The Andy Warhol Foundation for the Visual Arts, Inc. v. Tom Hunt
Claim Number: FA2207002006230
Complainant is The Andy Warhol Foundation for the Visual Arts, Inc. (“Complainant”), represented by Jess M. Collen of Rothwell, Figg, Ernst & Manbeck P.C., District of Columbia, USA. Respondent is Tom Hunt (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andywarholfoundation.org>, registered with Register SpA.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2022. The Forum received payment on July 28, 2022.
On August 1, 2022, Register SpA confirmed by e-mail to the Forum that the <andywarholfoundation.org> domain name is registered with Register SpA and that Respondent is the current registrant of the name. Register SpA has verified that Respondent is bound by the Register SpA registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2022 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@andywarholfoundation.org. Also on August 4, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant,
The Andy Warhol Foundation for the Visual Arts, Inc., was established by famous artist
Andy Warhol in 1987 for the purpose of advancing the visual arts. Complainant
manages an innovative and flexible grants program while also preserving
Warhol’s legacy through creative and responsible licensing policies and
extensive scholarly research for ongoing catalogue raisonné projects. Complainant has rights in the
ANDY WARHOL mark based upon registrations with the United States Patent and
Trademark Office (“USPTO”). Respondent’s <andywarholfoundation.org>
is confusingly similar to
Complainant’s mark.
Respondent does not have rights or legitimate interests
in the <andywarholfoundation.org> domain name. Respondent is not
licensed or authorized to use Complainant’s ANDY WARHOL
mark and is not commonly known by the domain name. Respondent does not use the
domain name for any bona fide offering of goods or services or
legitimate noncommercial or fair use. Rather, Respondent attempts to divert
internet users. The domain name resolves to an imposter website that
reproduces the works of the artist Andy Warhol without authorization; utilizes
“lorem ipsum” placeholder text; and refers to an authorized third-party
“Mathilda Freya” on the ABOUT page as the “artist”, who is associated with
neither Andy Warhol nor Complainant.
Respondent registered the <andywarholfoundation.org> domain name in bad faith with actual notice of Complainant’s rights in the ANDY WARHOL mark and uses it in bad faith to disrupt Complainant’s business. Respondent seeks to attract users while creating a likelihood of confusion by impersonating Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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."
Paragraph 4(a) of the Policy requires that 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; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the ANDY WARHOL mark based upon registrations with the USPTO (e.g., Reg. No. 3,497,321, registered September 2, 2008). The Panel finds Respondent’s <andywarholfoundation.org> domain name to be confusingly similar to Complainant’s ANDY WARHOL mark because it includes the mark in its entirety and merely adds the generic term “foundation”, which is insufficient to distinguish the domain name from the mark. Rather, it serves to exacerbate confusion. The inconsequential generic top-level domain “.org” may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <andywarholfoundation.org> domain name was registered on September 8, 2020, many years after the registration of Complainant’s mark, which contains the famous Andy Warhol name. It resolves to a website displaying copies of Andy Warhol’s works and using “lorem ipsum” text.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <andywarholfoundation.org> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s ANDY WARHOL mark when Respondent registered the <andywarholfoundation.org> domain name and did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <andywarholfoundation.org> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 30, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page