The Complainant is Artisan & Artist Co. of Tokyo, Japan, represented internally.
The Respondent is The Photo Village, Inc. of New York, New York, United States of America, represented internally.
The disputed domain name, <artisanandartist.com> (the “Domain Name”), is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2012 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 on November 16, 2012.
The Center verified that the Complaint together with the amended 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 November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. The Response was filed with the Center on November 25, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 13, 2012. 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 Complainant is a Japanese manufacturer of inter alia camera bags, camera straps, camera body cases, cosmetic pouches, handbags and backpacks.
The Complainant is the registered proprietor of United States Registration No. 2,805,166 filed October 13, 1999 (registered January 13, 2004) ARTISAN & ARTIST in classes 18 and 21 for varieties of bags, cases and cosmetic accessories. It appears from the United States Patent and Trademark Office records annexed to the Complaint, although not mentioned in the body of the Complaint, that the Complainant is also the proprietor of equivalent Japanese Registration No. 4143370 dated May 8, 1998.
The Domain Name was registered on February 9, 2004.
On August 2, 2005, the parties entered into a distribution agreement whereby the Respondent was appointed distributor of the Complainant’s goods in the United States of America.
On April 24, 2008, the Complainant served notice of termination of the distributorship agreement, termination to take effect on August 1, 2008.
The Domain Name is connected to a website offering for sale “ARTISAN&ARTIST*” branded goods. There are references on the site to the goods in question emanating from Tokyo, the Complainant’s home city. Moreover the site is said to be “the official English web brochure for Artisan & Artist and its US distributor and dealers”. The website features copyright notices reading “all information herein ©2004-2011, The Photo Village, Inc.”
The Complainant contends that the Domain Name is identical to its ARTISAN & ARTIST registered trade mark, which was applied for on October 13, 1999, registered on January 13, 2004.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, the distributorship agreement having been terminated with effect from August 1, 2008.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent does not appear to deny that the Domain Name is confusingly similar to a trade mark in which the Complaint has rights, but denies the Complainant’s contentions under the second and third elements of the Policy. The Respondent claims rights and legitimate interests in respect of the Domain Name pre-dating the Complainant’s rights. The Respondent contends that it was already selling goods under and by reference to the Domain Name when the Complainant first approached the Respondent in 2005 for assistance in distributing the Complainant’s goods in the United States of America.
The Respondent contends that the Complainant’s “current complaint amounts to no more than an attempt at legal bullying and attempt to hijack a name used for years in good faith that continues to this very day.”
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Domain Name comprises a variant of the Complainant’s registered trade mark (details of which are set out in section 4 above) and the generic “.com” top level domain suffix. The Domain Name varies from the Complainant’s trade mark in that the latter features an ampersand with spaces either side of it, whereas the former does not; i.e. variations necessary to accommodate a domain name.
It being permissible for the Panel to ignore the generic “.com” top level domain suffix, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Respondent contends that its use of the “Artisan & Artist” brand pre-dates the Complainant’s trade mark rights. The Panel found this a difficult claim to comprehend, given that in the Response the Respondent claims first use of the name in 2003/2004, whereas from the United States Patent and Trademark Office records annexed to the Complaint it would appear that the Complainant’s trade mark rights date back to the priority date of May 8, 1998 derived from an equivalent Japanese registration held by the Complainant (see section 4 above).
The Respondent appears to be suggesting that its use of the “Artisan & Artist” brand predates the Complainant’s use of it in the United States of America, but while the Response is strong on bare assertion, it is very weak on verifiable supporting evidence. It contains no annexes. In particular, the Panel has no idea whether or not the goods sold by the Respondent prior to the signing of the distributorship agreement were the Complainant’s branded goods or other goods having no connection with the Complainant. As can be seen from section 4 above, the website to which the Domain Name is currently connected seems to be offering for sale the Complainant’s goods, but that may not be the case. The evidence is not clear.
However, in light of the Panel’s finding under section D below, it is unnecessary for the Panel to come to a concluded view on this topic.
The Complaint makes no complaint of the Respondent’s original registration of the Domain Name. The Complaint complains solely of the Respondent’s use of the Domain Name following termination of the distributorship agreement in August 2008.
For a Complaint to succeed under the Policy, the view of this Panel (in common with many others) is that a complainant must establish to the satisfaction of the Panel that the domain name in issue was registered in bad faith and is being used in bad faith. In the view of the Panel bad faith use on its own will not suffice. The Panel reviewed this issue in some detail in the case of Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716, <walkydogusa.com>, a case in which the respondent had been an authorized distributor at the date of registration of the domain name in issue, but had continued to use that domain name after termination of the distributorship and for the purpose of selling products competing with those of the complainant.
In this case the Complainant was in possession of relevant trade mark rights in the United States of America at a time prior to the Respondent’s claimed first use of the name “Artisan & Artist” (see section 4 above), but, as indicated, the Complainant has not complained that at time of registration of the Domain Name the Respondent was acting in bad faith. One would have expected there to have been some correspondence between the parties over the Respondent’s registration and use of the Domain Name at that time, but none has been produced. Moreover, in August 2005, some 17 months after registration of the Domain Name, the Respondent was appointed United States distributor of the Complainant’s products. The distributorship agreement makes no mention of the Domain Name.
There is insufficient information before the Panel to conclude (and the Complainant has not asserted) that the original registration of the Domain Name was in bad faith.
Whether or not the Respondent’s continued use of the Domain Name constitutes use in bad faith, the Panel does not need to decide, although the references on the Respondent’s website to it being “the official English web brochure for Artisan & Artist and its US distributor and dealers” are plainly inappropriate if they are references to the US distributorship (now terminated) of the Complainant’s brand.
In passing, the Panel observes that no explanation has been provided for the Complainant’s 4-year delay in launching this Complaint. Nothing turns on this, but it is yet another gap in the story.
As indicated, the Panel is not persuaded that the Domain Name was registered in bad faith and the Complaint fails.
The Panel is satisfied that the Complaint was motivated solely by the Complainant’s desire to protect its trade mark rights. There is nothing before the Panel to indicate that the Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: December 20, 2012