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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Association pour la Defense et la Promotion de l’oeuvre de Marc Chagall Dite “Comite Marc Chagall” v. Valery Tsepkalo

Case No. D2006-0442

 

1. The Parties

The Complainant is Association pour la Defense et la Promotion de l’oeuvre de Marc Chagall Dite “Comite Marc Chagall”, Paris, France, represented by Cabinet Pascale Lambert & Associйs, France.

The Respondent is Valery Tsepkalo, Washington, DC, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <vodkachagall.com> is registered with Dotster, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 10, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On April 19, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical contact details. 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 20, 2006. In accordance with the Rules, paragraph 5(a), the date due for Response was May 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2006. On the same date the Respondent sent to the Center the following e-mail message “ I give up a web-site and have closed down the content. Therefore there is no need for me to proceed in this case.” Following correspondence between the parties and the Center regarding a prospected settlement the proceedings were suspended until June 16, 2006 and then re-instituted upon the Complainant’s specific request.

The Center appointed Anna Carabelli as the Sole Panelist in this matter on June 27, 2006, indicating that absent exceptional circumstances the decision would be due by July 11, 2006. 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.

Following the re-institution of the proceedings the parties exchanged further correspondence regarding a possible settlement. Copy of such e-mail correspondence was forwarded to the Center by the Complainant on July 4, 2006, and indicates that the Respondent accepted to transfer the Domain Name to the Complainant but lost his login and passwords to finalize such transfer. So in his e-mail of July 4, 2006, the Respondent wrote to the Complainant that he had given up the Domain Name. However, no formal waiver has been made by the Respondent.

 

4. Factual Background

The Complainant is the “Association pour la defense et la promotion de l’oeuvre de Marc Chagall”, a French non-profit association, also known as Marc Chagall Committee, which purports to group all the heirs of the deceased painter Marc Chagall (Attachment 1 to the Complaint) and be the sole legal entity entitled to promote and defend the work and the name of Marc Chagall.

Marc Chagall was a famous Russian-French painter born in Belarus (Attachments 5 and 5 bis to the Complaint).

The Complainant is the owner of the following trademark for the name CHAGALL (Attachment 6 to the Complaint):

- Community Trademark “CHAGALL” No. 00 0 177 709, filed on 04/01/96 in class 9

- Community Trademark “CHAGALL” No. 00 1 580 828, filed on 03/22/00 in classes 1, 2, 3, 6, 9, 14, 15, 16, 18, 19, 20, 21, 24, 35, 27, 28, 41 and 42

- International Trademark “CHAGALL” No. 581 958, filed on 01/30/92 in class 9

- International Trademark “CHAGALL” No.689 269, filed on 03/13/98 in classes 3, 14, 18 and 25

- International Trademark “CHAGALL” No. 758 063, filed on 12/22/00 in classes 2, 3, 9, 14, 15, 16, 18, 19, 21, 24, 35, 27, 28, 41 and 42.

The Domain Name was registered by the Respondent on May 22, 2002 and has been used in connection with the Respondent’s website promoting and advertising an alcoholic beverage called “Chagall Vodka” (Attachment 4 to the Complaint). The Domain Name is presently inactive since no website was found by the Panel when she tried to visit the website “www.vodkachagall.com”. This fact seems to confirm the Respondent’s statement that he decided to “give up” his website (Respondent’s e-mail of May 15, 2006 and July 4, 2006).

From the print out of the Respondent’s website submitted by the Complainant as Attachment 4 to the Complaint, it results that the Respondent made express and extensive reference to Marc Chagall’s life and artistic production to promote and advertise Chagall vodka.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Domain Name is confusingly similar to the Complainant’s trademark CHAGALL since it reproduces it with insignificant changes, namely the gTLD “.com” and the word “vodka” which is descriptive of the product offered by the Respondent;

- the Respondent has no right or legitimate interest in the Domain Name since: (i) the Respondent is not and never has been a representative of Complainant or licensed to use the Complainant’s trademarks Chagall; (ii) the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services; (iii) the Respondent is using the Domain Name to divert consumers to its web site for commercial gain;

- the Domain Name was registered in bad faith since the Respondent could not have been unaware of Complainant’s trademarks when he registered the Domain Name also considering the worldwide reputation of the artist Chagall and the fact that the Respondent is Byelorussian and that Belarus is the State of birth of Marc Chagall. In addition the Respondent’s website makes explicit and extensive reference to the artist who allegedly inspired the vodka advertised in the Respondent’s website;

- the Domain Name is being used in bath faith, since (i) by using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain Internet users looking for the Complainant’s goods and Chagall’s works, by creating a likelihood of confusion with the Complainant’s trademarks or Chagall’s name as to the source, sponsorship, affiliation or endorsement of its website, (ii) the Respondent is taking unfair advantage from the reputation of the artist Chagall and of the Complainant’s trademarks;

- the association of the Complainant’s trademarks with alcoholic beverages is tarnishing the reputation of the Complainant’s trademarks also in view of the restrictive legislations on alcoholics in force in various countries, and particularly of the Envin French law No. 91-32 forbidding direct or indirect advertising of alcoholics in France where the Complainant is based and operates.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complaint must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

Chagall is first of all a personal name being the surname of the worldwide famous Russian-French painter Marc. Here the Complainant is not seeking protection of the name Chagall as a personal name under the Policy (which would require the Complainant to prove that the name has been used commercially and has acquired a secondary meaning). The Complainant has however submitted documentation regarding the renown and fame achieved by Marc Chagall by virtue of his pictorial activity over the years. In this connection the Panel notices that various panels have recognized that celebrities have common law trademark rights in their names (see Marino, Jr. v. Video Images Productions, Inc., WIPO Case No. D2000-0598, August 2, 2000, and Roberts v. Boyd, WIPO Case No. D2000-0210, May 29, 2000, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, Peter Frampton v. Frampton Enterprises, Inc. WIPO Case D 2002-0141); as regards the name Marc Chagall, such rights are vested in the Complainant.

The Complainant has in any case proven to have acquired trademark rights in the name “CHAGALL” by virtue of a number of registrations detailed in paragraph 4 above, dating back to 1992-2000, upon which it is relying.

The Domain Name entirely incorporates the Complainant’s trademarks “CHAGALL” with the addition of the descriptive and generic term “vodka”. In this regard, it cannot be said that the Domain Name and registered trademarks are identical, given the addition of the suffix “vodka” in the case of the Domain Name. On the other hand, there can be little doubt that the latter is confusingly similar to these marks, on the basis submitted by the Complainant, namely that the name “CHAGALL” is the dominant and distinctive component of the Domain Name. It is an established principle that the mere addition of a generic term does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

On this issue the Panel further notices that the term “vodka” is plainly descriptive of the product promoted and advertised on the Respondent’s website “www.vodkachagall.com”.

In the light of the above and of the fact that the addition of the gTLD “.com” has no legal significance when comparing the Domain Name and the Complainant's trademarks, the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

Based on the Complaint it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainant’s trademark CHAGALL. It also appears that the Respondent is not commonly known by the Domain Name.

On the other hand, while the Respondent clearly established a website promoting and advertising a kind of vodka under the name “Chagall” it cannot be said that the use of the Domain Name in connection with the offering of goods was bona fide. The Respondent in all likelihood knew about the famous painter Chagall (Annex 4 of the Complaint) and of the existence of previous rights or third party rights in the name of the worldwide famous painter Chagall, which as a matter of fact is also protected as a trademark by virtue of a number of EU and international registrations made by the Complainant. The Respondent has adopted the Complainant’s trademark for his own use and incorporated it into the Domain Name without the authority of the Complainant. It follows that the Respondent in this case would only have a right to the Domain Name if the Complainant had specifically granted that right.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a the Respondent to point to other evidence that may show this. In the present proceedings, there has been no Response or evidence presented by the Respondent on these matters, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. In addition following the notification of Respondent’s default, the Respondent sent to the Center the following e-mail message “I give up a web-site and have closed down the content. Therefore there is no need for me to proceed in this case.”

The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

For the reasons indicated above, the Panel considers that the Respondent was in all likelihood aware of the Complainant’s trademarks at the time of registration of the Domain Name.

The Domain Name appears to be presently inactive. However, based on printout of the Respondent’s website submitted by the Complainant and the Respondent’s commercial intent established in paragraph B, the Panel considers that the Domain Name has been used in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website or other on-line locations, by creating a likelihood of confusion with the Complainant’s trademarks. In the view of the Panel this likelihood exists. An average Internet user is likely to get the impression of sponsorship or affiliation of the Respondent’s website, particularly considering the explicit reference to Marc Chagall’s life and artistic activity contained therein. The Panel therefore finds that the third element is also established.

 

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 Domain Name <vodkachagall.com> be transferred to the Complainant.

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Anna Carabelli
Sole Panelist

Dated: July 11, 2006