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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONFondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber Case No. D2003-0251
1. The Parties The Complainant is Fondation Le Corbusier, Paris, France, represented by Maître Dominique de Leusse, Paris, France. The Respondents are Monsieur Bernard Weber of Zurich, Switzerland, and Madame Heidi Weber, of Zurich, Switzerland, represented by Ms. Dawn Osborne of Rouse & Co International, London, England.
2. The Domain Names and Registrar All 32 disputed domain names are registered with Melbourne IT Ltd, trading as Internet Name Worldwide. They are: artlecorbusier.com>
3. Procedural History The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2003. Next day the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On April 4, 2003, the Registrar transmitted by email to the Center its verification response confirming that Heidi Weber is listed as the registrant of the eight disputed domain names: <center-lecorbusier.com> and that Bernard Weber is listed as the registrant of the remaining twenty-four disputed domain names. In each case, the Registrar provided contact details for the administrative, billing, and technical contacts and stated that the language of the registration agreement is English. On 7 April 2003, Bernard Weber sought translation into English of all documents submitted by the Complainant that are not in that language, stating that the Respondents had not agreed with the Complainant to the use of any other language. On April 9, 2003, in response to a request by the Center, the Complainant filed the Complaint translated into English. Several of its attachments remained in French. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 April 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 14, 2003. The Response was filed with the Center on May 19, 2003, an extension of time until that day having been granted by the Center with the concurrence of the Complainants’ representative. The Center appointed Alan L. Limbury, Pierre-Yves Gautier and Gordon Harris as panelists in this matter on June 23, 2003. 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. Language of the proceeding Rule 11(a) provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rule also provides that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of each of the Registration Agreements is English. Prima facie, Rule 11(a) requires that the language of the proceeding be English. It is not suggested that the parties have agreed otherwise nor that the Registration Agreements specify otherwise. Although initially filed in French, the Complaint has now been translated into English. All the parties’ communications with the Center have been conducted in English. The Respondents’ representatives are English and they have requested that additional documents be translated into English. Under these circumstances the Panel is not disposed to determine that the language of the proceeding should be other than English. Translation In addition to the request for translation made by Bernard Weber on April 7, 2003, there were numerous requests by the Respondents’ representatives that the documents in French annexed to the Complaint be translated. The Center pointed out that, under Rule 11(b), the Panel, not the Center, may order full or partial translation into the language of the proceeding of any documents submitted in languages other than the language of the proceeding. The Respondents’ representatives are an English law firm. They do not speak French. They say the Respondents speak some French but not well enough to comprehend fully the French documents in the Complaint, upon some of which the Complainant relies to establish rights in the domain name and bad faith registration of the domain names. Accordingly, they say they cannot deal properly with the Complainant’s allegations without English translations and that, if the Panel is to take them into account, the Respondents need translations in order to deal fully with the Response. The Complainant says Bernard Weber knows and understands French perfectly; the request for translation is vexatious and that, having received a copy of the Complaint at the time it was filed, he chose English representatives knowing of the French annexures. The Complainant also said Ms. Osborne’s profile as a WIPO domain name panelist indicates an ability to deal with legal issues in French. Ms. Osborne responded that her French skills do not enable her to deal with the French annexures to the Complaint, many of which are court judgments couched in legal language. The Panel is mindful of the requirement of Rule 10(b): "In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case". This requirement overrides the obligation of the Panel to conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules - Rule 10(a) - and to ensure that the proceeding takes place with due expedition - Rule 10(c). The Panel has examined the documents in French annexed to the Complaint. It is of the view that this proceeding may be determined fairly to both parties without the need to order their translation into the language of the proceeding. So far as the court judgments are concerned, Heidi Weber was a party to them and must be presumed already to have been advised as to their meaning. Further, the Response itself contains an accurate and sufficient summary (in English) of the nature and outcome of the proceedings. Finally, the Complainant does not rely on the content of those court judgments but rather on the fact of the litigation and its outcome. So far as concerns the will of Le Corbusier, the decree of July 24, 1968, and the description of the Complainant’s activities, the Panel regards these documents as of minor significance, given that the Complainant relies on registered trade marks and that Heidi Weber has recognized contractually that the Complainant is the beneficiary under Le Corbusier’s will. Accordingly, the Panel declines to order translation of any documents. Additional submissions On June 17, 2003, the Complainant sought the leave of the Panel to file a Reply to the Response, invoking Rules 10(a) and 12 and foreshadowing the issues it wished to address. The Respondents objected to the admission of a Reply and indicated their position on the foreshadowed issues, should the Panel be minded to allow a Reply to be filed. The Panel’s consideration of this issue appears in Section 6 of this determination.
4. Factual Background The Swiss architect and visual artist Charles Edouard Jeanneret was famously known worldwide as Le Corbusier. Heidi Weber was an associate of Le Corbusier from 1958, until his death on August 27, 1965. In April 1959, she organized the first exhibition of his furniture, paintings, lithographs and drawings in Zurich. In May 1960, Heidi Weber proposed to Le Corbusier the construction of a house representing the culmination of his studies in the fields of architecture, interior design and the visual arts, to serve as a "Le Corbusier museum" under the name "House of Man". Le Corbusier agreed and submitted the plans to her in 1962. She obtained the approval of the Zurich city council and took charge of the building costs. By an agreement dated June 14, 1962, and amended on November 26, 1962, Le Corbusier granted to Heidi Weber, for a term of 30 years, the exclusive right to sell worldwide the paintings, sculptures, enamel work, gouaches and collages which he entrusted to her, while reserving the right during his lifetime to decide which of his works would be put on sale. The agreement was expressed to be able to be invoked against Le Corbusier’s inheritors, legatees and beneficiaries, "in particular the foundation currently being constituted, and who must obtain the approval of Madame Heidi Weber for any transfer of property occurring after the death of Monsieur Le Corbusier…" The Complainant is the foundation to which that reference was made. By his last will made in Paris on June 16, 1965, Le Corbusier expressed the wish to leave all his property to a public utility to be created and called "Fondation Le Corbusier". By prime ministerial decree dated July 24, 1968, the Complainant was officially recognized as a public utility establishment and was authorized to accept Le Corbusier’s legacy, comprising real and personal property and works of art. The building in Zurich, which Le Corbusier designed and which Heidi Weber commissioned, was inaugurated on July 15, 1967, and was named "Centre Le Corbusier". That name has since been used in conjunction with the name Heidi Weber, as in "Centre Le Corbusier – Heidi Weber". The building has at all times been a public museum on the life and works of Le Corbusier, financed and run by the Respondents. In June 1997, the building was described in an article in "Flying Dutchman" as "the now famous Centre Le Corbusier in Zurich". Recently the building housing the Centre Le Corbusier has changed its name to the Heidi Weber Museum. However, the name Centre Le Corbusier is still being used to describe the content and activity of the museum. By contract dated March 2, 1973, which replaced the 30-year arrangement she had with Le Corbusier, Heidi Weber entered into an arrangement with the Complainant under which, for 20 years from January 1, 1972, she continued to enjoy the exclusive right to sell the works of Le Corbusier, albeit on different terms. The contract described the Complainant as the beneficiary under Le Corbusier’s will and described Heidi Weber as "Directrice du Centre Le Corbusier – Heidi Weber". In September 1984, the contract was amended in ways that are presently immaterial. It ended on January 1, 1992. In 1980, Heidi and Bernard Weber established in New York, under the laws of the United States, "Le Corbusier Center Foundation", offering professional, internship, membership and award programs and involvement in exhibitions and conferences. Since 1987, the Complainant has been the registered proprietor of the trademark "LE CORBUSIER (with design of a hand)" in many countries including France and Switzerland. Since 1997 the Complainant has been the registered proprietor of United States Registered trademark No. 2,073,285 LE CORBUSIER for furniture in International Class 20, claiming first use in 1927 and first use in commerce in 1966. Between 1989 and 1998, the Complainant and Heidi Weber were in litigation in France over their contract. Heidi Weber sued the Complainant for breach of contract for alleged refusal to supply her with Le Corbusier artworks. The Complainant counterclaimed for non-payment of fees for certain artworks, which Heidi Weber contended she had previously purchased from Le Corbusier during his lifetime. The French courts, including appeal courts, decided in favour of the Complainant. The right of the Respondents to use the names Le Corbusier, Centre Le Corbusier or Le Corbusier Center Foundation was not in issue. By a settlement agreement dated July 30, 1998, in which the Zurich building was described as "Le Musée Le Corbusier à Zurich", outstanding issues were resolved, including the transfer from Heidi Weber to the Complainant of Swiss trade mark 450040, being a photograph taken by Bernard of the Zurich building, with a licence granted back to her to use the mark solely in Switzerland as the museum’s logo or as otherwise previously agreed in writing by the Complainant. On January 15, 1999, the Complainant registered the domain name <fondationlecorbusier.asso.fr>, and subsequently <le-corbusier.com>, <le-corbusier.net>, <lecorbusier.net>, < le-corbusier.org> and<lecorbusier.org>. The disputed domain names were registered between November 4, 2000, and September 25, 2002. Some are active in that they point to the website of the Centre Le Corbusier at "www.centrelecorbusier.com" and others are inactive, as follows:
Also on November 4, 2000, Bernard Weber registered the domain names <museumheidiweber.com> and <heidiweber.com>, neither of which is in dispute in these proceedings. On May 10, 2002, Heidi Weber wrote to the Complainant announcing the forthcoming creation of a website about Le Corbusier and the history of the "House of Man" and stating her intention to register the domain names <LeCorbusier-Museum> or <Museum-Le Corbusier>. She sought the Complainant’s comments. The Complainant wrote to her on May 15, 2003, agreeing to her registering the domain names <Centre H. Weber – Le Corbusier> or <Centre Le Corbusier> and seeking the cancellation or transfer of the other domain names she and Bernard had registered. There is some dispute over whether an earlier reply was written and delivered but the Panel considers this of no consequence.
5. Parties’ Contentions A. Complainant Rights The Complainant is the sole owner of the rights in the name Le Corbusier, the trademark LE CORBUSIER, and the copyright relating to the work of Le Corbusier. It is not contestable that the Complainant is the owner of the trademark LE CORBUSIER. Identity/confusing similarity Each disputed domain name includes the trademark LE CORBUSIER with the addition of a generic word: art, museum, fondation, foundation, centre or center. The combinations obtained are generic and do not stop the confusion caused by the use of the trademark LE CORBUSIER: The Body Shop International PLC. v. CPIC Net and Syed Hussain, WIPO Case No. D2000-1214; Space Imaging, eResolution Case No. AF0298. The words foundation and museum were found to be descriptive in Indivision Picasso v. Manuel Mu iz Fernandez [Hereisall], WIPO Case No. D2002-0496 as was the word center in Nintendo of America Inc. v. Berric Lipson, WIPO Case No. D2000-1121. All the disputed domain names are confusingly similar to the famous trademark LE CORBUSIER. Legitimacy The Respondents have no rights or legitimate interests in respect of the disputed domain names. The active domain names all lead to the same web site dedicated to the Heidi Weber Museum. That web site, without authorization from the Complainant, uses the Complainant’s Swiss trademark 450040 (being a representation of the building conceived by Le Corbusier) and reproductions of his works with the indication "© FLC" (standing for Fondation Le Corbusier). The Respondents thus acknowledge that the copyrights belong to the Complainant and they seek to use this false appearance of authorization to mislead the public. The Respondents are fully aware of the rights of the Complainant since Heidi Weber has already lost various litigations which she initiated. The Respondents cannot avail themselves of a use of the domain name in connection with a bona fide offer of goods or services. The sole goal of the web site is to direct the public who like Le Corbusier’s work to another web site dedicated to sale of his works: "www.a-a-a.li". The Heidi Weber Museum’s web site uses as a key word the trademark LE CORBUSIER and also the word MODULOR, which belongs to the Complainant and which a French Court has determined (in a case against a third party) to be an original artwork created by Le Corbusier and protected by copyright. Thus the Respondents have used materials for their own profit that infringe the trademark and the name Le Corbusier and the copyright, which are owned by the Complainant. The web site of the Respondents has for its only goal the promotion of the Heidi Weber Museum and the sale of Le Corbusier’s work. The use of the trademark and of the name LE CORBUSIER is not justified by any legitimate interest. There are on the web site only very rare mentions of the words "Centre Le Corbusier", in order to try to justify the domain names registered. In fact, the Respondents have no right and no legitimate interest in the disputed domain names. Bad faith Former judicial cases prove the dissension between the Complainant and the Respondents. Heidi Weber initiated litigation against the Complainant, which she lost. The Respondents have used the new ground of the Internet to try to take their revenge and to harm the Complainant. Registration of domain names in light of the prior registrations by the Complainant, was primarily for the purpose of disrupting the relations of the Complainant with the public. Two years after the registration by the Complainant of the domain name <fondationlecorbusier.asso.fr>, Bernard Weber registered the domain names numbered 5 to 12 above. The simple fact of having registered those domain names containing the trade name of the Complainant is proof of his bad faith. Neither Respondent has replied to numerous letters from the Complainant, further evidencing bad faith. The lack of use of some domain names proves bad faith. Bernard Weber registered all 17 inactive domain names but does not use them, because he knows their use is wrongful and because the principal goal is to prevent the Complainant from registering them. This lack of use demonstrates that their registration was made in bad faith and with intent to use those domain names as part of a bargain with the Complainant. During a phone call in French, Bernard Weber indicated to Mrs. Evelyne Trehin, executive manager of the Complainant, that he wanted to solve the problem of the domain names at the same time as other issues, such as the use of the Complainant’s figurative trademark that depicts the building of the Heidi Weber Museum. The Respondents use in bad faith materials which infringe the trademark and copyrights of the Complainant in order to make money. The Respondents act in bad faith because they could use other domain names owned by Bernard Weber, namely <heidiweber.com> and <museumheidiweber.com> instead of those which contain the trademark LE CORBUSIER. B. Respondents Rights It is not admitted that the Complainant is the exclusive owner of all the rights which relate to the name Le Corbusier. The Respondents also own rights in the names Centre Le Corbusier and Le Corbusier Center Foundation and/or alternatively the use of Le Corbusier by the Respondents is descriptive, honest and legitimate fair use. Confusing similarity It is not admitted that the domain names are confusingly similar. The Respondents have developed over thirty-five and twenty years worth of significant and worldwide reputation in the names Centre Le Corbusier and Le Corbusier Center Foundation respectively. The relevant section of the public is well educated and well versed on the different organizations involved with Le Corbusier’s works. Such people are unlikely to think that the disputed domain names, in particular those containing the English word centre or the American English word center, are anything to do with the Complainant. The Complainant has not cited one single instance of actual confusion between the Complainant and the Respondents. The respondent in Indivision Picasso v. Manuel Muniz Fernandez, WIPO Case No. D2002-0496, had no legitimate and longstanding connection with a genuine Picasso museum or "foundation" and his response revealed no legitimate right to use the PICASSO name. Here, the Respondent has been administering a Le Corbusier museum for over 35 years and has built up significant worldwide reputation goodwill and unregistered trade mark rights in relation to its use of the Centre Le Corbusier and Le Corbusier Center Foundation names. The Respondents have also registered a few purely descriptive domain names, which relate to their legitimate business <artlecorbusier.com> <museumlecorbusier.com> and <lecorbusiermuseum.com> and intend to use these domain names in connection with the promotion of the Le Corbusier museum in a legitimate and fair manner. The dissenting panelist in the Picasso case held that while the domain names were similar to the trade mark PICASSO, they were not confusingly similar to the domain name which was the name of a genuine museum in existence but which happened not to be associated with either the complainant or the respondent in that case: "I do not believe that any use whatsoever, or any inclusion of a trade marked word in a domain name made of a complex expression, such as the domain names at issue, in and by themselves equal to confusing similarity of the domain names to the single word mark. In fact none of the three domain names- when considered in their entirety and overall impression – are confusingly similar to the single word mark Picasso, even if this is a famous mark." The facts of Nintendo of America Inc v. Berric Lipson, WIPO No. D2000-1121 and The Body Shop International Plc v. CPIC Net and Syed Hussain, WIPO Case No. D2000-1214 were very different. The respondents in both cases failed to file a response and consequently had not revealed any legitimate right to use the name to which the domain names corresponded. In this case the Respondents have such legitimate rights. Legitimacy The Respondents have used the name Le Corbusier since 1958. They have been trading as Centre Le Corbusier since 1967, and as Le Corbusier Center Foundation since 1980 - before the Complainant obtained any of the registered trade mark rights on which it seeks to rely. The Centre Le Corbusier is a Swiss based museum and centre for the promotion of the life and works of Le Corbusier and has over many years become world famous. The goodwill, reputation and unregistered trade mark rights in the name Centre Le Corbusier are owned by the Respondents. The Respondents’ publicity materials, third party press articles and other references from 1967, onwards demonstrate the Respondents’ use of Centre Le Corbusier. Such is the reputation of the Centre Le Corbusier that the Zurich Tourist board features the museum prominently in its promotional video for Zurich on international airlines such as the inbound Swiss Airline flight to Zurich from Canada. The Corbusier Center Foundation features on the Respondents’ website. As a result of such use the Respondents have developed and now own valuable goodwill, reputation and unregistered trade mark rights in the name Le Corbusier Center Foundation. In 2000, Bernard Weber began registering domain names, and subsequently transferred some of them to Heidi Weber, in order to use them as web addresses to advertise the activities of the Centre Le Corbusier and Le Corbusier Center Foundation. The Centre Le Corbusier website has been hosted at <centrelecorbusier.com> since August 16, 2002. Since October 28, 2002, the domain names numbered 17, 18, 21, 22, and 25 to 32 above have been pointed to the <centrelecorbusier.com> website. The inactive disputed domain names are either linked to holding pages or to no active websites. The Respondents intend to use all of the domain names to link to either the Centre Le Corbusier or the Le Corbusier Center Foundation websites in the future. There is nothing sinister in this, it is simply that this is as far as the Respondents have got in developing their website. For example they have registered <lecorbusiercentre.info> <lecorbusier-centre.info> <centre-lecorbusier.info> or <centrelecorbusier.info> which are important names to the Centre Le Corbusier site but have not got round to linking them to the actual site yet because they are busy and have many business issues to deal with every day. As previously mentioned the Respondents have set up a web page which advertises the activities of Le Corbusier Center Foundation. This page is incorporated within the Centre Le Corbusier website. The Respondents intend to develop this side of the website and eventually to have a separate website devoted to the activities of Le Corbusier Center Foundation using separate website addresses. The following domain names owned by Bernard Weber are near variations of the Le Corbusier Center Foundation name owned by the Respondents as a result of over 20 years of use: <fondationlecorbusier.com> The Respondents did not register the full version of the name Le Corbusier Center Foundation as a domain name because it would result in very long cumbersome domain names such as <lecorbusiercenterfoundation.com>; The Respondents registered domain names identical and similar to Centre Le Corbusier and Le Corbusier Center Foundation in order legitimately to use the domain names as web addresses to link to their Centre Le Corbusier and Le Corbusier Center Foundation websites. The similar domain names were registered in order to reflect the fact that third parties often misspell the Respondents’ names and/or rearrange the order of the words. Alternatively the Respondents registered purely descriptive domain names relevant to their business. Most importantly, the Respondents have not come across any instances of confusion between any of the variations of these names and the Complainant and the Complainant has not given any evidence of actual confusion in its Complaint. This is due to the existing reputation of the Respondents and their legitimate association with their Le Corbusier museum and Le Corbusier’s body of work. Bad faith The intention for registering the domain names was to promote across the world the legitimate activities of Centre Le Corbusier and Le Corbusier Center Foundation. The Centre Le Corbusier website is live and has a section on Le Corbusier Center Foundation, while a separate Le Corbusier Center Foundation website is in development. The Respondents intend in future to link all of the domain names to the relevant Centre Le Corbusier and Le Corbusier Center Foundation web sites. The Respondents understood it to be common practice to register variations of names in order to increase internet traffic to web sites, particularly when such similar variations of the names have been commonly used by third parties to refer to the registrant and/or the names describe the content of the site in a legitimate and fair manner. The Respondents formally deny any of the conduct described in paragraph 4(b) of the Policy as constituting evidence of bad faith registration and use, and specifically deny all the Complainant’s assertions. In particular, the Respondents deny that "the simple fact of having registered those domain names that contain the trade name of the Fondation Le CORBUSIER" is the proof of bad faith of Bernard Weber", saying they registered many variations of the name Le Corbusier Center Foundation for reasons they have explained. The Respondents also deny that the domain names were registered in order to prevent the Complainant from reflecting the mark in corresponding domain names and, in connection therewith, that the Respondents have engaged in a pattern of such conduct. The Respondents say they did not register the domain names for this purpose; the Complainant has not been prevented from reflecting the mark in a corresponding domain name and the Complainant has submitted no evidence of any such pattern of conduct. The Respondents also deny that the domain names were registered by the Respondents primarily to disrupt the Complainant’s business, saying the Respondent [sic] has its own legitimate business and purposes for the international domain names it has registered. Reverse domain name hijacking The Respondents seek a finding of attempted reverse domain name hijacking, saying the Complainant knew of the Respondents’ unassailable rights in relation to the domain names.
6. Discussion and Findings Additional submissions Many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as in the case of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated: CRS Technology Corp. v. CondeNet, Inc., NAF FA0002000093547; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO Case No. D2000-0662; Electronic Commerce Media, Inc. v. Taos Mountain, NAF FA0008000095344; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com, WIPO Case No. D2000-0905 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. Here the proposed Reply does purport to contain evidence that was unavailable at the time of the filing of the Complaint and the Respondents have raised arguments that the Complainant may not reasonably have anticipated. In particular, the Respondents rely on a conversation said to have occurred on April 23, 2002, between Heidi Weber and Ms. Trehin, the Complainant’s executive manager, claiming that Ms. Trehin gave permission to the Respondents to use the domain name <centrelecorbusier.com> as their main internet address and to use on the web site the ‘figurative trademark’ depicting the building, together with the Complainant’s photographs, with the same form of attribution as the Complainant uses, namely "©FLC". The Complainant seeks leave to file a Reply addressing this alleged conversation. The Panel does not regard any dispute as to whether such a conversation took place as germane to the narrow issues required to be addressed in this proceeding and accordingly disregards the Respondents’ assertions, thus rendering the proposed Reply unnecessary insofar as it would address that conversation. Having carefully examined the issues to which the proposed Reply would be addressed, the Panel considers the issues to be peripheral to its decision and that there are no exceptional circumstances that would justify its admission into evidence. Accordingly, the Panel does not admit the proposed reply to the Response and has had no regard to it in making this determination. It follows that the proposed Rejoinder is also rejected and disregarded. Substantive issues Pursuant to the Policy, our substantive inquiry focuses on four issues: (I) does the Complainant have rights in a trademark or service mark; A. Rights in a mark Whether or not the Complainant obtained any trade mark rights by inheritance under the will of Le Corbusier (a question the Panel finds unnecessary to resolve), the Complainant has clearly demonstrated that, when it filed the Complaint, it was the registered proprietor of the trade marks LE CORBUSIER in the United States and "LE CORBUSIER with open hand device" in other countries including France and Switzerland. B. Identical or Confusingly Similar The domain names are not identical to either LE CORBUSIER mark. The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. Thus, the content of the Respondents’ web site is irrelevant to this issue. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No.D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121 and the cases there cited. Each of the disputed domain names contains, in whole, the Complainant’s mark LE CORBUSIER, with the addition of a purely descriptive word that does nothing to detract from the association likely to be made by Internauts with the famous name and mark LE CORBUSIER. The Respondent seeks to distinguish this case from those cited by the Complainant by claiming that the Respondents have a legitimate interest in their disputed domain names. The Panel does not regard the presence or absence of legitimacy on the part of a domain name registrant as relevant to the question whether the disputed domain name is confusingly similar to the trade mark under consideration. The Panel finds each of the disputed domain names to be confusingly similar to the Complainant’s registered trade mark LE CORBUSIER. The Complainant has established this element of its case. C. Rights or Legitimate Interests The name Le Corbusier is famous. The Complainant is the registered proprietor of the trade mark LE CORBUSIER in the United States and of other marks incorporating that name (with open hand design) in other countries. It appears from the Complainant’s letter to Heidi Weber dated May 15, 2003, that the Complainant consents to her registration of the domain name <centrelecorbusier.com>. The Complainant has not consented to the registration of any of the other domain names held by the Respondents. Heidi Weber was well aware of and in contractual relations and lengthy litigation with the Complainant. The Panel infers that Bernard Weber was likewise well aware of the Complainant and its role as beneficiary of the will of Le Corbusier. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain names on the part of Respondent, other than those incorporating the expression Centre Le Corbusier. The evidentiary burden therefore shifts to the Respondents to show by concrete evidence that they do have rights or legitimate interests in those other domain names: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. The Respondents have demonstrated that their business in Zurich has been commonly known by the name CENTRE LE CORBUSIER since 1967. It follows that, quite apart from the consent of the Complainant, the Respondents have demonstrated, under paragraph 4(c)(ii) of the Policy, rights to and legitimate interests in each of the domain names numbered 13, 14 and 17 – 20. All of those domain names comprise the expression Centre Le Corbusier (in some cases with a hyphen), followed by the TLD .com, .info or .org. Since October 2002, the domain names numbered 17 – 23 and 25 – 32, which the Panel notes are similar in their reference in different forms to the Centre Le Corbusier, have been actively connected to the web site used to promote the Le Corbusier museum in Zurich, established in 1967. Thus, the Respondents have demonstrated rights to and legitimate interests in each of those domain names under paragraph 4(c)(i) of the Policy. The Respondents have demonstrated that their organization in New York has been commonly known as LE CORBUSIER CENTER FOUNDATION since 1980. However, none of the disputed domain names corresponds with the name of the New York foundation, nor have any of the domain names which incorporate the word FOUNDATION or FONDATION been used (names 5 – 12). This latter point applies also to the domain names numbered 1 - 4 and 15, 16 and 24. The Respondents have asserted their intention to use all the inactive domain names in the future in connection with their undoubtedly bona fide activities, however they have produced no proof of that asserted intention. Accordingly, the Respondents have not demonstrated legitimacy in relation to any of these domain names within any of sub-paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Complainant has made reference to an alleged breach of copyright in relation to the word "Modulor" which has, it is claimed, been upheld by the French court as being protected by copyright. This Panel is empowered to consider issues relating to the entitlement to proprietorship of domain names and related issues in the context of registered and unregistered trade mark rights. It is not authorised and cannot rule on matters relating to copyright infringement. The Panel finds that the Complainant has failed to establish absence, on the part of the Respondents, of rights and legitimate interests in domain names 13, 14, 17 – 23 and 25 – 32 but has established this element of its case in relation to domain names 1 – 12 and 15, 16 and 24. D. Registered and Used in Bad Faith The Panel does not consider further the domain names in which it has found the Respondents to have demonstrated that they have rights and legitimate interests. Domain names 1 – 12 were all registered by Bernard Weber in November 2000, and have not been used. Names 1 – 4 are apt to describe the activities of the museum conducted at the building in Zurich since 1967. The Panel is not satisfied that the Complainant has established any bad faith in the registration of these four, nor in their subsequent passive use. Names 15, 16 and 24 were registered by Bernard Weber on May 31 and June 1, 2002, and have not been used. They differ from names 21 – 23 and 25 – 28 (in which the Panel has found the Respondents to have rights and legitimate interests) only in that they have not been used. Given the known propensity of Internauts, when searching for a web site, sometimes to reverse the order of words, especially since the order of words in English and French is often reversed, the Panel accepts that it was reasonable for the Respondents to have registered each of the domain names numbered 15, 16 and 24. The Complainant has not established that these domain names were registered in bad faith. Names 5 – 12 are notable in that they incorporate the word foundation or fondation without the word centre or center. Given the history of litigation, the timing of the registration of these domain names and their long period of non-use, the Panel finds the Respondents’ explanation as to why the full name of the New York foundation was not chosen (the cumbersomeness of a long domain name) implausible and not valid. Choosing that particular combination must have been appreciated as waving a red flag at a bull. The Panel infers that those domain names were registered by Bernard Weber either in order to prevent the Complainant from reflecting its LE CORBUSIER mark in a corresponding domain name (the number of such domain names constituting a pattern of such conduct) or primarily for the purpose of disrupting the business of the Complainant, being a competitor of the Respondents in the provision of exhibitions and in promoting the life and works of Le Corbusier. These circumstances are evidence of both bad faith registration and bad faith use under paragraphs 4(b)(ii) and (iii) of the Policy. The Complainant has established this element of its case in relation to domain names 5 – 12. E. Reverse domain name hijacking The Complainant has succeeded in relation to domain names 5 – 12 and failed on the remaining 24 domain names. The Panel has considered whether it is permissible to make a finding of Reverse Domain Name Hijacking in such a situation. So far as the Panel is aware, this question has not been arisen before. Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." This appears to contemplate, in cases involving several domain names, that each domain name may be considered separately. However Rule 15(e) provides: "…If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding" On one interpretation, Rule 15(e) permits a finding of Reverse Domain Name Hijacking only where the complaint as a whole was brought in bad faith or primarily to harass the domain-name holder. This interpretation would preclude a finding of Reverse Domain Name Hijacking in any multiple domain name case in which the Complainant was justified in complaining about one or more domain names (whether or not successful in its complaint) but acted in bad faith in complaining about one or more other domain names. After deep discussion, the Panel considers the correct interpretation of Rule 15(e) to be in conformity with the individual domain name approach contemplated by the definition because, as a matter of policy, complainants should be discouraged from including claims known to be baseless amongst claims properly brought. Any other interpretation would jeopardize the efficiency and integrity of the Policy. Accordingly, the Panel considers that it is entitled to consider each disputed domain name separately in determining whether to make a finding of Reverse Domain Name Hijacking. To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (November 8, 2000) and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 8, 2001) or that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993 (October 21, 2000); or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754 (November 27, 2002). Here, it is clear that the Complainant has known and accepted since 1967, that the Respondents have certain rights to and legitimate interest in the name Centre Le Corbusier, the name by which the building in Zurich (and, more recently the gallery within that building) has been known. Accordingly, the Panel declares, pursuant to Rule 15(e), that the Complaint in relation to names 13, 14, and 17 – 20 was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant: <lecorbusierfondation.com> <lecorbusierfondation.org><lecorbusierfoundation.com> <lecorbusierfoundation.org> <fondationlecorbusier.com> <fondationlecorbusier.org> <foundationlecorbusier.com> <foundationlecorbusier.org> For the foregoing reasons, in relation to all other disputed domain names the Complaint is denied.
Alan L. Limbury Pierre-Yves Gautier |
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