Huet
Panelist
Cherise Valles
Panelist
Date: February 8, 2022
1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to the WIPO Overview 3.0 and prior UDRP cases, where appropriate (see also Government Employees Insurance Company (“Geico”) v. Privacy.cc / Bulent Tekmen,WIPO Case No. DIO2020-0003).