WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eleanor MacFarlane v. Tao Tao Peng / Peng Tao Tao

Case No. D2021-0075

1. The Parties

The Complainant is Eleanor MacFarlane, United Kingdom, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Tao Tao Peng, China / Peng Tao Tao, China.

2. The Domain Name and Registrar

The disputed domain name <eleanormacfarlane.com> is registered with DropCatch.com 1217 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2021, the Registrar 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on February 12, 2021. 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 an artist who makes and exhibits moving image, installation, sound and art contraptions. The Complainant also makes gallery-based works and often sets up projects for herself.

The Complainant runs the “Viewergallery” pop-up for artist projects and moving image screenings and works as a covert artist in residence, mentors, tutors, reviews and writes books about exhibitions and culture.

The Complainant has been operating on numerous social network platforms such as Twitter, Instagram, YouTube and LinkedIn and has an extensive presence on the Saatchi Art gallery website (“www.saatchiart.com”), and on the Axis website (“www.axisweb.org”), a platform for artists.

The Complainant owns and currently operates its main website at <eleanormacfarlaneart.com>, which was registered on November 3, 2020, and is used by the Complainant to promote her products and services under the trademark ELEANOR MACFARLANE.

The disputed domain name <eleanormacfarlane.com> was registered on May 14, 2020, and is currently pointed to an online gambling website in Chinese language. The disputed domain name was previously registered by the Complainant but, due to an error made by her registrar, out of the Complainant’s control, the disputed domain name was not actually renewed at the beginning of 2020 and subsequently lapsed, allowing the Respondent to register it instead.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <eleanormacfarlane.com> is identical to the trademark ELEANOR MACFARLANE in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top Level Domain (“gTLD”) “.com”.

The Complainant does not hold a registration for ELEANOR MACFARLANE but claims common law trademark rights based on her use of such sign: since 2006 to identify her services as an artist; since at least 2009 in connection with a website promoting her services as an artist bearing her name (using the disputed domain name until it lapsed in 2020, allowing the Respondent to register it); since at least 2014 in connection with the direct sale of art works; and since at least 2011 in connection with social media services related to her work as an artist, including LinkedIn, Twitter, Instagram, and YouTube.

The Complainant also submits that the Complainant has used the trademark ELEANOR MACFARLANE in connection with other advertisements and promotions, including the “Viewergallery” pop-up for artist projects and moving image screenings; an extensive presence on the Saatchi Art gallery website shown in Annex 8 to the Complaint; as well as the following documents, attached to the Complaint as Annex 18:

- Business card (used since 2009)
- Poster for Complainant’s “Listening Booth” exhibition (2016)
- Biography and statement for OCA Gallery (2014)
- Price list (2014)
- Invoices (2014-18)

The Complainant also underlines that all of the top Google search results for “eleanor macfarlane” identify websites or social media services associated with the Complainant.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the trademark ELEANOR MACFARLANE in any way.

The Complainant emphasizes that, as found by previous panels, if a disputed domain name was registered after the domain name inadvertently lapsed, the respondent lacks rights or legitimate interests in the domain name.

Moreover, the Complainant underlines that it never authorized the Respondent to use the disputed domain name or the mark in any way and that there is no evidence of any commercial relationship between the Complainant and the Respondent, which would entitle the Respondent to the trademark.

The Complainant also submits that, by using the disputed domain name in connection with a website offering gambling services, that are illegal in many jurisdictions, the Respondent has proved that he was not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant states that the Respondent has also not established rights or legitimate interests in the disputed domain name as he is not commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.

Lastly, the Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, where a Respondent registers a domain name that was previously registered and used by the Complainant for many years in connection with a trademark set forth in the domain name, the respondent’s registration and use of the domain name is to be considered in bad faith, especially where a simple Google search would have identified the Complainant.

Moreover, the Respondent is using the disputed domain name in connection with a gambling website, which is illegal in many jurisdictions, and that behavior can never confer rights or legitimate interests on a respondent and is clear evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As highlighted above, the Complainant does not own a registered trademark for ELEANOR MACFARLANE but relies on common law trademark rights on her personal name.

As stated in Section 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint”.

Based on the documents and statements submitted by the Complainant as annexes to the Complaint, the Panel finds that the Complainant has demonstrated that her personal name has been used since several years as a business identifier of the Complainant’s art services and that, therefore, the Complainant has established common law trademark rights in ELEANOR MACFARLANE for the purpose of standing in this proceeding.

As highlighted in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the present case, the Complainant’s trademark ELEANOR MACFARLANE is entirely reproduced in the disputed domain name, with the mere addition of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

In addition, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Tao Tao Peng, might be commonly known by the disputed domain name.

Moreover, in view of the composition of the disputed domain name and the use of the disputed domain name in connection with an online gambling website, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant proves that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of

i) the identity of the disputed domain name with the Complainant’s name and prior trademark rights;

ii) the fact that the Complainant’s services under the trademark ELEANOR MACFARLANE have been extensively promoted on the Internet since several years before the registration of the disputed domain name by the Respondent;

iii) a Google search for “Eleanor macfarlane” shows results mainly related to the Complainant and, last but not least; and

iv) the disputed domain name was previously registered by the Complainant who used it to operate her main website until it lapsed due to an error of her registrar, the Respondent was more likely than not aware of the Complainant’s trademark when it registered the disputed domain name in 2020.

Indeed, the circumstance that the Respondent registered the disputed domain name shortly after it lapsed, after it had been used by the Complainant for over 10 years suggests that the Respondent acted in opportunistic bad faith. See, along these lines, Sylvia Browne Corporation v. Younghee Kim / SYLVIABROWNE HYPNOSIS, WIPO Case No. D2007-1715 (“the disputed domain name was previously owned and used by the Complainant immediately prior to being registered by the Respondent. This suggests to the Panel that the Respondent’s registration was an opportunistic action resulting from an inadvertent lapse on the part of the Complainant, a circumstance that in and of itself smacks of bad faith”) and Commission for Art Recovery, Inc. v. Alexandr Zaharov, WIPO Case No. D2008-1591 (“[t]he actions of the Respondent in acquiring the disputed domain name after it had lapsed and after it had been used by the Complainant for 7 years was clearly an opportunistic acquisition”).

In view of the use of the disputed domain name, identical to the Complainant’s prior trademark, to redirect users to a gambling site, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of his website according to paragraph 4(b)(iv) of the Policy.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case and, therefore, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration”. See also Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

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 <eleanormacfarlane.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: February 28, 2021