WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Richard Green Old Master Paintings Ltd. v. RichardGreen, Inc.

Case No. D2012-1267

1. The Parties

The Complainant is Richard Green Old Master Paintings Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by RGC Jenkins & Co., United Kingdom.

The Respondent is RichardGreen, Inc. of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <richardgreen.com> is registered with INames corp. (Korea).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 21, 2012, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the disputed domain name. On June 22, 2012, INames corp. (Korea) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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”).

On June 22, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 23, June 28, and June 29, 2012, the Complainant requested that English be the language of the proceeding. On June 23, 2012, the Respondent requested that Korean be the language of the proceeding.

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 June 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.

The Center appointed Andrew J. Park as the sole panelist in this matter on July 26, 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.

4. Factual Background

The Complainant is Richard Green Old Master Paintings Ltd. of London, United Kingdom of Great Britain and Northern Ireland. The Complainant, which was founded in 1955 by prominent international art figure Richard Green, is one of the world’s leading art dealers. The Complainant has operated exclusively under the name Richard Green since 1955.

The Complainant deals in high quality artwork and paintings from internationally recognized artists. The Complainant has been financially successful throughout the years. According to the Complainant, in 2010 and 2011, the company had revenue of GBP 53.6 million, with profits of GBP 4 million. The Complainant also conducts business and displays artwork on its website at “www.richard-green.com”.

The Complainant owns several trademarks for RICHARD GREEN relating to art gallery sales and services:

- Community Trademark Registration No. 4822714 for RICHARD GREEN in Classes 35, 36, and 41, filed on December 21, 2005;

- International Registration No. 889065 for RICHARD GREEN in Classes 35, 36, and 41, registered on March 31, 2006, and designating Australia, China, Japan, Russia, and the United States.

The disputed domain name <richardgreen.com> is registered with INames corp. (Korea). The Respondent’s name in the current WhoIs record is “RichardGreen, Inc., of 101, Guro 6 (yuk) -dong, Guro-gu Seoul, 152056, Korea.” This differ from the details in WhoIs shortly before the Complaint was filed. The disputed domain name was registered to “윤진수” (“Yunjinsu”) on May 23, 2012; however both registrants have the same e-mail address.

The Complainant has not authorized or licensed the use of the mark RICHARD GREEN to the Respondent. At the time the Complaint was filed, the Respondent was using the disputed domain name for a pay-per-click landing website offering links to third-party websites, and in particular, to art-related commercial websites. Many of the third-party websites are to competitors of the Complainant.

On June 26, 2012, the Respondent sent an email to the Complainant in English regarding the Complaint. In that email, the Respondent threatened to delay this proceeding and asked the Complainant to apologize and make a reasonable offer to purchase the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or similar to its trademark RICHARD GREEN. The lack of a space between “Richard” and “Green” is irrelevant and does not present a risk of confusion with its trademark.

The Complainant contends that it is the owner of several registered trademarks for RICHARD GREEN, and owns a domain name including the trademarks at issue, <richard-green.com>.

The Complainant contends that its registered trademarks are well-known in the industry and around the world. The Complainant contends that its business under the name and trademark RICHARD GREEN has received significant recognition over the years in prestigious publications with international circulations, such as the Financial Times and The Daily Telegraph.

The Complainant contends that the Respondent has no intellectual property right or other right on the trademark RICHARD GREEN and enjoys no authorization or license from the Complainant for the use of these marks. The Respondent entertains no relation with the Complainant, nor does it provide services of the Complainant. However, at the time the Complaint was filed, the Respondent offered on its webpage links under the disputed domain name to competing art-related commercial websites.

Finally, the Complainant contends that the Respondent’s use of the disputed domain name cannot be construed as noncommercial in any way. The Complainant contends that the disputed domain name was designed to attract web users to the Respondent’s web site where it earned pay-per-click revenue and was therefore clearly put to a commercial use in terms of the Policy.

For all these reasons the Complainant requests the transfer of the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Here, the concerned Registrar confirmed to the Center that the language of the Registration Agreement is Korean. The Complainant requested that English be the language of the proceeding.

The Center issued a Language of Proceeding notification to both parties in both English and Korean with instruction to both the Complainant and the Respondent.

The Center has throughout the proceedings issued its case-related communications, including the Center’s complaint notification documents, in both Korean and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceedings.

The Panel notes that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. In the present case, although the Registration Agreement for the disputed domain name is in the Korean language, the Panel notes that the content at the website of the disputed domain name is in English, and the Respondent has already communicated with the Complainant in English (June 26, 2012 email). Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

6.2. Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel has 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, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

In the present case, the Panel finds that the Complainant has established that the name “Richard Green” has become a distinctive identifier associated with the Complainant. The Complainant: owns registered trademarks for RICHARD GREEN in many countries around the world; is the registrant of domain name <richard-green.com>; has operated under the name “Richard Green” since 1955; and is currently recognized as one of the world’s leading art dealers. Additionally, there is no evidence to suggest that there is a company or business other than the Complainant that uses the name in the same area of industry as the Complainant.

The disputed domain name wholly incorporates the Complainant’s distinctive trademark RICHARD GREEN and as such the Panel is satisfied that it creates sufficient similarity to be confusingly similar (paragraph 4(a) of the Policy). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

(iii) you are making a legitimate noncommercial 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.”

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks. There is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.

The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks, which are not descriptive or generic, in order to profit through the provision of art-related “pay-per-click” links through which it derives income. The Panel finds that this conduct is evidence of cyber squatting and does not constitute a right or legitimate interest under paragraph 4(a)(ii) of the Policy. See, e.g., American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592.

Finally, the Panel finds that the Respondent’s recent amendment of its WhoIs contact details to show RichardGreen, Inc. as the registrant in this case does not demonstrate that the Respondent has been commonly known by a name corresponding to the disputed domain name under paragraph 4(c)(ii) of the Policy. There is no evidence to suggest that the Respondent has ever been commonly known by the disputed domain name.

Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

“(i) circumstances indicating that you 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 the 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 web site 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 web site or location or of a product or service on your web site or location.”

As already mentioned, the Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel reasonably finds that since the Complainant’s marks are well-known, especially in the relevant art community, it is very unlikely that the Respondent, at the time of registration or purchase of the disputed domain name, was not aware that it was infringing the Complainant’s trademarks.

Bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant.

The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent must have known of and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks, in order to profit through the provision of art-related pay-per-click links through which it derives income. Moreover, the Panel finds that the Respondent’s use of the disputed domain name amounts to a “bait and switch” strategy in order to draw in Internet users to access the Complainant’s website. Such conduct is misleading and the use of a confusingly similar domain name to lure Internet users to a website hosting links to providers of competing products is prima facie evidence of bad faith. See, e.g.,American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592.

In addition, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see adidas-Saloman AG v. Vincent Stipo,WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of paragraph 4(b)(i) of the Policy. These actions include, for example, the Respondent offering to sell the disputed domain name to the Complainant, and also advertising on its website “Domain for Sale – make an offer $$$$$$.”

For the above reasons, the Panel finds that the Complainant has established that the disputed domain name has been registered and is being used in bad faith by the Respondent.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <richardgreen.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: August 10, 2012