Commission for Art Recovery, Inc. v. Alexandr Zaharov
Case No. D2008 1591
1. The Parties
The Complainant is Commission for Art Recovery, Inc., New York, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Alexandr Zaharov, Chisinau, Republic of Moldova.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2008. On October 21, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 21, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 20, 2008.
The Center appointed Hon. Sir Ian Barker as the sole panelist in this matter on December 1, 2008. 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 a not for profit corporation incorporated under the laws of the State of New York. Since its incorporation on August 17, 2000, and for some 3 years prior to that date, the Complainant has continuously used the term “Commission for Art Recovery”in connection with its mission, which is to foster efforts at restitution of art confiscated or seized as a policy of the Third Reich and as a consequence of the devastation of the holocaust.
The Complainant has been active for many years in the United States, Hungary, Russia, Germany and Slovakia. It encourages and assists governments, museums and other public institutions to identify works of art that may have been stolen during the years of the Third Reich, publicize information on these works on the Internet and to adopt procedures to facilitate the return of these works to the rightful owners.
The Complainant does not own a registered trademark. However, it has been active for many years in tracking down works of art stolen during the Nazi regime and restoring them to the descendants of the owners from whom the works were stolen.
The Respondent registered the disputed domain name on January 18, 2008. By that time, the Complainant had been using the COMMISSIONER FOR ART RECOVERY mark for over 10 years.
The Complainant registered the disputed domain name on October 30, 2000 and inadvertently allowed its registration to lapse in October 2007.
The Respondent acquired the disputed domain name when the registration lapsed. The Respondent’s website contains contact information of the Complainant’s organisation and incorporates, almost entirely, the Complainant’s 2001 website.
The Respondent has duplicated many of the links from the top of the home page of the Complainant’s original site (including the links “Mission”, “Established Policies” and “Media”). He has added additional links which take the visitor to commercial sites, including email marketing and offers for bulk email marketing software.
The Complainant attempted to purchase the disputed domain name from the Respondent, anonymously, but without success.
On October 6, 2008, the Complainant learnt that the Respondent had altered the content of the website from information about Commission for Art Recovery to information about an upcoming “2008 IUBS Conference”. This is a site purported to be associated with the American Physiological Society. The home page accessed by the disputed domain name still contains links to email marketing and addresses.
5. Parties’ Contentions
The Complainant has a common law trademark in respect of the disputed domain name, having operated expressly under that name for over 10 years. It also operated under the disputed domain name before it had inadvertently lapsed in October 2007.
The disputed domain name is confusingly similar to the Complainant’s unregistered mark in which the Complainant has rights.
The Complainant promotes numerous programmes, litigation activities and other advocacy efforts and has established significant goodwill and secondary meaning in the common law mark COMMISSION FOR ART RECOVERY.
The Respondent has no legitimate rights or interest in the disputed domain name. He was given none by the Complainant.
The Respondent, by adopting the disputed domain name (which the Complainant had inadvertently allowed to lapse), is capitalizing on the Complainant’s residual traffic. He must have acquired the disputed domain name in order to profit from traffic generated by the fame of the mark (see Rug Doctor LP v. Domain Strategy, Inc., WIPO Case No. D2002 0355), where it was said that the Respondent had “opportunistically picked up the domain name after its inadvertent lapsing and capitalized on its capacity to generate residual traffic and divert such traffic”.
The provisions of paragraph 4(c) of the Policy do not apply to the Respondent who has no legitimate rights or interests in the disputed domain name.
The Respondent clearly registered and is using the disputed domain name in bad faith. Registration occurred after the Complainant had made extensive use of the disputed domain name and its mark. The very fact of registration in these circumstances establishes bad faith use and registration.
The Respondent is attempting to pass himself off as the Complainant by repeatedly using the Complainant’s mark using information about the Complainant’s organisation and identifying the Complainant and its staff in sections of the website.
The Respondent is attempting to attract internet users to his website by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation or endorsement of his website.
The Respondent’s bad faith is reinforced by his use of the website to profit through “click through” traffic and also through his links which lead visitors to landing pages with links to topics wholly unrelated to any scientific conference.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has an unregistered common law trademark in the name COMMISSION FOR ART RECOVERY. The evidence is clear that it has operated extensively under this name for over 10 years. Its reach extends to several countries in Europe, as well within the United States of America.
Whilst most examples of unregistered trademarks come from cases of a commercial product being marketed, there is no reason why a not for–profit organisation such as the Complainant cannot acquire a common law mark by reason of its activities which have used the mark. Clearly, there is a secondary meaning here established sufficiently to justify a finding of a common law mark. The Complainant’s use of the disputed domain name for 7 years also is evidence of the existence of a common law mark.
In the opinion of the Panel, the disputed domain name is confusingly similar to the Complainant’s unregistered mark. The expression “comartrecovery” is a clear abbreviation for Commission for Art Recovery.
Accordingly, the Panel considers that the Complainant has established the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights or interests in the disputed domain name. The Respondent has not responded and, therefore, has provided no foundation for a defence based on paragraph 4(c) of the Policy. Accordingly, the Complainant is not required to prove anything further under this head. The Panel considers that the second limb of paragraph 4(a) of the Policy has been established.
In the clear circumstances of the blatant conduct of the Respondent, the Panel has no hesitation in finding that the Complainant has established bad faith registration and use under Paragraph 4(a)(iii) of the Policy.
The actions of the Respondent in acquiring the disputed domain name after it had lapsed and after it had been used by the Complainant for 7 years was clearly an opportunistic acquisition of the sort discussed in the Rug Doctor case cited earlier. It would be hard to find a more obvious case where there has been an opportunistic capitalization by the Respondent of the Complainant’s error in allowing the disputed domain name to lapse.
This view is strengthened by the action of the Respondent in first utilizing the Complainant’s website so as to attract persons legitimately seeking to find out about the Complainant. Then, in addition, providing “click through” options on its website. The curious change in the website in October 2008 to advertise a scientific conference also detracts from any suggestion of bona fide on the part of the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.