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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Estate of Francis Newton Souza v. ZWYX.org Ltd.

Case No. D2007-0221

 

1. The Parties

The Complainant is the Estate of Francis Newton Souza by its administrators Shelley Souza and Jeffrey Greener of New York, United States of America, represented by Ingber & Gelber LLP, United States of America.

The Respondent is ZWYX.org Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Abdallah El-Khoury, Lebanon.

2. The Domain Name and Registrar

The disputed domain name <fnsouza.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007. On February 19, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 20, 2007, Network Solutions, LLC notified the Center by email that it was not the registrar for the <fnsouza.com> domain name. On March 1, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On March 1, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 6, 2007, the Center transmitted to the Complainant by email a notice of change in the registrant’s information. In response to this notice by the Center, the Complainant filed an amendment to the Complaint on March 6, 2007, substituting eNom, Inc. as the registrar.

The Center verified that the Complaint together with the amendment to 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”).

On March 7, 2007, the Center sent the Respondent a Notification of Complaint and Commencement of Administrative Proceeding by email. The Respondent advised on April 10, 2007 that this original communication was not received as it had been sent to an incorrect email address. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally re-notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2007. The Response was filed with the Center on April 30, 2007.

The Center appointed John Swinson, David H. Bernstein and Andrew D. S. Lothian as panelists in this matter on May 16, 2007. The Panel finds that it was properly constituted. Each member of 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. Procedural Issues

The Center received from the Complainant on May 15, 2007 a reply to the Respondent’s Response. On May 17, 2007, the Center received from the Respondent a reply to the Complainant’s Reply (together, “Supplemental Filings”).

The Center advised that the fact of the Center’s receipt of these Supplemental Filings would be brought to the attention of the Panel and that, in accordance with paragraph 10(d) of the Rules, it is at the sole discretion of the Panel whether the Supplemental Filings would be admitted and considered or not.

For the sake of procedural efficiency, unsolicited supplemental filings will generally not be considered in UDRP proceedings, unless in exceptional circumstances, such as the existence of new, relevant facts or arguments that were not known until after the submission of the original Complaint or Response, or that the Complainant could not reasonably have anticipated (see, e.g., Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609; Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001; Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023).

Having reviewed the Supplemental Filings of both parties, the Panel decides that the Complainant’s Supplemental Filing does not meet this standard. The Complainant does not explain, and no reasons are apparent, why the facts and arguments made in its Supplemental Filing were not included in the original Complaint. These facts and arguments seem to have been known to the Complainant when the original Complaint was filed and they do not rebut any factual argument made by the Respondent that could not have been anticipated.

The Panel thus declines to consider Complainant’s Supplemental Filing. Because it has disregarded Complainant’s Supplemental Filing, the Panel need not consider Respondent’s Supplemental Filing either. Even if the Panel did consider the Supplemental Filings, though, their content would not change the Panel’s decision in this case.

 

5. Factual Background

The Complainant is the Estate of Indian modern artist Francis Newton Souza (“Souza”) who died in March 2002.

The Complainant registered over 20 domain names related to Souza after Souza’s death. The Complainant currently operates a website at “www.fnsouza.info” relating to Souza.

Srimati Lal (“Lal”) was the original registrant of the disputed domain name <fnsouza.com> from 2000 until 2006. In 2006, Lal transferred the domain name to the Respondent.

Lal is an artist who had a relationship with Souza for approximately 10 years; however, the nature and extent of this relationship is in dispute. The Respondent provides web services. The Respondent uses the disputed domain name to operate, on behalf of Lal, a website featuring Souza’s works and information about his life and death.

The main page of the <fnsouza.com> website displays thumbnail pictures of some of Souza’s paintings. It also contains a link to the Respondent’s home page and Lal’s website located at “www.srimatilal.com”. A page on Lal’s website, at <srimatilal.com/souza>, appears to contain the same content as website at the disputed domain name.

This dispute appears to be one of a number of disputes between the parties and Lal, and there appears to be little common ground between them.

 

6. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following arguments:

The Complainant owns a U.S. copyright registration to an “F.N. Souza Website” presenting two-dimensional representations of Souza’s artwork exclusively owned by the Respondent and thus has the exclusive right to display such artwork on a website.

A famous artist is entitled to common law trademark protection and the Complainant (as Souza’s estate) has a common law trademark right to the Souza name. The disputed domain name is virtually identical to that common law trademark and is confusingly similar to it.

The disputed domain name diverts directly to Lal’s personal website which displays images of Souza’s artwork without authorisation. This is misleading and tarnishes the reputation of Souza, and shows that Lal is seeking to promote herself through Souza’s fame.

Lal created the disputed domain name and transferred it to the Respondent in bad faith. Accordingly, Lal and the Respondent are jointly and severally liable.

Lal has no legal right to Souza’s works and has falsely represented herself on the “www.fnsouza.com” website as having authority and as being the curator and manager of Souza’s estate. Lal has never been Souza’s curator.

Copyrighted works are displayed on the “www.fnsouza.com” website without the Complainant’s permission. The display of these works and registration of the disputed domain name would lead people (particularly collectors and dealers) to believe that the “www.fnsouza.com” website is an authentic site for Souza’s artwork and a place where Souza artwork can be purchased. Display of the copyrighted works on the “www.fnsouza.com” website confusingly creates the impression that the Respondent has a legal right to the copyrighted works, and causes an overall confusion as to ownership of Souza artwork.

The Respondent and Lal have used the disputed domain name to allow transmission of copyright work over the Internet and made such work available to all members of the public.

Souza himself paid for registration of the disputed domain name and therefore upon his death it should have been transferred to the Complainant.

The “fnsouza.com” website is more likely to be seen by persons searching for information on Souza than any of the websites at the domain names that the Complainant has registered, including the legitimate website of the Souza estate at “fnsouza.info”. The disputed domain name interferes with the ability and legal right of Souza estate to operate and conduct its rightful display of Souza’s work.

The Respondent and Lal have never been known by the name “FN Souza” and the disputed domain name creates the false impression of some connection between them and Souza, for example the impression that the Respondent and Lal are representatives of Souza’s estate.

The Respondent and Lal are not using the disputed domain name for any bona fide or legitimate commercial purpose and are acting in bad faith to tarnish and misuse the fame and reputation of Souza for personal gain and a campaign of personal animosity against the Complainants.

B. Respondent

In summary, the Respondent makes the following arguments:

The Respondent provides web services to clients, including Lal. The Respondent registered the disputed domain name on behalf of Lal in November 2000 (using her name as registrant) and has managed it since then on Lal’s behalf. In 2006, the Respondent changed Registrars and the Respondent was substituted as registrant. There is nothing illegal or wrongful in this conduct, and the Respondent has not tried to hide Lal’s identity as the author or manager of the website at the disputed domain name.

Other entities apart from the Complainant have the right to report their views about Souza. There are other websites not owned by the Complainant which display Souza’s works.

The website at “fnsouza.com” was the first website about Souza and contributed to his fame. It was established in November 2000 with Souza’s authorisation and encouragement. The disputed domain name was never in Souza’s name, and he did not pay for its registration.

Lal was Souza’s authorised curator and companion from 1993 until his death in March 2002 (including at the time the disputed domain name was registered). Lal curated Souza’s exhibitions from 1994 to 2002.

The Respondent and Lal have not developed the website at the disputed domain since Souza’s death. The Respondent and Lal have maintained the site as a legitimate bona fide tribute to Souza and are not for trading on the fame of Souza. The website at the disputed domain name does not attempt to sell or trade anything. It is not a gallery. The Respondent and Lal do not receive any personal or financial gain from the website at the disputed domain name.

The disputed domain name does not interfere with or create any confusion with the Complainant’s website or its right to use the SOUZA common law trademark. It is up to the Complainant to develop its website if it wishes to overpass the search engine popularity of the website at the disputed domain name.

The disputed domain name does not directly lead the public to Lal’s personal website site and does not imply that it is the official site of Souza. The <fnsouza.com> web site clearly states that it was conceived and edited by Lal and by the Respondent, and provides links to Lal’s personal site and Respondent’s site as legitimate credits to them as creators. The “www.srimatilal.com/souza” site is not Lal’s personal site but rather a page dedicated to Souza.

Neither the Respondent nor Lal have ever claimed to represent the Souza estate through the “www.fnsouza.com” website.

The Respondent is willing to display a sentence on the <fnsouza.com> website to the effect that the site is not Souza’s official website nor the website for the Souza estate.

 

7. Discussion and Findings

The Complaint sets forth various claims, from allegations regarding the ownership of the disputed domain name and the website to which it points, to contentions regarding misrepresentation concerning Lal’s relationship with Souza, to accusations of copyright infringement by Respondent. Most of these claims, however, are beyond the scope of the Policy, which addresses only questions of abusive cybersquatting. This Panel, therefore, will limit its decision to the Complainant’s claims that Respondent is guilty of abusive cybersquatting. Any other claims and counterclaims among the parties, Lal, or any other third parties, will have to be pursued in other, more appropriate, fora.

To succeed in its claim under the Policy, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name registered by the Respondent 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant and the Respondent agree that Souza is a famous artist of numerous well known works. However, merely being famous is not of itself sufficient evidence that one has trademark rights in a personal name.

The Souza name was and is used in connection with the sale of paintings and artwork. The Panel therefore infers that Souza had, through use, acquired common law trademark rights in his name. Complainant asserts that, in light of Souza’s death, his common law trademark rights have been transferred to it (i.e., Souza’s estate) by law. The Respondent does not dispute this claim nor does it present any evidence showing otherwise.

The Panel therefore accepts, for purposes of this proceeding, that the Complainant has common law trademark rights in the Francis Newton Souza name.

The next issue is whether the domain name <fnsouza.com> is identical, or confusingly similar, to the trademark in which the Complainant has rights. The disputed domain name <fnsouza.com> only contains Souza’s initials and surname, rather than his full name. Souza’s full name is Francis Newton Souza; however, it appears that he was well known and would also be recognised by the appellation “F.N. Souza”. This could be inferred from the evidence annexed both to the Complaint and the Response (see, for example, the obituary published in The Guardian on June 17, 2002, entitled “FN Souza: India’s first modern artist” (Annex 4 to Complaint), and a passage by Souza published in the catalogue of one of his exhibitions, signed “F.N. Souza” (Annex 2 to Response). The Respondent does not dispute that Souza went by the name “F.N. Souza”, but only asserts that this was not the artist’s sole appellation. Accordingly, the Panel finds that Complainant also owns the common law trademark F.N. SOUZA and that the disputed domain name is identical to a name in which the Complainant has trademark rights.

Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a 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.” (Policy, paragraph 4(c)).

Before turning to the question of “rights or legitimate interests”, a preliminary issue requires the Panel’s attention. As mentioned above, the disputed domain name was registered under Lal’s name from 2000 to 2006, after which it was transferred to the Respondent. Thus, in ascertaining the question of “legitimate interests” (and, later, the question of “bad faith”), the Panel needs to decide whether to focus its analysis primarily on Lal and the original registration in 2000, or on the Respondent and the 2006 registration.

The Complaint acknowledges that the Respondent is the “official Respondent” but also states that Lal is the “party primarily motivating and benefiting” from the domain name registration. The Respondent does not dispute that it manages the domain name on Lal’s behalf. It explains that its name was “substituted to [Lal’s] name in 2006 as the Registrant of the domain in a legitimate agreement between Lal and Respondent”. The terms of this agreement are not specified but it appears most probable to the Panel that Lal and the Respondent are in an agency relationship. Accordingly, while the substitution of registrant is effectively a transfer of the disputed domain name between Lal and the Respondent this was clearly not a third party ‘arms length’ transaction but rather a way in which the Respondent and Lal’s agency arrangement was facilitated. In these circumstances the Panel considers that it would be appropriate to view the Respondent and Lal as one and the same for the purposes of this administrative proceeding.

Nevertheless, the Complaint and the Response do not consider the Respondent’s position in any detail and instead focus primarily on Lal and the 2000 registration in addressing the elements of “rights or legitimate interests” and “bad faith”. Given this position of the parties, the Panel will in these proceedings also focus primarily on Lal’s registration of the disputed domain name in 2000.

Accordingly, the question for the Panel is whether Lal has rights to, or legitimate interests in, the disputed domain name.

Lal had a relationship with Souza. This relationship may have been a personal or business relationship or both. Regardless, Lal was clearly a fan of Souza and his artwork.

The Panel has carefully reviewed the current website located at the disputed domain name.¹ The evidence suggests that the website was created by and is still controlled by Lal, and the Respondent is a service provider that is assisting Lal in this project.

The website at the disputed domain name includes no advertisements. It does not advertise works of art for sale.²

The website at the disputed domain name includes only two links – to the Respondent’s website and Lal’s website. In the Panel’s view, these links are in the nature of credits, and are not intended to be advertisements for or promotions of the Respondent or Lal.

The Panel thus concludes that the website at the disputed domain name does not contain any commerce or other commercial activity.

The Panel best characterizes the website as a non-commercial fan or tribute website. It does not appear that the nature of this website has changed since it was first created.

The question whether fan sites that are clearly non-commercial constitute a right or legitimate interest in the disputed domain name is one on which there is a split among Panels (see WIPO Decision Overview, § 2.5). Several Panels have ruled that operators of such websites can have rights and legitimate interests in a domain name that includes the complainant’s trademark (see, e.g., Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001; Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042; Besiktas Jimnastik Kulubu Dernegi v. Mehmet Tolga Avcioglu, WIPO Case No. D2003-0035); other Panels have espoused the view that fan site operators do not have rights to express their views, even if positive, on an individual or entity using an identical or confusingly similar domain name because such sites are, in essence, misrepresenting themselves as being the official site of that individual or entity (see, e.g., David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459; Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S. and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Nintendo of America Inc. v. Alex Jones, WIPO Case No. D2000-0998).

Based on a careful reading of the Policy, this Panel sides with the former and believes that genuine noncommercial fan sites may indeed give rise to a legitimate interest. Paragraph 4(c)(iii) of the Policy provides as an example of how to demonstrate rights or legitimate interests in a domain name that the registrant is “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”. This language makes it clear that the operator of a noncommercial fan site can take advantage of this provision unless the operator, with an intent for commercial gain, is misleadingly diverting consumers or tarnishing the mark. Here, even if consumers might be confused as to whether the site is an official site of F.N.Souza or his former curator or his estate, the fact is that there is no showing that any of this is being done with an “intent for commercial gain”, and thus the Policy mandates a finding that the noncommercial fan site operator has a legitimate interest under Section 4(c)(iii).³ Cf. Ryanair Ltd. v. Michael Coulston, WIPO Case No. D2006-1194 (in case involving criticism cite, concluding that, “if the diversion of traffic was not made misleadingly with an intention of realizing some commercial gain, it does not fall under the language of the Policy, which is intended to address commercial diversions”); Xtraplus Corp. v. Flawless Computers, WIPO Case No. D2007-0070.⁴

In the present case, Lal is not only a fan of Souza, but it is stated to have had a relationship with him, which makes her alleged legitimate interests in the domain name even stronger. She could thus be regarded as “making a legitimate noncommercial or fair use of the domain name”.

The combination of these factors leads the Panel to conclude that Respondent is engaging in legitimate noncommercial use of the disputed domain name.

Accordingly, the Panel finds that the Complainant has not met the requirement of the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 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.” (Policy, paragraph 4(b)).

Guided by the Panel’s decision to focus primarily on Lal’s registration of the disputed domain name in 2000, the Panel now turns to ascertain whether this registration was in bad faith and whether the disputed domain name is being used by Lal and/or the Respondent in bad faith.

Lal registered the disputed domain name while Souza was alive and the evidence shows that the current website also was created while Souza was alive. There is no evidence that Souza was unhappy that this occurred – in fact, the evidence suggests that Souza participated in Lal’s project to create the website. The Complainant even asserts that Souza made a financial contribution to the website project.

There is no evidence that Souza wanted the disputed domain name registered in his name or transferred to him at any time.

There is no evidence that Respondent or Lal registered the disputed domain name with the intention of offering it for sale to any party.

The evidence does not support that the Respondent or Lal registered the disputed domain name to prevent Souza or the Complainant from registering it, or engaged in a pattern of such registrations.

There is no evidence that the Respondent or Lal registered the disputed domain name in an attempt to harm the interests of the Complainant as a competitor; in fact, Complainant is not a “competitor” of Lal or Respondent.

There is no evidence that the Respondent or Lal registered and used the disputed domain name intentionally for commercial gain to attract Internet users to a website by creating confusion as to the Complainant’s sponsorship or endorsement of the website. There is no evidence that the Respondent is making a commercial gain from the website, or that it acted with the intention of such gain.

In short, the Complainant has failed to establish that the Respondent or Lal had registered and are using the disputed domain name in bad faith.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: June 18, 2007

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¹ It is well accepted that the Panel can conduct its own factual research, such as review of the parties’ websites. See WIPO Decision Overview, § 4.5.

² The Panel finds it unnecessary to decide whether the website at the disputed domain name provides “services” for purposes of Paragraph 4(c)(i) of the Policy (for discussion of the question whether this term may include non-commercial services to the public, of the type often offered by fan sites, see, for example, 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001; Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042).

³ Strictly speaking, as noted in the Decision Overview, a number of Panels who have found that operators of noncommercial fan sites have a legitimate interest have noted that there typically is a disclaimer or other statement making clear that the site is not the official site of the celebrity. No such disclaimer appears on Respondent’s website (despite Respondent’s statement that it would be willing to add such a disclaimer). In an effort to take advantage of that line of cases, the Complainant contends that the use of the disputed domain name might mislead “individuals, particularly collectors, dealers and others likely to be interested in the work of Souza, to believe this is an authentic site for representation of Souza’s artwork and the procurement of potential expertise regarding or purchase of his artwork”. There is, however, nothing in the Policy that requires such a disclaimer. To the contrary, given the absence of an intent for commercial gain, the fan site is treated as a legitimate interest, under the Policy, even if some consumers might be deceived as to whether the site is an official fan site.

⁴ Some panelists may think that is an incorrect statement of what the Policy should be, but objections to the policy decisions reflected in the Policy must be raised with ICANN, rather than with individual Panels.