Andy Warhol was an iconic artist of the 20th century; Warhol’s legacy remains strong through his art that has sold and continues to sell for high prices.
To use the term “Warhol Gallery” in a domain one is asking for trouble. The marks ANDY WARHOL and WARHOL are both registered trademarks.
In the case of the domain name Warhol.gallery, the Respondent in the UDRP claimed that the name is generic:
[…] “Warhol” is a common name that can be used by anyone for a gallery. Respondent does not include the first name, “Andy,” so as to minimize confusion. Moreover, within the frequently asked questions (“FAQ”) section of Respondent’s website connected with the disputed domain name, that website clearly disclaims any association with Complainant.
Midjourney art in the style of Andy Warhol
Of course, one cannot waive infringement by disassociating themselves from it via disclaimers. The sole panelist at the Forum (NAF) stated:
[…] while the WARHOL service mark was registered by Complainant on January 7, 2020, after the disputed domain was registered on April 24, 2019, the ANDY WARHOL trademark, to which the Panel found the disputed domain name to be confusingly similar, was registered on September 2, 2008, considerably before disputed domain name registration. As a result, the Panel finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.
Final decision: Transfer the domain name Warhol.gallery to the Complainant, The Andy Warhol Foundation for the Visual Arts, Inc.
The Andy Warhol Foundation for the Visual Arts, Inc. v. Ian kohout / Jan kohout
Claim Number: FA2303002035054
PARTIESComplainant 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. Respondent is Ian kohout / Jan kohout (“Respondent”), CZ.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Porkbun LLC.
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.
Dennis. A Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on March 8, 2023. The Forum received payment on March 8, 2023.
On March 8, 2023, Porkbun LLC confirmed by e-mail to the Forum that the domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC 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 9, 2023, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@warhol.gallery. Also on March 9, 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.
Respondent filed a timely Response on March 27, 2023.
On March 31, 2023, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant was founded by the artist Andy Warhol in 1987. It preserves its founder’s art work through creative and responsible licensing policies, and it manages an extensive grant program. Complainant has issued more than US$250 Million in cash grants to more than 1,000 arts organizations worldwide. Complainant has conducted its operations under both the ANDY WARHOL trademark and WARHOL service mark, both of which are registered with the United States Patent and Trademark Office (“USPTO”).
The disputed domain name, , is confusingly similar to Complainant’s ANDY WARHOL and WARHOL marks. It contains the WARHOL mark in its entirety. Moreover, the mere addition of the generic top-level domain (“gTLD”), “.gallery,” offers no relevant distinction and actually adds to confusion because it refers to a well-known method of displaying art pieces.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not authorized to use Complainant’s marks and is not affiliated with Complainant in any way. Also, Respondent is not commonly known by the disputed domain name. Furthermore, Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent offers services that are related to, and even competitive with, those offered by Complainant.
Respondent registered and uses the disputed domain name in bad faith. Respondent had actual or constructive knowledge of Complainant’s ANDY WARHOL and WARHOL marks. Also, Respondent’s actions disrupt Complainant’s business and create an intentional likelihood of confusion with Complainant and its marks for Respondent’s commercial gain.
B. Respondent
Like “Campbell,” “Warhol” is a common name that can be used by anyone for a gallery. Respondent does not include the first name, “Andy,” so as to minimize confusion. Moreover, within the frequently asked questions (“FAQ”) section of Respondent’s website connected with the disputed domain name, that website clearly disclaims any association with Complainant.
Respondent has rights and legitimate interests in the disputed domain name. The disputed domain name is effectively comprised of generic terms which are consistent with the disputed domain name’s commercial use and are not in competition with Complainant’s solely noncommercial activities.
The disputed domain name is not registered or used in bad faith, but is engaged by Respondent for legitimate use in its resolving website’s direction to a commercial shop that sells antiques and artwork of various artists.
FINDINGS
Founded in 1987, Complainant is a United States noncommercial organization that seeks to preserve and ensure the legitimate licensing of the artwork of its founder, Andy Warhol, along with issuing millions of dollars in art-related cash grants internationally. Complainant has obtained registrations with the USPTO for both marks, ANDY WARHOL (e.g., Reg. No. 3,487,321; registered Sept. 2, 2008) and WARHOL (e.g., Reg. No. 5,953,219, registered Jan. 7, 2020), under which Complainant conducts its operations.
Respondent is the owner of the disputed domain name, , which was registered on April 24, 2019. The disputed domain name is attached to a website that directs Internet users to a shop that offers a variety of items for sale, including artwork.
DISCUSSION
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 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.
Identical and/or Confusingly Similar
The Panel finds that Complainant has established sufficient rights in both the WARHOL and ANDY WARHOL marks for the purposes of Policy ¶ 4(a)(i) through the presentation of clear evidence that Complainant has registered those marks with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (“The Panel finds that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).”).
The Panel notes that the disputed domain name, , contains the entire WARHOL mark, adding only the “.gallery” gTLD. As gTLDs are not relevant in distinguishing marks and disputed domain names pursuant to Policy ¶ 4(a)(i), the Panel concludes that the disputed domain name is identical to Complainant’s WARHOL service mark. Moreover, due to the fame of the artist, Andy Warhol, and the resulting close association between his first and last name, the Panel also determines that the disputed domain name is confusingly similar to Complainant’s ANDY WARHOL trademark. That confusion is only increased by the addition of the term, “.gallery,” because that fame is related to artwork, items of which commonly are found in galleries. See Ruby Life Inc. v. Omar Martin, D2019-2558 (Wipo Dec. 16, 2019) (finding to be confusingly similar to the ASHLEY MADISON mark); see also Ashley Furniture Industries, Inc. v. Kevin Lewis, FA 1486548 (Forum Apr. 20, 2013) (finding both and to be confusingly similar to the ASHLEY and ASHLEY FURNITURE marks).
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to trademarks in which Complainant has rights.
Rights or Legitimate Interests
Because Complainant has demonstrated that the disputed domain name is identical or confusingly similar to Complainant’s marks, and Complainant contends clearly that it has granted Respondent no authorization to use those marks for any reason, Complainant has successfully presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent must now put forward clear evidence that he does have such rights or interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Respondent, Ian Kohout/ Jan Kohout, does not bother to contend that he is commonly known by the disputed domain name, , thus the Panel can dismiss Policy ¶ 4(c)(ii) as a reasonable rationale upon which Respondent might sustain a claim of rights or legitimate interests in the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015).
Respondent contends that “Warhol” is a common name, open for use by anyone, and that Respondent is using that name within its meaning for legitimate commercial purposes. The Panel completely disagrees with the first portion of that contention. “Warhol” is a name, but not necessarily a “common” name. On the contrary, the Panel assesses “Warhol” to be a rather uncommon last name. Moreover, it is a last name that is closely associated with the first name, “Andy,” due to the fame of the artist who was known internationally by that full name. Accordingly, the Panel does not believe that “Warhol” is equivalent to a generic or descriptive term for the purposes of disputed domain name analysis under the Policy.
The Panel also disagrees with Respondent’s contention that its use of the disputed domain name constitutes a legitimate commercial activity or, as denoted in Policy ¶ 4(c)(i), for a “bona fide offering of goods or services.” While Complainant’s activities may be noncommercial, they involve artwork, which is exactly what is involved in Respondent’s commercial venture. Using the disputed domain name, which is confusingly similar or identical to Complainant’s marks, to operate in the specific field of operations engaged in by Complainant simply fails to comply with the requirements of Policy ¶ 4(c)(i). See Google LLC v. Googler Software Solutions, D2021-3295 (Wipo Nov. 22, 2021) (“The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website offering services related to the products and services of the Complainant.”). Moreover, since Respondent admittedly uses the disputed domain name primarily for commercial gain, that use does not create rights or legitimate interests per Policy ¶ 4(c)(iii), which requires “legitimate noncommercial or fair use” of the disputed domain name.
Because Respondent has failed to rebut Complainant’s above-referenced prima facie case, the Panel rules that that case must prevail.
As a result, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant has convinced the Panel that the disputed domain name is identical or confusingly similar to Complainant’s registered marks. Furthermore, Respondent himself has contended that the disputed domain name is connected to a website that solicits Internet users for Respondent’s commercial gain in selling various forms of artwork. Accordingly, the Panel finds that Respondent’s conduct falls neatly within Policy ¶ 4(b)(iv) with respect to the registration and use of the disputed domain name in bad faith; i.e., the disputed domain name is used intentionally by Respondent for commercial gain resulting from the likelihood of confusion between that name and Complainant and its marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Google LLC v. Googler Software Solutions, supra; see also National Association of Boards of Pharmacy v. Tarien Kunkleman, FA 1448633 (Forum July 28, 2012).
Respondents have argued that they have added a notice to the disputed domain name’s resolving website that disclaims any relationship with Complainant. However, as that disclaimer is a relatively brief small-print notice buried within the FAQ section of that website, the Panel believes that it is completely insufficient in effectively notifying Internet users, since many of those users may never fully refer to that section before engaging the website for commercial interaction. See Instagram, LLC v. Wiseway SIA, D2021-1877 (Wipo Sept. 21, 2021) (“…the presence of a disclaimer at the bottom of the Respondent’s website is unlikely to correct an Internet user’s perception and Internet users are likely to be confused before they ever read as far as the disclaimer.”); see also Project Management Institute, Inc. v. Roy Degan III, FA 1904070 (Forum Aug. 20, 2020) (“The panel finds the disclaimer irrelevant and finds Respondent is acting in bad faith.”).
In reaching these conclusions, the Panel notes that, while the WARHOL service mark was registered by Complainant on January 7, 2020, after the disputed domain was registered on April 24, 2019, the ANDY WARHOL trademark, to which the Panel found the disputed domain name to be confusingly similar, was registered on September 2, 2008, considerably before disputed domain name registration.
As a result, the Panel finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: April 14, 2023
