virtualcanvas.com

Virtual Canvas v. Philip Viger

Case No. D2004-0074

The Complainant is Virtual Canvas, Glendale, California, of United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.

The Respondent is Philip Viger, Meriden, Connecticut of United States of America.

The disputed domain name <virtualcanvas.com> (the "Domain Name") is registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2004. On January 29, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 29, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2004. The Response was filed with the Center on February 18, 2004.

The Center appointed Thomas D. Halket as the sole panelist in this matter on February 27, 2004. 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.

On or about March 4, 2004, the Complainant submitted a Response to the Respondent’s Response and the Respondent submitted a Reply thereto. Although not required to do so, the Panel has elected to review both of these filings.

The Complainant owns the following trademark registration for its VIRTUAL CANVAS® mark:

There is some dispute as to how diligently Complainant prosecuted the application for this registration. It is not disputed, however, that this registration was granted after Respondent registered the Domain Name.

The following trademark registrations are currently pending for Complainant’s VIRTUAL CANVAS® mark:

These registrations were filed after Respondent registered the Domain Name.

Nevertheless, it is clear Complainant started using Virtual Canvas as a trademark well before the date on which Respondent registered the Domain Name. During or before 2000, Ms. Genevieve Pacana founded Virtual Canvas to provide an online forum for artists and musicians and other participants in the fine arts to publish and sell their works. On February 7, 2000, Complainant filed a trademark application with the U.S. Patent and Trademark Office. Complainant has presented artwork and projects in shows located in New York and Los Angeles. Virtual Canvas has developed an interactive website which is currently located at "www.virtualcanvas.org".

Complainant registered the Domain Name in February, 2000, but allowed the registration to lapse. The ownership history of the Domain Name is in dispute, but the exact details are not relevant to this Panel’s determinations. Subsequently, Respondent registered it on June 15, 2003. The website located at <virtualcanvas.com> is a holding page entitled "Coming Soon!" and at the top it reads, "virtualcanvas.com coming soon! This page is parked FREE at GoDaddy.com!"

Complainant’s representative, Ladie Ella Daya, telephoned Respondent on October 29, 2003, to discuss the recovery of the Domain Name. Respondent asked how much money Complainant was willing to pay. There is some dispute as to the nature of these discussions. The evidence does tend to show that Respondent apparently floated $1500 as a possible price for the Domain Name as well as indicating that it would lease it for $350 a year.

Respondent’s website contains a link entitled "DOMAIN NAME SALE" with the description "Great selection of Web Addresses available to buy and/or market your message with!" If users click on the link they are taken to a page with large number of domain names, including the Domain Name. At the top of the page, Respondent introduces himself and offers the domain names for lease and/or sale stating "if interested, you are encouraged to submit your highest/best proposal, today. Alternatively, you may lease for 3 years at $350 annually, 'any' address below."

Complainant alleges:

(a) The Domain Name is identical and confusingly similar to a trademark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) The Domain Name was registered and is being used by Respondent in bad faith.

Respondent disputes Complainant’s contentions.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since the parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith."

Complainant has established to the satisfaction of the Panel that it owned and was using the trade name "Virtual Canvas" on or before the date Respondent registered the Domain Name. The fact that the United States registration was granted subsequently is irrelevant, common law rights in a trademark are sufficient for this purpose.

As Complainant’s trademark and the Domain Name are identical for all practical purposes, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

Respondent has not claimed at any time that he is or has been commonly known by the Domain Name, as an individual, business, or otherwise as described in paragraph 4(c)(ii) of the Policy. Respondent’s website located at <virtualcanvas.com> never purported to be owned or operated by an individual or entity named "Virtual Canvas." Respondent has not made any use of or demonstrable preparations to use <virtualcanvas.com> in connection with a bona fide offering of goods or services. The website located at <virtualcanvas.com> has remained a holding page at all times since its registration. The Panel feels the evidence establishes that Respondent only obtained the Domain Name with the intent to offer it for sale and/or lease for consideration in excess of his costs to obtain it. (See below).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

For the purposes of paragraph 4(a) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used of a domain name in bad faith:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web sit or location."

The Panel finds there is enough evidence to support a finding that Respondent violated subsection (i). Respondent is obviously in the business of selling and/or leasing domain names. His price or lease terms, as stated on his website or as indicated in his discussions with Complainant’s representative, are in excess of the cost to acquire the Domain Name. Indeed, he made no attempt to document his costs at all. Finally, the circumstances surrounding his registration of the Domain Name support the conclusion that he knew or should have known of Complainant’s use of it as a trademark. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

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 <virtualcanvas.com> be transferred to the Complainant.