Frida Kahlo Corporation v. THEHOLDINGCOMPANY
Claim Number: FA1008001340890
PARTIES
Complainant is Frida Kahlo Corporation (“Complainant”), represented by David S. Farber, of Law Office of David S. Farber, P.A., Florida, USA. Respondent is THEHOLDINGCOMPANY (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fridakahlo.com>, registered with Godaddy.Com, Inc.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2010.
On August 17, 2010, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fridakahlo.com> domain name is registered with Godaddy.Com, Inc. and that the Respondent is the current registrant of the name. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 August 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fridakahlo.com. Also on August 24, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
The Respondent requested additional time to respond to the Complaint and submitted information in support of this request. Respondent didn't obtain Complainant's consent to the extension. The Forum found that extenuating circumstances existed warranting an extension and granted Respondent an extension until September 27, 2010 to submit the response.
A timely Response was received and determined to be complete on September 27, 2010.
On October 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complainant, Complainant contends as follows:
- Complainant's prior rights over its marks are established by prior use and registration worldwide, including its uncontestable US federal registration for “FRIDA PASSION FOR LIFE and design” for "retail store services, namely, skincare products" registration No. 3,339,846. The disputed domain name is Identical or confusingly similar to Complainant's mark. Respondent’s domain name is intended as a reference to Complainant and is confusingly similar to Complainant's FRIDA KAHLO mark. The term FRIDA KAHLO and FRIDAKAHLO.COM are phonetically and visually identical, they share all letters in the same order. Therefore, likelihood of confusion is unavoidable.
- Respondent lacks any right or legitimate interest in the disputed domain name. Respondent's subsequent use of a confusingly similar domain name to disseminate information does not give rise to any right or legitimate interest in the domain name. Respondent failed to select and use a domain name that reflects the object and independent nature of its site. Instead, Respondent intentionally adopted a domain name that includes Complainant's distinctive incontestable mark, which does not constitute a bona fide use of a domain name. Frida Kahlo Corporation and its licensees have spent considerable time and money promoting the FRIDA KAHLO marks nationwide and throughout the world. As a result of Frida Kahlo Corporation’s longstanding use of the FRIDA KAHLO marks, the marks have acquired a valuable goodwill and the public has come to associate the marks with Frida Kahlo Corporation.
- Respondent has registered and used the disputed domain name in bad faith. Respondent has purposefully employed deceptive tactics to attract consumers to their website under the guise that their site is sponsored or somehow affiliated with Frida Kahlo Corporation. Respondent embedded Frida Kahlo Corporation’s trademark FRIDA KAHLO within the websites’ computer meta tags which is visible to “search engines” that look for websites containing specific words or phrases specified by computer users. Thus, a consumer conducting a search for Frida Kahlo Corporation websites by typing in the trademark FRIDA KAHLO would receive a search engine-generated list which includes the FRIDAKAHLO.COM website. Through the Respondent’s willful deception, consumers have been misled into believing the FRIDAKAHLO.COM website is connected with, or somehow sponsored by, Frida Kahlo Corporation. Because Respondent deliberately uses Complainant's mark, Internet users are likely to believe incorrectly that the site is authorized, sponsored, or approved by Complainant. By registering FRIDAKAHLO.COM, Respondent is seeking to trade on the goodwill associated with Complainant’s trademarks and drive traffic to its website. Complainant fears that the domain name will not only create user confusion but will also dilute its mark. Internet users seeking Complainant will mistakenly be led by the FRIDAKAHLO.COM domain name to Respondent's site.
- Respondent deliberately used an identical copy of Complainant's mark and reproduced artistic works. The obvious and inevitable result of Respondent's conduct is to attract Internet users to its site based on confusion and to damage Complainant's commercial interests. Such conduct is in bad faith registration and use of the domain name in violation of Paragraph 4(a)(iii) of the Policy.
B. Respondent
In its Response, Respondent contends as follows:
- The Complaint must be dismissed because Complainant has failed to carry its burden of proof under paragraph 4(a)(i) of the Rules for Uniform Domain Name Dispute Resolution Policy since the Complainant in this proceeding is Frida Kahlo Corporation, a Florida Corporation, located at 111 Kane Concourse, Suite 410, Bal Harbour, Florida 33154, which is not the same party as the owners of the trademarks submitted by the Complainant as exhibited below (TRADEMARK OWNERS: ISOLDA PINEDO KAHLO INDIVIDUAL MEXICO and FRIDA KAHLO CORPORATION A PANAMA CORPORATION). Respondent requests that the Complaint must be dismissed because Complainant is not the owner of a registered trademark that is identical or confusingly similar to the disputed domain name <fridakahlo.com>, and because it has produced no evidence of common law trademark rights. Presumably, the true owner of such rights would be able to produce documentary evidence of its acquisition of such rights, such as contracts, assignments, copyright records, etc. Complainant claims to have secured worldwide registrations and applications for registrations for the FRIDA KAHLO marks; however, most of these registrations and applications are NOT attributed to Complainant, but to ISOLDA KAHLO INDIVDUAL MEXICO and to FRIDA KAHLO CORPORATION A PANAMA CORPORATION. In addition, Complainant states that it holds a US federal registration for “FRIDA PASSION FOR LIFE and design” for "retail store services, namely, skincare products". This registration is irrelevant in this Complaint given that it belongs to FRIDA KAHLO CORPORATION A PANAMA CORPORATION and not to Complainant. In addition, this mark is for “FRIDA PASSION FOR LIFE and design” and the issue at hand concerns <fridakahlo.com> as a tribute website which honors the life work of a great artist and not for the purpose of retailing FACE CREAM products branded as “FRIDA PASSION FOR LIFE and design”. There is nothing phonetically confusing between fridakahlo.com and “FRIDA PASSION FOR LIFE and design”, nor do they share all letters in the same order. Therefore, likelihood of confusion is avoidable.
- Respondent’s use of the domain <fridakahlo.com> is a nominative fair use. Acquiescence and fair use are the principle of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts. Respondent is not using the Complainant’s mark as a trademark since Complainant has not demonstrated that it owns rights to any trademarks, and those it claims to own are trademarks for such things as face cream products labeled “Frida PASSION FOR LIFE and design” as well as beer, tequila, running shoes, hats, dolls, and glassware. The Complainant has no rights to the domain name registered by Respondent, which is the subject of this Complaint. These are divergent intellectual property rights that do not overlap and encompass each other in any way and which are mutually exclusive. Ownership under trademark laws does not implicate any rights within the realm of Domain Names.
- According to Complaint, the trademark “FRIDA KAHLO” is protected for goods and services which do not include domain names or website publishing. Copyright laws do not implicate any other intellectual property rights since copyrights do not encompass any additional trademark, patent, domain or other rights by association. The mark <fridakahlo.com> is not registered by the Complainant and therefore the Complainant should not be a party to this Complaint as the Complainant has neither the right nor the grounds on which to institute or otherwise initiate any injunction of complaint against the Respondent.
- The Complainant states it has authority to pursue the Complaint, and that it is the exclusive owner of the trademark “FRIDA KAHLO "; however, as stated earlier, these trademarks are not registered by for protection by the Complainant. In any case, Frida Kahlo died on July 13, 1954; therefore, she cannot have "rights" in the trademark "fridakahlo.com" within the meaning of the UDRP Policy. The Complainant does not own these rights or have any rights in the trademarks themselves. The current U.S. Trademark Law as it pertains to names of individuals stipulates that the Trademark Act does not apply to deceased persons.
- Respondent is using this domain name to offer tribute to Frida Kahlo's works and life. The website features a biography of the artist. Visitors can consult the archives and contribute new information, images, comments, tributes and general knowledge. They can also peruse the online art gallery, bookstore and film gallery, which offer only artwork, books and films on the life and works of Frida Kahlo. This is a classic fair use of the phrase <fridakahlo.com>. There is evidence of the Respondent's use of the domain names in connection with a bona fide offering of goods or services. Respondent has permission to make use of the name Frida Kahlo by its legal and registered affiliation with distributors Amazon.com, Art.com, and AllPosters.com (see Exhibits X3, X4 and X5) for the authorized representation of Frida Kahlo artwork, books, films, recorded music, educational tools, and any other items which these official Distributors may offer through their websites. Respondent has always held such agreements during its tenure as an affiliate and Respondent intends to continue using the domain name fridakahlo.com to host the tribute website that presents digital representations provided by the authorized distributors. It would be difficult to imagine presenting this artwork, books and products for sale on a website without including the name Frida Kahlo in the offerings. Registrant is continuously researching new facts on the life and work of Frida Kahlo as well as her artwork, books, music, films, learning tools, and any relevant information which can be added to the website. Internet users appreciate portals which group information on one subject matter; thus facilitating their research.
- Respondent’s website <fridakahlo.com> also features for its visitors the following useful links and information on the subject of Frida Kahlo, exhibitions, books, her artwork, etc.
- Since the Registrant registered domain name <fridakahlo.com> May 30,1998, long before the Complainant’s alleged first trademark in 2003. It can obviously once more be demonstrated that the Complainant's misleading and erroneous contention that Respondent intentionally adopted a domain name that includes Complainant's alleged distinctive incontestable mark is glaringly false and absent of any evidence to support such a claim. Proof is that Complainant’s first alleged trademark is dated March 31, 2003, yet registrant registered domain name <fridakahlo.com> on May 30, 1998, which is five years prior to the Complainant’s alleged trademark. Such conduct is indicative of the domain name registrant's good faith, not bad faith.
- Contrary to Complainant's assertions, Respondent is making a legitimate fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks or service marks at issue. As the reasons for using the domain name fridakahlo.com were in no means related with the Complainant’s business and alleged trademarks, the Respondent never intended to divert consumers, and is not likely to, either. This tribute fan website is elegant and produced professionally and is only a Tribute to Frida Kahlo and to her legend. The Respondent is in praise of Frida Kahlo and her works. Respondent also features a disclaimer on its website stating: ”DISCLAIMER: By using this website you are agreeing to the following: This website is privately owned and maintained and in no way affiliated with Frida Kahlo and/or her representatives, nor is it implied to be or should be interpreted as such. Her representatives cannot be reached through this site and we cannot forward messages to them. This website is an unofficial tribute/fan site and has been created solely for entertainment purposes. Use of copyrighted images and information is covered under the fair use section of the Copyright Law. This website is not responsible for any content, off this site, to which it links. This website and its contents do not constitute official information. Although the information is believed to be accurate when presented, this site is under constant revision, and no warranty of any kind (including accuracy, completeness, reliability, or otherwise) is made or implied. The website registrant will not be responsible for any damages of any nature resulting from use of or reliance upon the information provided herein.”
- Respondent does not wish to mislead visitors into thinking they are dealing with the Complainant, which is why it uses a disclaimer on its site. The only benefit Respondent stands to gain from the domain names is that some search engines tend to favor domain names with the search term in them. This also tells Internet users that they have found what they are looking for.
- Respondent has shown that they have not only made demonstrable preparations to use the domain name fridakahlo.com in connection with a bona fide offering of services prior to the dispute but has also proven a fair use of the domain names. Respondent is engaged in serious activities to use the domain name for the bona fide offering of services.
- Complainant has not presented any evidence indicating that Respondent has registered or has acquired the domain name <fridakahlo.com> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, which is not even the owner of any of the trademarks or service marks, or to a competitor of that Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The Respondent has not engaged in a pattern of conduct involving the registration and sale of domain names, and has never engaged in the sale of other domain names. The Respondent did not register or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, since Respondent did not know (and does not know) anyone had rights in the <fridakahlo.com> mark at the time of registration, and since Respondent was unaware of the existence of Complainant at the time of registration because Complainant registered their company in Florida on August 1, 2008, more than 10 years after registrant registered the domain name <fridakahlo.com> . The Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of Complainant’s alleged trademarks or even that Respondent was aware of Complainant’s existence when he registered the domain names in the British Virgin Islands and has never heard of Complainant’s existence. Frida Kahlo died nearly sixty years ago and Respondent simply wanted to honor their favorite artist with an elegant website and thus encourage the knowledge of this great artist and of her works. It seemed only natural to Registrant to name their website by the name of the artist herself. The domain name was available and Registrant saw no reason to not pursue this dream. Respondent selected the domain because it was laudatory. The Respondent registered the domain name <fridakahlo.com> more than twelve years before this dispute was commenced and more than ten years before Complainant registered their company in Florida.
- Respondent did not deliberately use an identical copy of Complainant's mark and reproduced artistic works for the obvious reason that Respondent’s website offers accurate biographical information on the life and works of Frida Kahlo, while Complainant’s alleged mark offers Internet users the possibility to purchase among other things, BEER, TEQUILA, RUNNING SHOES, DOLLS, FACE CREAM, AIRPLANE LOGOS AND NOTEBOOKS. Respondent's conduct has never been to attract Internet users to its site based on confusion and intentional damage to Complainant's commercial interests. Such conduct cannot be judged to be in bad faith. That Complainant suffers commercial harm when Internet users visit Registrant’s website <fridakahlo.com> is manifest fallacy. Respondent’s website is intended to feature a digital tribute museum to Frida Kahlo 's works and life, an online Catalog Raisonné and a place where visitors can consult the archives and are invited to contribute new information, images, comments, tributes and general knowledge.
FINDINGS
Magdalena Carmen Frieda Kahlo y Calderón de Rivera (1907-1954), better known as Frida Kahlo, was a famous Mexican painter. Wikipedia, Frida Kahlo, http://en.wikipedia.org/wiki/Frida_Kahlo.
Complainant is Frida Kahlo Corporation, a ”sociedad anónima” constituted and with domicile in Panama City, Republic of Panama, with an address in Miami, USA. According to the deed (“escritura pública”) registered by a notary public on December 14, 2004 in Panama City, Complainant’s Board may decide to open branches and conduct business in any place of the world.
Complainant owns a US federal registration for FRIDA PASSION FOR LIFE (words and letters in stylized form), Reg. No. 3,339,846, covering retail store services, namely, skincare products, Reg. Date January 13, 2009, filed on Dec 5, 2007, first use and first use in commerce December 31, 2006.
A search conducted by the Panel on the TESS and TARR online databases reveals that Complainant, by assignment of Ms. Isolda Pinedo Kahlo, also owns the following U.S. federal trademark registrations for FRIDA KAHLO:
o Reg. No. 3326313, covering products of Int. Class 33, Reg. Date October 30, 2007, filed on June 16, 2005, first use on July 13, 2004 and first use in commerce September 16, 2005;
o Reg. No. 3318903, covering products of Int. Class 3, Reg. Date October 23, 2007, filed on October 2, 2002, first use and first use in commerce May 3, 2007;
o Reg. No. 2999526, covering women’s clothing of Int. Class 25, Reg. Date September 27, 2005, filed on October 2, 2002, without indication of first use;
o Reg. No. 3318902, covering products of Int. Class 16, Reg. Date October 23, 2007, filed on October 2, 2002, first use and first use in commerce May 5, 2007;
o Reg. No. 3047286, covering eyeglasses of Int. Class 9, Reg. Date January 24, 2004, filed on October 2, 2002, without indication of first use, indicating that registrant owns Mexican registration Reg. No. 786583 – see below;
o Reg. No. 3799598, covering products of Int. Class 32, Reg. Date June 8, 2010, filed on June 16, 2006, date of first use not available, indicating that registrant owns Mexican trademark registration Reg. No. 1017505 - see below;
o Reg. No. 3787489, covering products of Int. Class 34, Reg. Date May 11, 2010, filed on June 16, 2005, without indication of first use, indicating that registrant owns Mexican registration Reg. No, 882333 – see below;
o Reg. Nos. 3437962, 3437963, and 3437964, covering alcoholic beverages of Int. Class 33, Reg. Date May 27, 2008, filed on December 28, 2005, First use July 13, 2004 and first use in commerce September 16, 2005;
o Reg. Date October 30, 2007, filed on June 16, 2005, First use March 3, 2006 and first use in commerce May 3, 2007.
According to the “marcanet.impi.gob.mx” and “vidoc.impi.gob.mx” online databases of the IMPI (the Mexican intellectual property agency), visited by the Panel, Complainant owns various Mexican registrations for the FRIDA KAHLO mark, also obtained by assignment by Ms. Isolda Pinedo Kahlo, an individual person. These marks cover Int. Classes 9, 14, 3, 16, 33, 28, 12, 32, 27, 20, 25, 34 and 18. The earliest filing date for any such marks was February 7, 2002 (for Reg. Nos. 785991, 785992, 785493, 785994 and 786583). In each of the corresponding application forms, the field stating the date of first use is empty, and the text “no se ha usado” (Spanish for “[This mark] has not been used”) is marked. This applies also to Mexican registrations Reg. Nos. 786583, 882333 and 1017505, cited in U.S. trademark registrations mentioned above.
Complainant also owns three Venezuelan registrations: two for the FRIDA KAHLO mark (Reg. No. P271196, Int. Class 9, and Reg. No. P271198, Int. Class 21) and one for the FRIDA KAHLO CORPORATION mark (Reg. No. P271197, Int. Class 16). Both marks have an application date of June 27, 2005 and a registration date of June 19, 2006. There is no indication of date of use or first use on any of them.
Complainant owns Community trademark registrations for the FRIDA KAHLO mark: Reg. No. 004413803, covering Int. Classes 3, 9, 14, 16, 25 and 33, Reg. Date March 22, 2006, filed on April 28, 2005, and Reg. No. 004589181, covering Int. Class 28, Reg. Date August 22, 2006, filed on November 8, 2005. There is no indication of first use on any of them.
Complainant also owns Canadian trademark registrations for the FRIDA KAHLO mark: Reg. No. TMA747101, covering various products, Reg. Date August 29, 2009, filed on July 10, 2002, and Reg. No. TMA768436, covering tequila, Reg. Date February 6, 2010, filed on December 11, 2004. There is no indication of first use.
The printout of the Japanese registration for FRIDA KAHLO as submitted by Complainant (Reg. No. 4965736, Reg. Date June 30, 2006) filed on August 24, 2005) does not contain the name of the registrant, nor does it indicate a date of first use. As to the printout of the Chinese registration for FRIDA KAHLO (Reg. 5122038 , Reg. Date June 21, 2009, filed on January 16, 2006), it shows that the registrant is “Isolda Pinedo Kahlo”, and not Complainant. Also, there is no indication of first use.
The record of for the registration of the disputed domain name was created on May 30, 1998.
As of October 24, 2010, the website at the disputed domain name (“www.fridakahlo.com”) consisted of several pages with content related to the artist Frida Kahlo:
o A short biography of Frida Kahlo;
o A page titled “Art”, with reproductions of paintings by Frida Kahlo which, when clicked-on, re-direct to the Art.com website, where such reproductions are being offered for sale;
o A page on “Books” where a link is placed on the title of the book “A Biography of Frida Kahlo”, by Hayden Herrera, which in turn redirects to the Amazon.com website; where this book is offered for sale;
o A list of links containing information about Frida Kahlo;
o A page on films about Frida Kahlo, and
o A page on “Music” related to the artist, also redirecting to Amazon.com.
On one of the pages on the website there is a disclaimer with the text mentioned in Respondent’s Response.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Procedural decision. On October 20, 2010, Mr. David S. Farber, Esq., on behalf of Complainant, submitted a “Response In Accordance with the usTLD Dispute Resolution Policy”. This submission did not comply with The Forum Supplemental Rule # 7 because it was received after the deadline for additional submissions, and without the required fee. Thus, it is within the discretion of the Panel not to admit any such noncompliant submissions.
Beside The Forum's Supplemental Rules, Complainant has not asked leave to submit an additional statement pursuant to Rules ¶ 12. Having in mind that these proceedings are to be conducted expeditiously, and that the panel decision should normally follow after a single round of submissions of the Parties, the Panel declines to consider Complainant’s late, un-requested submission, except in respect of two minor issues:
a) Who is Complainant? In its “Response” Complainant explains with some detail the origin and nature of Complainant’s corporation, and provides a copy of the notarized contract. Since this explanation corrects an obvious mistake made in the Amended Complaint, without further amending it, the Panel accepts Complainant’s explanation as to who exactly is Complainant.
b) Respondent Not in Default. After considering Complainant’s request that the Panel find Respondent is in default because it has not served Complainant with a copy of the Response, and because Complainant failed to show that Respondent’s merely formal omission caused some prejudice to Complainant (Complainant obtained a complimentary copy of the Response from The Forum), under its general powers pursuant to Rules ¶ 10(d) the Panel denies Complainant’s request. See IJSS Inc. v. Fallon O’Brien, FA 1181243 (Nat. Arb. Forum Jun. 11, 2008) (“[U]nder its general powers pursuant to Rules ¶ 10(d), the Panel is not inclined to draw any inferences against Respondent—who is appearing pro se—simply because he failed to comply with some formal requirements”.)
It is not necessary to request or consider further comments or statements from the Parties.
To succeed under the first requirement of the Policy, a Complainant must prove, first, that Complainant has rights in a trademark or service mark, and second, that the disputed domain name is identical or confusingly similar to such mark.
According to the Amended Complaint, Complainant in this administrative proceeding is Frida Kahlo Corporation, a Florida corporation located at 1111 Kane Concourse, Suite 410, Bal Harbour, Florida 33154. Given the explanation and evidence submitted in Complainant’s additional “Response”, which the Panel accepts, it appears that a clerical mistake was made in the Amended Complaint, Complainant is in fact Frida Kahlo Corporation, a Panama corporation. Panel’s emphasis.
As seen at the section on “Findings” above, Complainant owns, by assignment, numerous Mexican and US trademark registrations for FRIDA KAHLO, thus proving that it has rights in said mark.
Clearly, the disputed domain name is identical to Complainant’s FRIDA KAHLO mark. The lack of a space between the names “Frida” and “Kahlo” and the addition of the generic top level domain “.com” do not distinguish one identifier from the other.
Accordingly, the first requirement of the Policy is met.
Given the Panel finding on bad faith below, it is unnecessary for the Panel to address the issue of rights and legitimate interests. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.)
The disputed domain name was registered on May 30, 1998, years before Complainant or its predecessor in title sought any of Complainant’s trademark registrations for the FRIDA KAHLO mark.
The earliest application for the FRIDA KAHLO mark in Mexico was filed on behalf of Isolda Pinedo Kahlo – Complainant’s predecessor in title - over four years after the registration of the disputed domain name, on July 2, 2002 (for Reg. Nos. 785991, 785992, 785493, 785994 and 786583). In each of the application forms corresponding to the Mexican trademarks for FRIDA KAHLO, the field stating the date of first use in commerce is empty, and the text “no se ha usado” (Spanish for “[This mark] has not been used”) is marked. This also applies to Mexican Reg. Nos. 786583, 882333 and 1017505, cited in three of the U.S. trademark registrations. See above.
Also, in each of the U.S. trademark registrations for FRIDA KAHLO held by Complainant, either there is no indication of first use prior to July 13, 2004, or there is no indication of first use at all, or, as just seen, there is a reference to Mexican trademarks that have no indication of first use whatsoever.
Absent a registered trademark, a complainant can still submit evidence that it owns a common law mark, as the ICANN Policy does not distinguish between registered and unregistered marks. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (acknowledging that Policy ¶ 4(a)(i) refers merely to a “trademark or service mark,” without expressly limiting itself to a registered trademark or service mark, and further recognizing that the WIPO Final Report of April 1999, from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names, and further concluding that the Policy is applicable to unregistered trademarks and service marks); see also Hankison Int’l v. Hankisoninternational.com, FA 94393 (Nat. Arb. Forum May 3, 2000) (considering that trademark rights are acquired and maintained by actual use of the mark in commerce and that unregistered marks also are protected under common law principles, and finding that the domain name in issue was nearly identical to Complainant’s name and long-used unregistered mark).
The standards allowing the panel to conclude that a complainant has common law rights to a mark include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Moreover, Complainant fails to satisfy any of such standards in respect of a common law FRIDA KAHLO existing at the time of the registration of the disputed domain name (May 1998), and to contend and evidence that it had rights in such common law mark. In any case, at least according to her trademark applications in Mexico, it appears that Ms. Pinedo Kahlo had not used the FRIDA KAHLO mark before July 2, 2002.
Also, Complainant is a Panama corporation formed on December 14, 2004, that is six years after the registration of the disputed domain name. This means that Complainant’s contention in the Amended Complain that Complainant and its licensees “have spent considerable time and money promoting the FRIDA KAHLO marks throughout the world” necessarily must refer to a time after Complainant came into legal existence (December 2004) and in any case well after Respondent had registered the disputed domain name.
Since Complainant failed to present any evidence of a FRIDA KAHLO mark, registered or not, at the time of the registration of the domain name in dispute (May 1998), or of any products or services offered by then by Complainant or its predecessor in interest under such mark, that could possibly be known of by Respondent, the Panel concludes that the requisite of registration in bad faith is not met. See Youphoria Co., LLC v. Trujillo, FA 1045139 (Nat. Arb. Forum Oct.10, 2007) (“Respondent’s registration of the <youphoria.com> domain name predates Complainant’s alleged rights to the YOUPHORIA mark by more that five years. Therefore, the Panel concludes that Respondent could not have registered the <youphoria.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding no bad faith registration and use where the respondent registered the disputed domain name before the complainant began using the mark); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).”).
DECISION
Because Complainant failed to establish the bad faith element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi, Panelist
Dated: October 25, 2010
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