Best's Studio Inc. d/b/a The Ansel Adams Gallery v. Mitch Andrea
Claim Number: FA0606000726156
Complainant is Best's Studio Inc. d/b/a The Ansel Adams Gallery (“Complainant”), represented by Matthew Adams, PO Box 4185, Burlingame, CA 94011. Respondent is Mitch Andrea (“Respondent”), P.O. Box 8029, Roswell, NM 88202.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <anseladamsgallery.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 7, 2006.
On June 6, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <anseladamsgallery.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@anseladamsgallery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <anseladamsgallery.com> domain name is confusingly similar to Complainant’s THE ANSEL ADAMS GALLERY mark.
2. Respondent does not have any rights or legitimate interests in the <anseladamsgallery.com> domain name.
3. Respondent registered and used the <anseladamsgallery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Best’s Studio Inc., has used the fictitious business name The Ansel Adams Gallery since 1972. Complainant’s business is owned by the family of Ansel Adams, and Complainant showcases and sells the artwork of Ansel Adams. Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the THE ANSEL ADAMS GALLERY mark (Reg. No. 1,417,027 issued November 11, 1986).
Respondent registered the <anseladamsgallery.com> domain name on October 5, 2003. Respondent’s disputed domain name resolves to the website located at <ArtinAClick.com> which is an art poster retailer that sells copies of the work of Ansel Adams, as well as various other artists.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s federal registration with the USPTO sufficiently establishes Complainant’s rights in the THE ANSEL ADAMS GALLERY mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <anseladamsgallery.com> domain name is confusingly similar to Complainant’s THE ANSEL ADAMS GALLERY mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark with the omission of the article “the.” In Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004), the panel found that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <anseladamsgallery.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s THE ANSEL ADAMS GALLERY mark, and that Respondent is not
associated with Complainant in any way.
Furthermore, Respondent’s WHOIS information does not suggest that
Respondent is commonly known by the disputed domain name, and there is no
evidence in the record to suggest that Respondent is or has ever been known by
the disputed domain name. The Panel
thus finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat.
Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by
<aolcamera.com> or <aolcameras.com> because the respondent was
doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds that the Respondent is using the disputed
domain name to connect to a website that offers copies of artwork for
purchasing. The Panel presumes that
Respondent is using the disputed domain name for its own commercial benefit. The Panel finds that such use of Complainant’s
THE ANSEL ADAMS GALLERY mark does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith by registering and using the disputed domain name that contains the dominant portion of Complainant’s mark. Respondent is using the <anseladamsgallery.com> domain name to redirect users to a website that offers prints of artwork by various artists, including Ansel Adams. The Panel finds that such use constitutes disruption and is indicative of bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent registered and is using the disputed domain name for its own commercial gain. The <anseladamsgallery.com> domain name resolves to the website of an online art retailer that sells copies of artwork by various artists including Ansel Adams. The use of Complainant’s THE ANSEL ADAMS GALLERY mark in the disputed domain name is capable of creating a likelihood of confusion as to the source of the website and Complainant’s affiliation with it. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), the panel found bad faith where the domain name in question was obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anseladamsgallery.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 20, 2006
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