The Museum of Modern Art v. Bryan Kepple

Claim Number: FA0106000097726



Complainant is The Museum of Modern Art, New York, NY, USA (“Complainant”) represented by Nancy Adelson, of The Museum of Modern Art.  Respondent is Bryan Kepple, Sunnyside, NY, USA (“Respondent”).



The domain names at issue are <> and <> registered with Network Solutions, Inc.



The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 21, 2001; the Forum received a hard copy of the Complaint on June 22, 2001.


On June 26, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <> and <> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 2001 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 and by e-mail.


Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.


On July 23, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.


Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.



Complainant requests that the domain names be transferred from Respondent to Complainant.



A. Complainant asserts that the <> and <> domain names are confusingly similar to Complainant's registered mark MOMA, that Respondent has no rights or legitimate interests in the <> and <> domain names and that Respondent registered and held the disputed domain names in bad faith.


B. Respondent did not file a response.



The following facts are established in the record:


1.      Complainant is the leading museum of modern art and design in the United States.

2.      Complainant's museum has national and international fame.

3.      Complainant has continuously used its MOMA trademark in connection with its operations since the late 1960s. 

4.      On September 25, 1990, Complainant obtained registration of the MOMA mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,614,788.

5.      On December 8, 2000, Complainant announced its intention to use its mark with an additional geographic descriptor MOMAQNS in connection with a new facility to be opened in Queens, NY.

6.      Also on December 8, 2000, Respondent registered the <> and <> domain names.

7.      Respondent has failed to use the <> and <> domain names in any way.



Paragraph 15(a) of 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.”


In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.


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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.


Identical to and/or Confusingly Similar

Complainant has established rights in the MOMA mark by virtue of its federal registration.  The <> and <> domain names are confusingly similar to Complainant's registered MOMA mark.  Each domain name combines the mark with the common abbreviation of a specific city but the use of such geographical identifiers does not defeat a claim of confusing similarity.  See, e.g., Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <> is confusingly similar to Complainant’s mark…"[T]he combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).


The Panel finds that Complainant has satisfied the first prong of the burden to show that the domain names in issue are identical to or confusingly similar to a mark in which the Complainant has rights. Policy ¶ 4(a)(i).


Rights to or Legitimate Interests

Complainant has also established its rights in the MOMA mark.  Respondent has not come forward to demonstrate it has any rights to or legitimate interests in the disputed domain names.  A presumption exists that a Respondent has no such rights to or legitimate interests with respect to disputed domain names when that Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).


The <> and <> domain names resolve to sites that contain the Registrar's default "under construction" page.  Complainant asserts, and Respondent fails to dispute, that the domain names are not being used in connection with a bona fide offering of goods or services as provided under Policy ¶ 4(c)(i).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).


Additionally, the Complainant is well-known and the MOMA mark is well-established and commonly known.  Complainant claims, and the record permits the inference, that Respondent is not commonly known by the <> and <> domain names. Respondent has not offered any proof to the contrary.  Policy ¶ 4(c)(ii).  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Hartford Fire Ins. Co. v., Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).


Furthermore, Complainant alleges and Respondent does not dispute, Respondent is not using the <> and <> domain names for a legitimate noncommercial or fair use. The evidence permits the inference that Respondent has the intent to misleadingly divert consumers or to tarnish the MOMA mark. See Policy ¶ 4(c)(iii).  See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).


In light of the above, the Panel finds that Complainant has well-established rights to and interests in the MOMA mark and Respondent has no such rights. Policy ¶ 4(a)(ii).


Registration and Use in Bad Faith

Respondent registered the <> and <> domain names on the same day as Complainant's announcement of its intent to open a new MOMA site in Queens, NY.  Respondent has since failed to use the disputed domain names despite its contentions to the contrary in response to Complainant's cease and desist letters.  These circumstances strongly suggest that Respondent registered the <> and <> domain names in bad faith as set forth under Policy ¶ 4(b)(i).  See Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was “most likely an excuse for camouflaging the purpose of trafficking with the domain name”).


Additionally, Respondent's opportunistic conduct in registering domain names that rely on such a well-known mark as Complainant's MOMA mark and Respondent’s subsequent failure to use the disputed domain names also is evidence of bad faith.  See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v., D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).


The Panel finds that Respondent registered the domain names in bad faith. Policy ¶ 4(a)(iii).



Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.   Accordingly, it is Ordered that the <> and <> domain names be transferred from Respondent to Complainant.



Hon. Carolyn Marks Johnson, Panelist


Dated: August 1, 2001.



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