t is not often that a respondent in a domain name dispute ardently opposes a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) – quite often respondents simply default, especially if they are a prolific cybersquatter with bigger domain name fish to fry. Even less common is a respondent who claims to bear the same name as the complainant despite that respondent’s ownership of a catalogue of nearly 200 other domain names consisting almost exclusively of proper names of recognizable individuals. But that is exactly what happened in The Estate of Edward Steichen v. Museum Artists/Edward Steichen c/o Gift Services, Inc., WIPO Case No. D2013-1439. However, the Estate of Edward Steichen (the “Estate”), represented by CDAS, prevailed before the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center in spite of – and to some degree, because of – the respondent’s own conduct.
Edward Steichen was an internationally renowned American photographer, painter, museum director, and curator. His name is synonymous with the development of photography as an art form, and he is considered one of the greatest photographers of the Twentieth Century. Edward Steichen passed away in 1973 at the age of 94, but the Estate, administered by his granddaughter Francesca Calderone-Steichen, controls the distribution of authorized goods bearing the Edward Steichen name.
In July 2013, the Estate discovered that the domain www.edwardsteichen.com had been registered in 2001 with Domain.com by a person or entity located in the Cayman Islands listed only as “Museum Artists.” The infringing website prominently featured the Edward Steichen name amidst numerous hyperlinks to photography-related websites; as the respondent would later confirm, the infringing website was no more than a pay-per-click “parking page.” The Estate therefore sought to enforce its common law trademark rights and its right of publicity in the Edward Steichen name, and to stop the respondent from enriching itself by free-riding on the Estate’s intellectual property.
The Estate filed its UDRP complaint with WIPO on August 14, 2013, and included, among other things, “Whois” reports generated by DomainTools that track the ownership of the infringing domain name, and a “Reverse Whois” report listing all the other domain names owned by the respondent. At the time the “Reverse Whois” report was generated, Museum Artists owned 173 other domain names, almost exclusively proper names, and many of which were identical to the names of famous artists and photographers. However, by the time the complaint was filed, Museum Artists had transferred the domain name to a new owner, listed as “Edward Steichen c/o Gift Services, Inc,” which necessitated the filing of an amended complaint on August 21, 2013. This new owner conspicuously listed the same Cayman Islands contact information as Museum Artists. Moreover, a new “Reverse Whois” report indicated that the new owner held 22 other domain names, all proper names, including domains bearing the names of celebrities, such as www.mattlauer.com.
The respondent, to the surprise of the Estate, opposed the complaint and stated that his name was, indeed, Edward Steichen, and that he had registered the domain name in 2013, and intended to use it as his personal website. The panel, however, held that respondent had not “submitted evidence to show that he is known by the name Edward Steichen” and thus his “submission that Edward Steichen is his personal name is untenable,” which, in part, convinced the panel that respondent did not have a legitimate interest in the disputed domain name. (Op. at 6, 7.) However, to the Estate’s continuing amazement, the respondent’s duplicitous arguments did not end there.
The respondent also conceded that the infringing web site was a pay-per-click page, but insisted that the links were related not to photography, but to products and services in various areas including employment, dating, real estate, mortgages, and home insurance. In another interesting twist, respondent included in its opposition a screen shot of a www.edwardsteichen.com that the Estate had never seen, featuring a different background and drastically different links. In a supplemental brief, the Estate drew the panel’s attention to the fact that, at the time of filing of both the initial and amended complaint, the infringing website boasted photography-related links and a black background, but as of at least September 12, 2013, the respondent had removed those links, added completely different links, and changed the background color to white. Regardless of the contents of the links and when they were changed, the panel held that respondent was not using the infringing domain name for a bona fide offering of services under the UDRP, but rather as “merely a link farm website.” (Id. at 6.)
Finally, the panel agreed with the Estate that the respondent was using the infringing domain name in bad faith. The panel held that “Museum Artists and Gift Services are in the business of registering names of famous personalities,” and that the two seemingly related parties “are involved in a systematic pursuit of obtaining and stock piling valuable domain names without regard for third party rights in these names.” (Id. at 7.) Moreover, the respondent was “primarily motivated to derive commercial gain from diverting Internet users to sponsored links from his website,” an admitted “pay-per-click parking page.” (Id.) The panel accordingly ordered that www.edwardsteichen.com be transferred to the Estate; the transfer was completed without further resistance from the respondent.
This case should serve to teach artists and celebrities, and the estates of those who have passed on, that they often will have rights in their prominent names and the value intrinsic in those names, and that it may be worthwhile to fight back against even the wiliest of cybersquatters. Conversely, this case serves as a cautionary tale to cybersquatters that parking pages like the ones that once resided at www.edwardsteichen.com are vulnerable even in the face of the most brazen claims in opposition to a UDRP complaint. If everyone with a rightful claim zealously pursued their rights to use and profit from their valuable names on the Internet, perhaps the pay-per-click “farm” page would end up a dying breed.
To review WIPO’s decision, click here.
Filed in: Legal Blog
December 18, 2013