1451 International Ltd. and Second
Renaissance, LLC v. Steven Levine
c/o DomainSystems, Inc.
Claim Number: FA0510000583774
PARTIES
Complainants are 1451
International Ltd. and Second Renaissance, LLC (collectively,
“Complainants”), represented by Lawrence
V. Molnar, 10500 Crosspoint
Boulevard, Indianapolis, IN 46256.
Respondent is Steven Levine c/o DomainSystems, Inc. (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vaticanlibrary.com>,
registered with Moniker Online Services,
Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
The Honourable Neil Anthony Brown QC, Honorable Daniel B. Banks, Jr.,
(Ret.) and G.Gervaise Davis, III as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on October 21, 2005; the National Arbitration Forum received a hard copy of the
Complaint on October 21, 2005.
On October 31, 2005, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <vaticanlibrary.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 November 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 28, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@vaticanlibrary.com by
e-mail.
A timely Response was received and determined to be complete on
November 28, 2005.
A timely supplementary submission on behalf of Complainants, entitled
Supplemental Information, was received on December 5, 2005 and was determined
to be in compliance with Supplemental Rule 7.
A timely supplementary submission on behalf of Respondent, entitled
Response to Complainants’ Supplemental, was received on December 9, 2005 and
was determined to be in compliance with Supplemental Rule 7.
On December 8, 2005, pursuant to Complainants’
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC,
Honorable Daniel B. Banks, Jr., (Ret.) and G.Gervaise Davis, III as Panelists.
RELIEF SOUGHT
Complainants request that the domain name be transferred from
Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants
Complainants contend that the domain name <vaticanlibrary.com>
should no longer be registered with Respondent but that it should be
transferred to Complainants.
It contends that this should be done because,
within the meaning of Policy ¶ 4, the domain name is identical or confusingly
similar to Complainants’ registered and common law trademarks, that Respondent
has no rights or legitimate interests in the domain name and that the domain
name has been registered and subsequently used in bad faith. Complainants
maintain that it can prove all three of these requirements and that the
appropriate remedy is to transfer the domain name to Complainants.
In support of their case on the first of these
three elements, Complainants maintain that the domain name <vaticanlibrary.com>
is “identical or confusingly similar” to an unregistered trademark, THE
VATICAN LIBRARY, in which they have an interest, namely the interest of a
trademark licensee. They point to the
similarity between the two expressions, “vaticanlibrary” in the domain name and
“The Vatican Library Collection” in their alleged trademark, and argue that
this similarity is likely to lead to confusion between the two.
The unregistered trademark is said to arise
from the status of Complainants, as licensees under a series of agreements
between themselves, on the one hand, and the Ufficio Vendito Pubblicazioni
Riproduzioni Dei Musei Vaticani, (translated as the Office of Sales of
Publications and Reproductions of the Vatican Museums of the Sovereign State of
Vatican City [“the UVPR”]). It is
argued that “the Vatican Library” has certain trademarks in the names “The
Vatican Library “ and “The Vatican Library Collection” and that Complainants,
as licensees of those trademarks in the above mentioned agreements, stand in
the shoes of the UVPR.
Complainants also argue that they have
unregistered common law rights to “the name and works of the Vatican Library”
by virtue of their, Complainants’, “ activities.” These activities are broadly the promotion and protection of the
name and images of the Vatican Library, putting the public on notice of that
fact through marketing and promotion over 10 years and informing the public
that they, Complainants, “claim ownership to the intellectual property rights
relating to the name and works of the Vatican Library.”
Complainants also contend that the domain name
<vaticanlibrary.com> is “identical or confusingly similar” to the
trademark No 002793529 that was registered in their names with the Office for
Harmonization in the Internal Market of the European Community on December 2,
2004 (“the European Trademark”). The
European Trademark consists of the symbol known as The Keys of St Peter made up
of crossed keys and three crowns, the whole surrounded by the words “The
Vatican Library Collection” and two other crowns.[1]
Complainants maintain that there is a
similarity between the expression “vaticanlibrary.com” and the expression “The
Vatican Library Collection” and that there is a likelihood of confusion between
them.
To establish the second element of Policy ¶
4(a), Complainants contend that it is a matter of fact within the meaning of
Policy ¶ 4(c) that Respondent has no rights or interests in the domain name,
because it has not been authorized by Complainants to use the trademark THE VATICAN
LIBRARY, it has not used the name for a bona
fide offering of goods or services, is not commonly known by that name and
is not making legitimate noncommercial or fair use of the domain name <vaticanlibrary.com>,
without intent for commercial gain or without intent to misleadingly divert
consumers or to tarnish the mark.
Finally, Complainants allege that the domain
name was registered and is being used in bad faith, relying on each and every
sub-paragraph of Policy ¶ 4(b). They
contend that this is so because Respondent registered the name to prevent
Complainants from utilizing the most obvious and common reference to the
Vatican Library, its name, in a corresponding domain name, that it did so to
disrupt the business “and promotional interests” of Complainants and that it
intentionally attracted internet users to Respondent’s website by creating
confusion between it and “The Vatican Library.” The Panel notes that beyond these allegations of bad faith,
Complainant submits no evidence to support its contentions on this issue.
B. Respondent
Respondent takes issue with Complainants on each and every aspect of
the Policy and contends that they have not brought themselves within any of the
provisions of Policy ¶4(a).
Specifically, it draws attention to the basis on which Complainants
claim to have trademark rights sufficient to make out their standing under
Policy ¶4(a)(i). This basis, the
agreement, has not been exhibited to the Complaint and accordingly has not been
proved. Moreover, until it is proved, it
is impossible to say what type of license it is and what rights it
confers. In the absence of such proof,
Respondent contends, Complainants have not shown that they have an interest in
a trademark or service mark sufficient to meet the requirements of Policy ¶
4(a)(i) and the Complaint should be dismissed.
At best, Respondent continues, the master license contended for by
Complainants would appear to be a right to reproduce associated with the
Vatican Library and not an enforcement right.
Moreover, the party said by Complainants to be charged with enforcement
of its rights, CMG Worldwide, Inc., has in other reported UDRP cases failed to
produce documentary evidence that it has trademark rights that it has either
acquired or been licensed to enforce, just as it has failed to do in the
present case. The lack of this evidence
is particularly important as there is a substantial difference between on the
one hand the description given by Complainants of the Vatican Library and the
entirely different activities of Complainants, reinforcing the notion that as
Complainants are not the Vatican Library they must fail if they cannot prove
they are licensed by the Vatican Library to exercise trademark rights.
Respondent
also relies on several applications by Complainants to the United States Patent
and Trademark Office (USPTO) to register the trademark THE VATICAN LIBRARY
COLLECTION. Not only were these
applications made after the domain name was registered in February 1999, but
they were rejected by the USPTO and abandoned by Complainants. Furthermore, the applications were based on
the figurative trademark, albeit one for Vatican Library Collection and not the
Vatican Library, with which Complainants were claiming to be associated. Complainants have never been associated with
the words “Vatican Library.”
To get to the real reason for the rejection of their applications,
Respondent says, it invites Complainants to produce documents on their dealings
with the USPTO. Complainants, however,
refused to produce those documents.
This entitles the Panel, in the submission of Respondent, to draw
inferences contrary to the interests of Complainants.
So Complainants, it is argued, have never shown that they are the
“Vatican Library,” that they have any trademark rights in it, or that they are
a trademark licensee.
As to the European trademark, Respondent says that it is of no effect
in the present proceedings as it is entirely figurative, it was registered well
after the domain name, and was registered with respect to goods entirely
different from those envisaged by the Vatican Library; hence, the domain name
cannot be confusingly similar to the European trademark.
It should also be noted that Respondent offers to transfer the
contentious domain name to the Holy See without charge.
C. Additional Submissions
In their Supplementary Submission, Complainants again draw attention to
the fame of the Vatican Library, saying that it had therefore acquired
secondary meaning.
Complainants then exhibit three new exhibits, P, Q and R. Exhibit Q is
a redacted copy of a licensing agreement made between the UVPR and the First
Complainant dated April 5, 2000.
Exhibit R is an amendment to that agreement, was made on April 21, 2001
and is between the UVPR and both Complainants.
It purports to adjust the rights between the parties and specifically to
clarify the licensing rights of the Second Complainant conferred on it by an
agreement between it and the UVPR on May 22, 2000.
Complainants then argue that as the Vatican Library has thus given them
authority “for the commercial
exploitation of the numerous intellectual property rights in the name, image,
trademarks, good will, and collective archives of the Vatican Library” and this
gives them standing to bring the present proceedings.
They also claim that they had common law trademark rights “prior to
Respondent’s registration of the subject domain name.”
Finally on this issue they contend that Respondent’s allegations about
the class or character of goods licensed or protected are “irrelevant” in UDRP
proceedings.
Complainants then repeat that Respondent has no rights or legitimate
interest in the domain name and argue that domain name brokering and
automatically collecting words and phrases for domain names is not a legitimate
interest and is cybersquatting.
Likewise Complainants elaborate on their submission that the domain name
was registered and is being used in bad faith. They do this by emphasizing the
essentially commercial nature of Respondent’s business and argue that it is bad
faith to link “the architectural and archival marvel known . . . as the Vatican
Library” to purely money-making activities. Complainants also make the new
point that the registration was renewed by Respondent and that whenever a
renewal took place it was done in the face of the injunction in the registrar’s
agreement not to violate the rights of a third party, which Respondent has
done.
Respondent’s supplementary submission notes first that Complainants
have not replied to Respondent’s offer to transfer the domain name to the Holy
See, thus showing that Complainants, by opposing the transfer of the name to
the actual owner of the trademark they contended for, are exceeding the scope
of their license.
Turning to the substantive issues, Respondent argues that Complainants’
submission, to the effect that the VATICAN LIBRARY mark has acquired a
secondary meaning, is misconceived, as the real question is whether the common
words “Vatican” and “library” in the domain name have acquired a meaning that
associates them in trade with Complainants, which they have not.
Respondent then states that, as Complainants are successors in title to
Cortile Del Belvedere Inc., it is instructive to note that when that company
applied to register the THE VATICAN LIBRARY COLLECTION trademark, it expressly
renounced any right to use “THE VATICAN LIBRARY COLLECTION apart from the mark
as shown,” which is the figurative logo.
Complainants themselves are now therefore exceeding the claims made by
the source of their own authority. This shows that they have no standing.
Respondent also relies on the fact that Complainants declined its
invitation to reveal their dealings with USPTO leading to their previous
applications having been refused and criticizes Complainants for presenting the
redacted version of its agreement so that pages 4-11 and 13 are missing.
Respondent finally contends that on the totality of the evidence the Panel is left with the term “Vatican Library” having its primary meaning, a meaning that has no association with the origin of Complainants’ goods and services.
FINDINGS
Respondent registered the domain name <vaticanlibrary.com>
on February 1, 1999 and it maintains it did this as part of a semi-automated
process to collect domain names containing ordinary words and phrases useful as
internet search keywords.
Complainants have for some years been engaged
in the business of licensing and publishing works of art and other artistic
creations. As part of this business, they entered into several agreements which
in substance were:
(a) a Publishing licensing agreement dated April
5, 2000 between the Ufficio Vendita Pubblicaziuoni Riproduzioni Dei Musei
Vaticani (“UVPR”) and the First Complainant;
(b) an Amendment to License Agreements dated
April 21, 2000 between UVPR and both Complainants;
(c) several specific licenses between UVPR and
the First Complainant, all dated April 5, 2000;
(d) an “Amended and Restated Administrative
Agreement” dated August 15, 2001 between the First Complainant and the Second
Complainant; and
(e) an Agreement dated May 22, 2000 between UVPR
and the Second Complainant .
The purpose of entering into these license
agreements was to enable Complainants to use the name of the Vatican Library
Collection in its merchandising efforts and to draw on the resources
of the Vatican Library as the inspiration for the various items of
merchandise they planned to make and sell, in return for payment of royalties
to the Vatican Library.
The First Complainant made a series of
applications to the United States Patent and Trademark Office for the
registration of trademarks in the name “The Vatican Library Collection,” each
of which was abandoned. The serial
numbers, the date of filing, the mark and the date of abandonment of the applications
are as follows:
Serial No. 75/749, 306 ITU July 9, 1999 “THE VATICAN LIBRARY COLLECTION” abandoned July 18, 2000
Serial No. 75/746, 877 ITU July 9, 1999 “THE VATICAN COLLECTION” abandoned August 16, 2000
Serial No. 75/742, 013 ITU July 1, 1999 “THE VATICAN LIBRARY COLLECTION” - FIGURATIVE, abandoned April 26, 2000
Serial No. 75/741059 ITU July 1, 1999 “THE VATICAN COLLECTION” - FIGURATIVE abandoned April 26, 2000.
Complainants applied for and were
granted a trademark No 002793529 that was registered in their names with the Office for
Harmonization in the Internal Market of the European Community on December 2,
2004 (“the European Trademark”). The European Trademark is a figurative
trademark and consists of the symbol known as “The Keys of St. Peter,” which is
made up of crossed keys and three crowns, the whole surrounded by the words
“The Vatican Library Collection” and two other crowns.
As a result of the foregoing facts,
Complainants contend that they have unregistered common law trademark rights in
the names and marks, THE VATICAN LIBRARY and The
Vatican Library Collection, and in a registered trademark in the latter
words, namely the European trademark registration of the stylized logo with the
crown and keys and the words.
However, the Panel finds that Complainants
have not established any rights in the word
marks, which they claim are
their unregistered trademarks, and that the registered European logo does not
create trademark rights in Complainants in the mere words “The Vatican Library
Collection” and certainly not in the generic and descriptive words “The Vatican
Library.” The European mark is merely a
logo and not a word mark. As we discuss below in some detail, the Panel
feels this is highly significant.
Complainants contend that the domain name is identical to or confusingly similar to the unregistered and the registered trademarks. The Panel finds against Complainants on both of those contentions.
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.”
Policy ¶ 4(a) 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.
Complainants have contended that the contentious domain name is identical or confusingly similar to two trademarks in which they have rights. The first of those trademarks is The Vatican Library, a trademark said to be owned by “The Vatican Library.” When stating “by The Vatican Library” in the latter use of that expression, Complainants mean the UVPR. Complainants say that they are a licensee of the trademark from the UVPR. Complainants’ second claimed trademark, as will later be seen, is The Vatican Library Collection.
The First Trademark: The Vatican Library
Complainants say that their rights in this trademark come, first, from the agreements that they have entered into with the UVPR. In other words, Complainants argue that the agreements appoint them as the trademark licensees of the UVPR. If that view is correct, Complainants will have established that there is a trademark in which they have rights.
However, the Panel rejects Complainants’ argument as, first, the agreements relied on do not establish that the UVPR itself has a trademark in The Vatican Library that it could have licensed to Complainants. It may well be, of course, that it does have such a trademark, but there is no indication in the agreements or anywhere else in the evidence that it has one or that it wishes to assert that it does.
Indeed, this is probably not too early in the discussion to say that as Complainants are clearly not The Vatican Library, their capacity to bring these proceedings at all must be in doubt, at least to the extent that the Panel is not prepared to say that, on the balance of probabilities, they have demonstrated sufficient standing to do so. As Complainants are not the Vatican Library, the Panel has looked for evidence that the UVPR, the Vatican or the Vatican Library has given Complainants the right to claim the status of trademark licensees or trademark owners or even to seek the recovery of the domain name or alternatively for evidence that they support Complainants in these proceedings, but can find no such evidence.
In this regard, the fact that Respondent is prepared to transfer the domain name to the Vatican without charge and that Complainants have refused to accept that offer is significant. It means that Complainants are refusing to have the domain name transferred to the owner of the trademark on which they base their case. Given that the purpose of the Policy and of UDRP proceedings is to harmonize the ownership of trademarks and domain names, the refusal of Complainants to engage in an open offer to bring that result about, makes the claims of Complainants somewhat dubious.
But, in any event, even if Complainants do have standing, and if the UVPR does have a trademark in The Vatican Library, the agreements in no way confer on either of Complainants the status of a trademark licensee. That is so because on any interpretation of the agreements, they do not contain any words that mean that the UVPR has a trademark that it is licensing anyone to use or, a fortiori, that it is purporting to confer such a license on Complainants.
But there is a more fatal objection to the argument that the agreements confer on Complainants the rights of a trademark licensee; that is that Complainants have put the Panel in the position where it is unable to discern what operation the agreements have and whether they create a trademark license or anything else. Complainants have done this by not producing the whole of one of the agreements at issue and by not producing any part at all of the other of those agreements.
The first of the agreements is Complainants’ Exhibit Q. That exhibit is an exhibit to Complainants’ Additional Submission, one of the two supplemental filings in this case, both of which have been useful and have influenced the deliberations of the Panel because they have brought the full facts to its notice.
In the Complaint, Complainants asserted that they had, amongst other extensive entitlements, rights in the trademark presently contended for and that they had acquired those rights by virtue of being a “master” licensee of the trademark. In so far as there was any evidence in the Complaint as to the origin of that status of “master” licensee, it was at that time said to be Exhibit N.
However, Exhibit N is not a license of any sort, let alone a “master” license or a trademark license. Its entire effect is not known, as part of it has been blacked out, but in substance it is an agreement made on April 15, 2001 between the two Complainants in an attempt to resolve “overlaps and disputes” that had apparently broken out between them as to which products each of the Complainants had the right to manufacture. Neither the UVPR nor any other entity on behalf of the Vatican Library is a party to this agreement, and, accordingly, it could not have conferred on either of the Complainants any trademark or other rights possessed by the Vatican Library. All that it could do was what it actually did, which was to divide and adjust various competing interests between the two Complainants. Thus, for example, “Party Goods,” although not what one would expect to find in the Vatican Library, were allocated to the First Complainant, unless they could be described as “Religious themed and fundraising,” in which case they were allocated to the Second Complainant. “Toys, general & non-educational” went to the First Complainant, but “toys –educational” went to the Second Complainant.
Complainants can thus derive no authority with respect to trademark rights in “The Vatican Library” from an agreement to which neither the Vatican Library or any entity on its behalf is a party.
No other agreement was relied on in the Complaint and it was no doubt for this reason that Respondent in its Response challenged Complainants to produce the agreement that conferred trademark rights on Complainants.
Accordingly, in its supplementary filing, Complainants produced Exhibit Q. That is an agreement dated April 5, 2000 between one of the Complainants only, namely the First Complainant, and the UVPR. However, Complainants have produced only a few pages of the agreement without any explanation as to why this has been done and without any explanation as to the contents of the remainder. It should be emphasized here that Complainants were put on notice in the Response that Respondent wanted to see the agreement and clearly the Panel needed to see it. The document was and is essential to determine what rights, if any, had been conferred on Complainants.
The document from which the redacted version has been extracted apparently has 15 numbered pages, but only 5 pages—about a third of it—have been disclosed. The obvious question is, what is in the missing pages, pages 4-11 and 13?
The agreement was not merely peripheral to the case but vital to it. It is in fact the most important document in the entire case and it has to all intents and purposes been withheld from the Panel without explanation.
The fact that the agreement has not been disclosed in full makes it impossible for the Panel to conclude what rights the UVPR has given Complainants. At the very least it leaves the Panel in the position where it cannot possibly conclude on the balance of probabilities that the agreement gives Complainants trademark rights to “The Vatican Library.”
From the little of the agreement that has been produced, the Panel concludes that the agreement is in fact not a trademark license at all, but a licensing agreement that can more properly be described as a merchandising agreement. Pursuant to the agreement, the UVPR appoints the First Complainant as its licensee, although not a “master” licensee. It is true that the First Complainant is given an exclusive right under the agreement to produce something, but the remainder of the principal provision of the agreement is so badly drafted that it is impossible to determine what it is that Complainant is being permitted to produce. Whatever it is that Complainant may produce may be “based on or copies of actual books in the Vatican Library (<Works>)” but it apparently is not a right to reproduce books that are in the Library. That is so because the same clause adds that:
(4) The foregoing grant does not include the right to republish, in its entirety, an exact copy or replica of a book or manuscript within the Collection; . . . .
Again, a further provision of the agreement entitles Complainant to publish, via electronic publishing, books that Complainant “develops and publishes in book form, as distinguished from existing books and other scholarly works now in The Vatican Library Collection,” which, by necessary implication, means that existing books and scholarly works in the Vatican Library are off limits so far as this agreement is concerned.
It is clear therefore that, at best, the license is a license to produce various items and possibly to reproduce various other items, but not books, in the Vatican Library. As will be seen later, it may well be that the intention of all parties was that Complainants were being licensed to manufacture things that would be, as Complainants asserted in their literature, “inspired” by works of art in the Vatican Library and “re-imagine(d).” It is not, however, for the Panel to speculate on the full intent of the parties, for all it can do is to make its own interpretation of what is put before it; on this occasion, what is put before it in the form of the agreement does not confer a trademark license.
It is therefore the conclusion of the Panel on this issue that even if the agreement has any probative value, it is not an agreement that confers any of the rights of a trademark licensee and in particular it does not provide for or permit the enforcement by Complainants of any trademark rights.
Complainants also produced, with their supplemental filing, another agreement which is Exhibit R. That agreement, signed on April 21, 2001 is between UVPR and, on this occasion, both of Complainants. This agreement also attempts to resolve disputes that had apparently arisen concerning the operation of the licensing arrangements. For present purposes its importance is that it refers to the rights that the UVPR had granted to the Second Complainant. It will be recalled that Exhibit Q dealt only with the First Complainant and Exhibit R now deals with the Second Complainant. In referring to the rights of the Second Complainant, Exhibit R provides that it amends an agreement made on May 22, 2000 between UVPR and the Second Complainant. This is being done to adjust the allocation of rights between the two Complainants by distributing various products between them.
One of the annexures to that agreement is the agreement between the UVPR and the Second Complainant, the agreement dated May 22, 2000. However, the agreement has not been produced and no evidence has ever been given as to its contents. More importantly, there is no other evidence showing what rights were conferred by the UVPR on the Second Complainant. The Panel is therefore unable to say that the UVPR has conferred the rights of a trademark licensee on the Second Complainant as there is simply no evidence to that effect.
On this ground alone, the Second Complainant would fail on the first issue in this matter as it has not shown that it has any trademark rights, as a licensee or in any other capacity, in the first trademark contended for, “The Vatican Library.”
But both Complainants fail on this issue for they have not established on the balance of probabilities or at all that the agreement or agreements they rely on confer on them, or either of them, any rights in the trademark “The Vatican Library.”
Not only has the agreement between Second Renaissance and UVPR not been produced, but five other significant documents-and possible more significant than those already referred to-have also not been produced. They are the actual licenses between the First Complainant and the UVPR under which Complainants are permitted to reproduce various items of merchandise. Thus, there are the Publication, Print, Apparel, Greeting Card and Bronze Licenses, all of which were made on April 5, 2000. These licenses may well explain the true nature of the relationship between Complainants and UVPR and perhaps even more so that the agreements already referred to, which are themselves only general in nature.
But those licenses have not been produced, so here again the Panel is left in the dark and has not been provided with material which is in the possession of Complainants.
For all of these reasons, the agreements relied on by Complainants do not establish that Complainants have an interest as a licensee in a trademark in “The Vatican Library.”
Have the “activities” of Complainants established the unregistered The Vatican Library
trademark?
The second means by which Complainants argue that they have unregistered common law trademark rights in the trademark The Vatican Library is by virtue of their “activities.” On this occasion, however, Complainants maintain that they actually own the trademark. It will be recalled that what was in effect Complainants’ first argument was that they are licensees of a trademark that is owned, not by them, but by the UVPR and that they, Complainants are “master” licensees of that trademark.
On this occasion however, their argument appears to be that they are the actual owners of the trademark. At least that is the only meaning that the Panel can deduce from the submission that “Complainants claim ownership to the intellectual property rights relating to the name and works of the Vatican Library.” It will also be seen that there is a fundamental conflict between these two propositions, that Complainants are licensees of a trademark that they actually own and the complementary proposition that the UVPR conferred on them a license to a trademark that it did not own, thus casting immediate doubt over whether either proposition is correct.
Nevertheless the Panel will consider whether there is any evidence to support Complainants’ assertion that they independently owns the trademark The Vatican Library as the result of their activities.
Those activities are said to be broadly the public promotion, marketing and protection of the name and images of the Vatican Library for over 10 years.
Clearly, if these activities were proven to be true, Complainants would have gone a long way towards making out their case. That is so because, as it was put in eGalaxy Multimedia Inc v. TI, FA 101823 (Nat. Arb. Forum, Dec. 23, 2000):
The Policy protects holders of common law trademarks as well as holders of registered trademarks: see, for example, Cedar Trade Associates, Inc., v. Gregg Ricks (NAF Case No. 93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (WIPO Case No. D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (WIPO Case No. D2000-0131) and Passion Group Inc. v. Usearch, Inc. (eResolution Case No. AF-0250).
However, such a question is to be determined by the evidence. UDRP proceedings are not subject to the stringent tests of evidence as are court proceedings. But even within those more limited parameters and particularly in a case such as the present, where the proceedings are hotly defended, the Panel looks for some persuasive material to see if the claim has been made out.
What evidence, then, will a Panel expect to find before it is able to conclude that the evidence establishes the existence of an unregistered trademark?
A convenient answer has been given to this question in a recent UDRP decision:
UK
Betting PLC v. Oldfield, D2005-0637 (WIPO, August 31, 2005) where the panelist
observed the following:
Unregistered trade mark rights are rights to
stop unauthorized third parties using a name or mark which is likely to lead to
deception. In other words, they are common law rights in passing off.
To succeed in a passing off action one has to
prove (inter alia) a reputation and
goodwill in respect of the name or mark in question. Descriptive names are
capable of acquiring distinctiveness (e.g. BRITISH AIRWAYS and BRITISH PETROLEUM),
but the more descriptive the name, the more by way of evidence that a court
will require to establish reputation and goodwill; moreover, the more
descriptive the name, the narrower the ambit of protection that a court will
afford to the name.
Accordingly, to demonstrate a reputation and goodwill
in respect of a name as descriptive as “UK BETTING”, the court will require
details of trading such as length of trading under the name, volume of sales
under the name, advertising expenditure in respect of the name, independent
evidence from traders, customers, etc. . . . the relevant information can be
provided in short form, but the Panel still needs to be satisfied that the
relevant reputation and goodwill subsists in respect of the name or mark.”
As another expression of what must be shown,
see the very recent decision in Ticket Specialist Inc. v. hubshift, FA. 575616 (Nat. Arb. Forum, Dec. 5, 2005)
where the three panelists said:
to succeed in a Complaint under the Policy in
relation to an unregistered mark, it is necessary for Complainant to prove that
it has, through use, acquired secondary meaning, i.e. a reputation such that
members of the public associate those goods or services solely with Complainant
or its licensees. British Heart Foundation v. Meyer, AF-0957
(eResolution Aug. 22, 2001).
In the present case, the Panel must conclude that the evidence falls far short of what could be reasonably expected, and the Panel concludes that Complainants have not made out a case that their “activities” show that they have acquired unregistered common law trademark rights in the Vatican Library or in, as Complainants express it, “the name and images of the Vatican Library.”
Applying in turn the criteria listed by the panelist in UK Betting, Complainants have never traded under the name “The Vatican Library” but have always traded under their own names which are universally branded on all of their promotional material; they have no sales under the name “The Vatican Library”; they do not advertise to promote that name, but rather the name “The Vatican Library Collection,” which means something entirely different, and there is no independent evidence from traders or customers. These omissions are all the more apparent as Complainants are not the Vatican Library and the Vatican Library itself has not lent its support to Complainants’ position in these proceedings.
Equally importantly, it must be understood that in arguing in this case for the recognition of unregistered common law trademark rights there is a heavy burden of proof on Complainants. That is so because the trademark they are contending for and contending is their own consists of plain words on which Complainants are seeking to impose a special meaning. One of the words, “library,” is clearly generic, so the presumption is that the Complainants could not establish a common law trademark over it. The other word, “Vatican,” has a particular and accepted meaning, namely the sovereign state of that name. As Complainants claim a trademark on the name and works of the Vatican Library, they must show that some secondary or additional cachet has been given to the words that will henceforth identify those words with Complainants. Given the concept and the known standing of the Vatican Library, and the fact that it is universally known to be owned by the Vatican, that would seem almost impossible to do.
In this regard, the observations of the three-person UDRP panel in Pet Warehouse v. Pets.Com, Inc. D2000-0105 (WIPO, April 13, 2000), which reviewed the United States law on this subject are particularly applicable. The Panel was dealing with whether the expression “Pet Warehouse” could give rise to a common law trademark:
As the Seventh Circuit observed in Mil-Mar, 75 F. 3d at 1161 and n. 15, it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage (Cf. 75 F. 3d at 1161).
The Panel does not accept Complainant’s
suggestion that "Pet Warehouse" is a suggestive mark, such that
Complainant should not be required to prove secondary meaning. No imagination
is required to associate the term with a retail establishment selling pet
supplies. …The claimed mark is descriptive, at best. In light of the Seventh
Circuit’s decision in Mil-Mar regarding the word "warehouse", the
Panel considers Complainant to shoulder a heavy burden to demonstrate that this
generic word, combined with the generic word "pet", together forms a
distinctive service mark.
In the present case, the subject of the inquiry consists of two words, one generic and the other of a specific place that makes the whole expression descriptive. To succeed, Complainants must show some occurrences that have turned that expression into one that is associated with them.
The question therefore is whether Complainants’ activities have given some distinctive or secondary meaning to the expression such that it is now associated with Complainants, instead of its ordinary meaning of a library in the Vatican. The Panel concludes that such an association has not occurred.
The reasons for the Panel’s conclusion on this issue are as follows. First, there is the overwhelmingly inherent unlikelihood that such a thing could happen without the agreement of the owners, namely the Vatican, or that the Vatican would ever agree to it. That view is reinforced by the fact that the Vatican is apparently not lending its support to this claim. Secondly, whatever Complainants’ activities may have been, they must all be tested against the agreements that they entered into with the UVPR. The Panel has already decided that none of those agreements confer trademark rights on Complainants. Thirdly, there is no evidence that either of the Complainants has engaged in their “activities” for over 10 years, and it must be said that such evidence if it existed would have been particularly easy to produce. Fourthly, the only sworn evidence of Complainants, namely the affidavits of Gerald Colapinto and Guillermo Marrero claim that their companies, the two Complainants, diligently protect their trademark interests in the Vatican Apostolic Library and, accordingly, those two gentlemen must be in a unique position to be able to give particulars of such diligent activities. Notwithstanding this, there is no evidence of any single action having been taken anywhere to protect any such trademark interests. Fifthly and, as it will be seen, this is probably the essential core of these proceedings, the voluminous evidence submitted by Complainants to show that they have been promoting the products of the Vatican Library simply do not support that proposition. They show that, in substance, what Complainants have been doing is what one would expect them to be doing, namely promoting an entirely different thing, namely The Vatican Library Collection, a new collection of their own products that is quite separate and apart from The Vatican Library, one “inspired” by the Vatican and one that has some, but essentially a tenuous, connection with the Vatican Library.
The evidence, which is contained in Exhibits C and E, shows respectively, promotional material supplied to “perspective”(sic) licensees who might want to buy from Complainants or become their agents and products that have actually been made and which have been offered for sale.
Both exhibits show a attractive series of products which are clearly the result of a lot of research and thought and that must be of considerable appeal to many people, particularly the religiously inclined. That is so because the products have considerable standing, as they carry the imprimatur of the Vatican Library Collection and they give the consumer what is no doubt a valued opportunity, as the advertisements make plain, to contribute part of the purchase price to the maintenance of the Library.
It is also clear that some of the products are inspired by works of art that are presumably in the Vatican Library. Some of them even include a reproduction of those works or a detail taken from one of them. The problem for Complainants, however, is that neither exhibit shows that Complainants have been promoting or dealing with, in any way, the works of the Vatican Library and that both exhibits show that the substance of Complainants’ business is to make new products that are not in the Vatican Library.
Exhibit C, which seeks to describe to the market the products that are available, consists essentially of the following:
(a) pictorial representations of significant historical events that have occurred since the Vatican Library was founded in 1451;
(b) illustrations of some works of art that are presumably in the Vatican Library although this is not specifically stated;
(c) a seven page illustrated catalogue of the works of a modern sculptor Lorraine Vaile, who has taken parchment images of animals that are part of the Vatican Library collection and recreated them in bronze;
(d) limited edition works by a modern painter and sculptor, Morgan Spencer;
(e) reproductions of three “etchings from the school of Raphael-all enduring favourites of the Vatican Library’s 500 – year old collection;” and
(f) the offer of “limited editions” of works of art drawn from works from famous artists “as well as interpretative works created by contemporary artists.”
It is clear therefore that some works of art in the Vatican Library are being copied and offered for sale and it is not sought to minimize in any way the significance and cultural value of such an activity. The most accurate assessment that can be made is that a new collection of works of art and other products is being made by Complainants, drawing on and sometimes using images and objects from the Vatican Library and elsewhere, including the studios of modern artists and that the new collection is named “The Vatican Library Collection.”
For present purposes the significance of this conclusion is that it does not enable Complainants to show that their promotional activities give it any trademarks rights in THE VATICAN LIBRARY mark.
The same conclusion is reached from a perusal of Exhibit E. This exhibit shows what has actually been produced under the licenses. It displays screensavers for mobile telephones and similar devices, a modern commemorative urn, T-shirts, eye wear, packaging materials and posters, several ranges of school uniforms, Christening and communion apparel and stationary products, reproductions of “fine art,” marble coasters, designer gift bags and wrappings, ball point pens, religious ornaments, soaps and candles, needlework and embroidered cushions, promotion for a book entitled “And There Shall be Signs,” which appears to be a book reproducing extracts from manuscripts and other works in the Vatican Library, and an extensive range of rosaries, jewelry and religious regalia. There is also a five page index of items in the collection consists of many examples of earrings, pins, short necklaces, long necklaces, money clips, rosaries, key fobs, bookmarks, pens, pillboxes, rosary boxes, bracelets, and a pad holder.
These items have been set out at some length to show that although the inspiration for them may come in part from the Vatican Library, the goods themselves do not.
It is clear that some art work from the Library is used, although the evidence is silent on how much of it is used and how it is reproduced. It should also be said that much of the promotional material carries the statement that a portion of the price of the items goes to the Vatican Library for its restoration. Indeed, some of the promotions use the name “The Vatican Library” and the logo of “The Vatican Library Collection” and some of the items produced seem to incorporate extracts or details from works in the Vatican Library.
Perhaps the best example of the how the Vatican Library Collection straddles the divide between promoting the contents of the Library and the manufacture of new products, is the embroidered cushions. The promotions for these items says that its products are “inspired by designs from the collection”; that is to say the initial concept is an ancient one, but the style and presentation have been modernized. This is clearly true of many of the products in the Collection, although others are clearly based entirely on modern inspirations and have nothing to do with the Vatican Library.
Putting all of this material together, the Panel’s conclusion is that what has been promoted by Complainants, although clearly legitimate and with much to commend it in enterprise and appeal, cannot be described as the works in the Vatican Library. Accordingly, it does not show any distinctive association between Complainants and the Vatican Library.
There is also no evidence that has been submitted showing, as Complainants allege in the Complaint, that they had put the public on notice that they claimed ownership to the intellectual property rights relating to the name and works of the Vatican Library. What they told the public in their promotional material collected in Exhibit C was that they had licenses with the Vatican Library that enabled them to produce various ranges of new goods, from greeting cards to scarves and clothing. This was described as “interpretation,” enabling them to “re-imagine existing works.” In so far as its promotional material claimed a right to reproduce works in the Vatican Library it was, in any event, not accurate and went beyond the terms of its license. This is so because it claimed, in the document entitled “The Vatican Library & 451 International Ltd.,” the following:
Reproduction means we can identically
reproduce any work in the library in any scale.
In fact, its license agreement expressly provided the following:
(4) The foregoing grant does not include the
right to republish, in its entirety, an exact copy or replica of a book or
manuscript within the Collection;
Moreover, its license gave it the right to publish, via electronic publishing, works that it developed and published itself, “as distinguished from existing books and other scholarly works now in The Vatican Library Collection.”
It is therefore clear that at least the substance if not the entirety of the licensing agreement conferred a license not to enforce a trademark, if there were one, in the name or the works of the Vatican Library.
Complainants have therefore not made out a case that their “activities” show that they have acquired unregistered common law trademark rights in the Vatican Library or in, as Complainants express it “the name and images of the Vatican Library.”
There is another of the “activities” of Complainant, however, that tends to suggest that Complainants have not and could never acquire a trademark in “The Vatican Library,” at least under the law of the United States and comparable countries. That activity is a series of applications made to the United States Patent and Trademarks Office (USPTO) by Complainants to register the trademark THE VATICAN LIBRARY COLLECTION. The details of those applications are as follows:
Ser. No. 75/749, 306 ITU July 9, 1999 “THE VATICAN LIBRARY COLLECTION” abandoned July 18, 2000
Ser. No. 75/746, 877 ITU July 9, 1999 “THE
VATICAN COLLECTION” abandoned August 16, 2000
Ser No. 75/742, 013 ITU July 1, 1999 “THE VATICAN LIBRARY COLLECTION” - FIGURATIVE, abandoned April 26, 2000
Ser No. 75/741059 ITU July 1, 1999 “THE VATICAN COLLECTION” - FIGURATIVE abandoned April 26, 2000.
It will be seen that each of the applications was abandoned, and Complainants have not denied the claim of Respondent in its Reply that they were abandoned because they were rejected.
No speculation is needed to conclude that the applications were rejected by the USPTO because the necessary implication in the trademark is that the source of goods in the classifications claimed was the Vatican Library. Clearly nothing was or could have been produced to justify such a claim in any real sense, for the goods are clearly not from the Vatican Library but are newly manufactured items. The conclusion from that analysis is that the USPTO in fact rejected the application which is now the basis of Complainants’ assertion, namely that it can claim a trademark based on the notion that its goods come from “The Vatican Library.”
Accordingly, Complainants have a considerable burden in proving that they have now, despite their earlier rejection, established any distinctive association between their business and the Vatican Library.
There is UDRP authority for this conclusion, namely Pet Warehouse, supra, which is not dissimilar from the present matter. In that case the Panel was concerned with whether Complainant could establish common law trademark rights in PET WAREHOUSE. In coming to its conclusion, the Panel said the following:
There are
(several) factors that argue convincingly against Complainant’s claim to the
service mark "Pet Warehouse.” First, two decisions by federal courts in
the United States have found arguably similar "warehouse"-formative
marks to be generic. Second, the U.S. PTO’s rejection of Complainant’s
application for service mark registration denies a presumption of validity to
its claim of exclusive rights in that mark. . . .
.
. . As the second major factor influencing the Panel’s decision, Respondent has
informed the Panel that Complainant’s attempt to register the service mark
"Pet Warehouse" was rejected by the U.S. PTO. As a consequence,
Complainant does not enjoy any presumption of secondary meaning for its claimed
service mark, and shoulders the burden of establishing distinctiveness,
assuming that the name is not generic (75 F. 3d at 1156). The successful
registration of a trademark or service mark is not a condition to ownership of
rights in that mark either as a matter of invoking protection against infringement,
or as a matter of pursuing a claim against abusive domain name registration.
However, under U.S. trademark law, only registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”
Complainants have not discharged the burden of proof on them.
The other significance of the USPTO applications is their bearing on
the substance of Complainants’ case in seeking to establish a common law
trademark. It claims that “the name or image of the Vatican Library has
appeared in conjunction with goods and services offered in interstate and
worldwide commerce over the past ten years without interruption.” That may be literally correct, but the Panel
is not persuaded that such activity has had anything to do with Complainants. The applications in question were made after
the domain name was registered and were abandoned in the year 2000, whereafter
there is nothing on the record to show that Complainants did anything to assert
their rights.
Finally, it calls for some explanation from parties claiming that they have a trademark in THE VATICAN LIBRARY that on the only occasions that they have actually applied for trademark registration, in the United States and in Europe, they have not applied for the name that they now assert, but for an entirely different mark, THE VATICAN LIBRARY COLLECTION.
The
second trademark: the European trademark.
Complainants also maintain that they have a
further trademark that will support a finding that the contentious domain name
is confusingly similar to trademark in which they have rights.
The trademark for the purposes of this
argument is a registered trademark. It is trademark No 002793529 that was
registered in their names with the Office for Harmonization in the Internal
Market of the European Community on December 2, 2004 (“the European
Trademark”). The European Trademark is
a figurative trademark and consists of the symbol known as “The Keys of St.
Peter,” made up of crossed keys and three crowns, the whole surrounded by the words
“The Vatican Library Collection” and two other crowns. Exhibit O to the Complaint is a copy of the
certificate of trademark registration.
Complainants have proved this trademark and it
is registered in the names of both Complainants. Complainants maintain that the domain name is identical or
confusingly similar to the European trademark.
Clearly, the domain name is not identical to
the trademark, but is it similar to it and, if so, is that similarity
confusingly so?
There are some obvious similarities between
the two expressions, for they both contain the words “ Vatican “ and
“library.” However, that is where the
similarities end. Thereafter, it is
necessary to make the comparison having regard to how the reasonable bystander
would view the domain name and the trademark. The Panel is of the opinion that
a reasonable bystander would probably not regard the domain name as confusingly
similar to the trademark because the trademark is figurative and consists of
and appears to be an entirely different representation from the domain name.
It consists of an all-embracing expression,
namely “The Vatican Library Collection,” rather than the “Vatican Library,” so
even the words are not the same.
Moreover, the words themselves are stylized, as they are set out in a
design rather than as regular script.
That layout itself tends to negate the suggestion that the regular
script of the domain name in the expression <vaticanlibrary.com>
is similar to the trademark.
The trademark also includes and is dominated by
the very prominent Keys of St Peter logo and crowns. It is true that some UDRP panelists have taken the view that in
making the comparison presently under discussion, devices, and similar
figurative depictions should be ignored so that a straight comparison can be
made between the words. Thus, the
panelist in Sweeps Vacuums &
Repair Ctr. v. Nett Corp., D2001-0031 (WIPO,
Apr. 30, 2001), said that “graphic elements . . . not being reproducible in a
domain name, need not be considered when assessing identity or confusing
similarity.” On the other hand, the
panelist in Curvon Corp. v. Lauren
Kallareou, D2001- 0565
(WIPO, July 3, 2001), said that “The Mark . . . is the
whole of the composite of design matter and word matter [that] is shown in the
registration document,” which is the same view taken by other panelists. The better view is to look at the overall
impressions or ideas created by the mark and the domain name, the approach
taken recently in Yell Ltd. v. Ultimate
Search, D2005-0091(WIPO,
Apr. 6, 2005). Applying that test, the
overall impression of the trademark is entirely different from that conveyed by
the domain name. The words are
different and the pictorial representations are such a prominent and dominating
part of the trademark that it prevents a conclusion of similarity or
confusingly similarity from being reached.
Moreover, the trademark in this case is not simply one of words together
with a device or logo, but one where the trademark is in its entirety a logo
and the words form part of the logo. When seen it that light, it is clear that
there is a substantial difference between the domain name and the trademark.
In any event, even if the domain name were
comparable in the sense required, it could not be confusingly similar to the
European trademark when the facts proven by Complainant, and the unchallenged
evidence, show that the European Trademark covers an entirely different field
of trade and commerce from the subject matter of the domain name. The domain name describes a library that is
situated in a geographic area known as The Vatican. The Vatican Library Collection has been shown to be anything but
that and is in reality a merchandising range, some of which has echoes of parts
of works in the Vatican Library and which draws its “inspiration” from them,
and most of which has only the most tangential and remote connection with
them. Some of it clearly has no
connection with the Vatican Library or its works at all.
Apart from the fields of trade and commerce
that go to constitute The Vatican Library Collection and that have been
revealed in Exhibits C and E to the Complaint and discussed at length above,
the trademark has been registered in connection with an extremely wide range
and variety of goods, most of which are not related to the Vatican Library or
indeed to any library. It is registered
for classifications encompassing clothing and tee shirts, computer software,
electronic games, confetti, crackers, wine, fruit juice, gourmet foods, ginger
beer, and caviar. The classifications
include books, but the English translation of the classifications gives “books”
at best a cameo appearance. This shows
that the intention of Complainants has been to cover a field not only wider
than that covered by the domain name, but entirely different from it. As such, it makes it impossible to contend
that the domain name is similar to the trademark when they relate substantially
to such disparate fields.
Finally, there remains the question, raised by Respondent, whether, even if the domain name were confusingly similar to the European trademark, it could be relied on to transfer the domain name to Complainants. The Policy in its terms does not negate the effect of a trademark solely because it has been registered after a domain name. But it is nevertheless difficult in such a case to show bad faith under Policy ¶ 4(a)(iii). The prevailing view is that expressed recently in Brasserie Almaza S.A.L v. Orbyt, D2004-0799 (WIPO January 13, 2005), where the panelist said the following:
The Respondent also says that it is a sine qua non to satisfying the requirements of paragraph 4(1)(a) of the Policy that Complainant’s registered trademark(s) must be in existence before the date of creation of the domain name in issue. The current approach is that this question is probably more relevant to the issues of good faith arising under paragraphs 4(1)(b) and (c) of the Policy: see Execujet Holdings Ltd. v. Air Alpha America, Inc., D2002-0669 (WIPO, October 7, 2002). In other words, although paragraph 4(1)(a) of the Policy does not specifically require Complainant’s trademark rights to be in existence before creation of the domain name, it may be difficult to see how – if it is not – a Complainant can establish that the Respondent does not have rights or legitimate interests in the prior registered domain name or how the Respondent can be shown to have registered the domain name in bad faith.
In the present case, the trademark was
registered so long after the domain name that it would be of little if any probative
value in determining the outcome of these proceedings and, in any event, the
domain name is not, for the reasons given, confusingly similar to the mark.
Complainants are also apparently making a
claim that they own a common law trademark in THE VATICAN LIBRARY
COLLECTION. For the reasons already given and
consistently with Pet Warehouse, supra, the Panel’s conclusion is that
the Complainants cannot have a trademark in a name that has previously been
rejected, if the assertion is still made, as it is presumably is, and as would
presumably still be implied from the words “The Vatican Library Collection,”
that the origin of the goods and services is the Vatican Library. A common law trademark might be made out on
different facts, but not on the facts that have been presented in these
proceedings.
Complainants have not therefore made out any of the bases on which they say that they have a trademark sufficient to support this application. For these reasons, Complainants have not made out the ground set out in Policy ¶ 4(a)(i).
As Complainants have failed to make out the first
ground, their application cannot succeed.
Accordingly, the Panel takes the view that it is neither necessary nor
desirable to make any further comment on either of the other two grounds.
DECISION
The Panel concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC,
Presiding Panelist
Honorable Daniel B.
Banks, Jr., (Ret.) G.
Gervaise Davis III
Panelist Panelist
Dated:
December 22, 2005
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