The Andy Warhol Foundation for the Visual Arts, Inc. v. Ian Kohout / newPOPart Gallery
Claim Number: FA2303002036304
Complainant is The Andy Warhol Foundation for the Visual Arts, Inc. (“Complainant”), represented by Jess M. Collen of Rothwell, Figg, Ernst & Manbeck P.C., Washington D.C., USA. Respondent is Ian Kohout / newPOPart Gallery (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warhollithograph.com>, registered with Tucows Domains Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 17, 2023; Forum received payment on March 17, 2023.
On March 20, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <warhollithograph.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2023 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@warhollithograph.com. Also on March 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
On April 26, 2023, the Panel issued a Procedural Order, requesting the parties to provide additional information, see below.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it 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. To date, Complainant has given more than $250 million in cash grants to more than 1,000 arts organizations in 49 states and abroad and has donated 52,786 works of art to 322 institutions worldwide. Complainant encourages a deeper understanding and appreciation of Warhol’s artistic and cultural influence by providing access to Warhol’s work and encouraging new Warhol scholarships. Complainant’s business name and its WARHOL mark are recognized and respected names in the industry in which Complainant does business. Complainant has rights in the WARHOL mark through its registration in with the United States in 2020.
At the time the instant Complaint was filed, the resolving website displayed the following disclaimer, which was not previously displayed: “We are in no way affiliated with the Andy Warhol Foundation for the Visual Arts.”
Complainant refers to the case The Andy Warhol Foundation for the Visual Arts, Inc. v. Ian kohout / Jan kohout, FA2303002035054 (Forum Apr. 14, 2023); in that case the resolving website was redirected to a commercial shop that sells antiques and artwork of various artists; the disputed domain name was transferred.
Complainant alleges that the disputed domain name is virtually identical or confusingly similar to its WARHOL mark as it includes the mark in its entirety and merely adds the generic/descriptive term “lithograph”, which related to Complainant’s activities.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s WARHOL marks and is not commonly known by the disputed domain name., Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent confuses and diverts users to a website that passes off as Complainant to purport to sell counterfeit or unauthorized versions of Complainant’s goods.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent lost a previous UDRP proceeding involving Complainant. Respondent is falsely affiliating themselves with Complainant to trade off of Complainant’s goodwill in the WARHOL marks. Respondent is selling unauthorized or counterfeit goods. Respondent registered the disputed domain name with a privacy service and constructive and/or actual knowledge of Complainant’s rights in its WARHOL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant
In its reply to the Panel’s Procedural Order, Complainant states that Respondent is not using the resolving the website legally to resell authentic Andy Warhol lithographs. Complainant searched in every online directory as well as on the Internet. The search revealed no entity named “Warhol Gallery” or “NewPOPart” that is domiciled in Switzerland. Respondent’s homepage falsely claims that the artwork offered for sale on its website has been authenticated by its “editor”, Carnegie Museum. The Carnegie Museum of Art does not authenticate Andy Warhol works on Complainant’s behalf, nor, to its knowledge, on behalf of any third-parties.
Complainant again refers to the UDRP Proceeding for the domain name <warhol.gallery>, which was transferred to Complainant.
Complainant states that Respondent registered a new confusingly similar domain name, <warholart.gallery> and activated a nearly identical website to the resolving website in the instant case. The <warholart.gallery> domain name was registered the exact same day as the <warhol.gallery> UDRP decision issued in favor of Complainant. The <warholart.gallery> website is a clear attempt by Respondent to circumvent the Forum’s decision and continue the same fraudulent and infringing activities under a nearly identical domain name.
Respondent
Respondent did not reply to the Panel’s Procedural Order. The Forum informed the Panel that it had made several attempts at contacting Respondent using the email address as provided by the Registrar, and the messages were returned as undeliverable.
Complainant owns the mark WARHOL and uses to promote the work of well-known artist Andy Warhol.
Complainant’s rights in its mark date back to 2020.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and purports to sell authenticated Andy Warhol artwork; however, that does not appear to be the case. The resolving website alleges that Respondent is a Swiss business; however, that does not appear to be the case.
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”).
The disputed domain name incorporates Complainant’s WARHOL mark in its entirety and merely adds the generic/descriptive term “lithograph” and the “.com” generic top-level domain (“gTLD”). When a disputed domain name wholly incorporates another’s mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Thus the Panel finds that the <warhollithograph.com> domain name is confusingly similar to Complainant’s WARHOL mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its WARHOL mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information for the disputed domain name lists the registrant as “Ian Kohout” with the organization “newPOPart Gallery”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Given that the resolving website states: “We are located in Europe (Switzerland)”; and that the address for Respondent provided in the WHOIS is: “Ian Kohout, newPOPart Gallery, Abendweg 3, Zurich, Switzerland”, the Panel requested, in its Procedural Order, that Respondent provide its official Swiss company number, and link to the Swiss Register of Commerce entry for its company.
Respondent did not reply to this request. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate.
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
Given that Respondent did not provide the information requested by the Panel, the Panel has consulted the central register of Swiss companies[i]. The Panel could not find any entry corresponding to the name “newPOPartGallery”.
In its Additional Submission, Complainant states that it too conducted a search and was unable to find any Swiss registration for “NewPOPart”.
In light of the above, and Respondent’s failure to provide the requested information, the Panel finds that Respondent is not operating a legitimate Swiss business.
Complainant alleges that Respondent is advertising and selling Complainant’s Andy Warhol art without authorization or selling counterfeit goods. The resolving website states that the offered artwork has been authenticated by Carnegie Museum; Complainant states that Carnegie Museum does not authenticate the artwork in question.
The Panel finds, on the balance of the evidence before it, that Respondent is offering for sale counterfeit or unauthorized goods. A respondent’s use of a disputed domain name to offer for sale counterfeit or unauthorized goods has been found not to satisfy Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant cites The Andy Warhol Foundation for the Visual Arts, Inc. v. Ian kohout / Jan kohout, FA2303002035054 (Forum Apr. 14, 2023), involving the domain name <warhol.gallery>. However, that case must be distinguished from the instant case. In the cited case the resolving website was redirected to a commercial shop that sells antiques and artwork of various artists, whereas in the instant case the resolving website purports to see only artwork related to Complainant. Furthermore, having registered and used two domain names (those of the cited case and the instant case) in bad faith does not establish a pattern of bad faith registration and use.
For the reasons given below, the Panel does not need to consider the other domain name cited by Complainant, <warholart.gallery>.
Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website offers to sell Andy Warhol artwork. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
In addition, as already noted, Respondent is selling unauthorized goods or counterfeit goods. Offering a complainant’s products without authorization or counterfeit goods may indicate bad faith pursuant to Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <warhollithograph.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 8, 2023
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