WIPO Arbitration and Mediation Center

Complainant is Frederick M. Nicholas, Administrator of the Estate of Sam Francis (the "Estate") located at 589 North Venice Boulevard, Venice, California 90291 USA.

Respondent is Magidson Fine Art, Inc., a corporation located at 525 East Cooper Avenue, Aspen, Colorado 81611 USA.

The domain name at issue is "samfrancis.com" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on June 24, 2000. On June 27, 2000, the Center received hardcopy of the Complaint.

On June 29, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On July 3, 2000, the Center sent a Request for Verification to Network Solutions, Inc. requesting verification of registration data. On July 5, 2000, Network Solutions, Inc. confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondents name.

On July 8, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On July 8, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 21 and 24, the Center exchanged email with Respondent regarding the Response.

On July 27, 2000, the Center received a Response via email from Respondent and acknowledged receipt of the Response. On July 28, 2000, the Center received hardcopy of the Response.

After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a three-arbitrator panel consisting of the Presiding Panelist together with Sally M. Abel, Esq. as Complainants party-appointed panelist and G. Gervaise Davis, III, Esq. as Respondents party-appointed panelist.

The Complainant, Frederick M. Nicholas, is the court-appointed Administrator-With-Will-Annexed of the Estate of Sam Francis. Sam Francis died intestate on November 4, 1994, in the County of Los Angeles, and was a resident of said County at the time of his death. Martin Sosin was appointed as Special Administrator on November 4, 1994, and served in that capacity until May 30, 1996, when Complainant was appointed by the Court to so serve. Complainant qualified as Special Administrator, on May 10, 1996, and Letters of Special Administration were issued to him on June 10, 1996. Complainant was appointed Administrator-With-Will-Annexed on August 8, 1997, and Letters of Administration were issued to Complainant on September 16, 1997, and have been in full force and effect since said date. As the duly appointed Administrator of the Estate of Sam Francis, Complainant has the authority to prosecute this action on behalf of the Estate.

Sam Francis was a famous artist, world-renowned for his unique and highly recognizable abstract expressionist style of painting. Francis works have been exhibited internationally for over fifty years, and he is represented in numerous public and private collections throughout the United States, Europe and Japan, which include: the Museum of Modern Art, New York; the Stedelijk Museum, Amsterdam; the Louisiana Museum of Art, Denmark; the Musee national dart moderne, Centre Georges Pompidou, Paris; the Idemitsu Museum of Art, Tokyo; and the National Gallery of Art, Washington, D.C. In addition to being critically acclaimed and highly respected among his peers, Francis was also publicly admired. As a testament to his popularity and prominence, a Francis painting entitled "Toward Disappearance" recently sold for over $3.4 million on auction at Sothebys in New York. The Estate has organized eighteen exhibitions during this eighteen-month period in the United States, Italy, France, Denmark, Germany and Switzerland.

Sam Francis passed away in 1994. The Estate is the owner of all copyrights, trademarks, and other intellectual property relating to Sam Francis and his works. Under Complainants authority, the Estate is responsible for approving exhibition requests and requests for reproduction rights and archival materials relating to Sam Francis. The Estate is also the authority for the authentication of all Sam Francis works. The Estate does not offer for sale any original Sam Francis works.

Respondent Magidson Fine Art, Inc. is the owner of an art gallery in Aspen, Colorado USA operated by Jay Magidson. Respondent is unquestionably a legitimate fine art gallery, physically and virtually, exhibiting and selling modern and contemporary art masters of which Sam Francis is one. Respondent has operated a successful and reputable gallery for over thirty years with locations in New York City and Aspen, Colorado USA.

On or about April 14, 1998, Respondent registered the domain name "samfrancis.com" with the Registrar. Respondent currently operates the website www.samfrancis.com in which it offers for sale lithographs, etchings and screenprints by Sam Francis.

Complainant has not authorized Respondent to use the name or mark "Sam Francis" as Respondents domain name or on its website. Complainant has sent two letters to Respondent requesting that it cease and desist using the domain name "samfrancis.com".

A.Complainant contends that it has a common law trademark and service mark in SAM FRANCIS. Complainant further contends that the Domain Name is identical with and confusingly similar to the SAM FRANCIS service mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B.Respondent contests Complainants assertion that it has any trademark or service mark in SAM FRANCIS or that the Domain Name is confusingly similar to the asserted trademark or service mark.

Respondent contends that it has rights or legitimate interest in the Domain Name.

Respondent denies that the registration and use of the Domain Name is in bad faith.

Respondent contends that Claimant is engaged in reverse hijacking.

Identity or Confusing Similarity.

Complainant contends that it has a common law trademark and service mark in SAM FRANCIS. Complainant further contends that the Domain Name is identical with and confusingly similar to the SAM FRANCIS service mark pursuant to the Policy paragraph 4(a)(i).

The Panel finds that an artist may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. See, Julia Roberts v. Russell Boyd (WIPO Case No. D2000-0210). The artist must show that his or her name has achieved sufficient secondary meaning or association with Complainant.

Over the course of Sam Francis lengthy and distinguished career, and continuing today, the public has come to recognize and associate the name "Sam Francis" as a symbol that identifies and distinguishes the artwork produced exclusively by a single artist. The name "Sam Francis" has become synonymous with the works produced by Sam Francis in the public mind. As a result, the name "Sam Francis" has acquired distinctiveness and secondary meaning as a common law trademark and service mark when associated with works of art.

The existence of a common law trademark or service mark does not prohibit art collectors or the general public from referring to a piece as a "Sam Francis" work. The existence of a common law trademark or service mark does prohibit the use of the phrase "Sam Francis" in a manner denoting that a gallery or exhibition, whether physical or virtual, is sponsored or authorized by Sam Francis or his Estate.

The Domain Name "samfrancis.com" registered by Respondent is identical to Complainants common law trademark and service mark SAM FRANCIS. Therefore, the Panel finds that the Domain Name is identical to the SAM FRANCIS trademark and service mark owned by Complainant pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the SAM FRANCIS marks.

The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:

(i)before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent admits that it had actual knowledge of the works and notoriety of Sam Francis as an artist before it registered or used the Domain Name. However, Respondent is using the name to describe the artist who painted the works it sells at the web site. As noted below, Respondent may have rights or a legitimate interest in the Domain Name, if it can be justified under the "fair use" principles of trademark law, which we discuss below.

Respondent has offered no evidence that it has been commonly known by the Domain Name.

Respondent suggests that it has made fair use of the Domain Name and although admittedly attracting consumers in this manner, claims it has not done so in a misleading manner. The majority of the Panel finds that, because the Domain Name is identical to the SAM FRANCIS marks, there is some basis for concluding that Respondent has intentionally sought to attract consumers by using the SAM FRANCIS name in the website www.samfrancis.com; however, upon reaching it, Respondent has made clear that it is a commercial art gallery selling Sam Francis works. There is, therefore, no misleading assertion that it is sponsored or authorized by the artist. Similarly, the use does not tarnish the reputation of the artist, since it is presumably his paintings that are offered for sale here.

The majority of the Panel believes that Respondent may have, under the principles of fair use or what is sometimes called a "nominative use" in the trademark law, a legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(iii). Some of the panel members are concerned, however, that this conclusion not be construed to mean that every use of the artists name to sell his or her works would be a fair use, so that this decision should be limited to the facts of this particular case where the Respondent gallery makes clear on the website that it is not the artists site and that it is a commercial art gallery selling the works of this particular artist.

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

There is no evidence that respondent registered and used the Domain Name for the purpose of profiting from Complainants service mark.

The evidence does not support the assertion that Respondent engages in a pattern of conduct that intentionally prevents others from using their marks as domain names.

The registration of a one other name of a recognized artist, Joan Miro, without posting content on the corresponding website, under these circumstances, does not support the existence of a pattern.

There is no evidence that Respondent is seeking to prevent the use of a mark by a competitor.

The majority of the Panels analysis, on the issue of any bad faith registration and use, must take into consideration that Respondent offers artwork by the late Sam Francis for sale at www.samfrancis.com. There is no allegation or suggestion that anything other than Mr. Francis art is available at the site. There is nothing on the site suggesting an affiliation between Respondent and Mr. Francis estate. Respondent makes no claim of trademark rights in either "samfrancis.com" or any other variation of the words "Sam Francis".

On these facts, the majority of the Panel does not conclude that Respondent has registered and used the Domain Name in bad faith under Policy paragraph 4(a)(iii). To use an artists name as an informational reference in the context of otherwise legitimately offering that artists genuine work for sale to the public may well constitute a fair use under applicable trademark law. However, determination of the issue of whether Respondents registration and use of the domain "samfrancis.com" is to be deemed a fair use is more properly, we believe, for the courts, to decide and is not contemplated as an issue to be determined under the ICANN Policy and Rules. As noted above, if this is a fair use, then Respondent would have a legitimate interest in the Domain Name and would not be deemed to have registered or be using the name in bad faith.

The majority of the Panel does not believe, therefore, that this forum is the appropriate one for resolving the instant dispute, nor do we believe that the Complainant has met its burden of proof on these facts.

Reverse Hijacking.

The conclusion of the Panel that Complainant has not met its burden of proof in its Complaint does not, however, support a finding that Complainant has attempted to or engaged in reverse hijacking. Complainant has, in the Panels judgment, pursued a legitimate trademark issue on behalf of the Estate it is simply that we do not deem the issue of whether this is a fair use to be within the purview of the Panel to decide.

7. Decision

The Panel concludes (a) that while the Domain Name "samfrancis.com" is identical with the common law trademark and service mark SAM FRANCIS, (b) that Respondent may have rights and a legitimate interest in the Domain Name under the principles of fair use; and (c) that for such reason, Respondent cannot be said to have registered and used the Domain Name in bad faith. Therefore, pursuant to the Policy and the Rules, the majority of the Panel orders that the Domain Name remain with the Respondent.

Dated: September 27, 2000

I would find that Respondent has admitted that it had actual knowledge of the works and notoriety of Sam Francis as an artist before it registered or used the Domain Name. Therefore, there is no bona fide offering of goods or services such that Respondent would acquire rights or a legitimate interest in the Domain Name. Respondent has offered no evidence that it has been commonly known by the Domain Name.

Respondent suggests that it has made fair use of the Domain Name and although admittedly attracting consumers has not done so in a misleading manner. I would find that, because the Domain Name is identical to the SAM FRANCIS marks, Respondent has intentionally attracted consumers by creating the impression that the website www.samfrancis.com is sponsored or authorized by the artist.

Respondent offers insufficient evidence of the applicability of any of the criteria in the Policy paragraph 4(c). Therefore, I would find that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

My analysis of bad faith focuses on Policy paragraph 4(b)(iv). In my analysis above of rights or legitimate interests, I would have concluded that, because the Domain Name is identical to the SAM FRANCIS marks, Respondent has intentionally attracted consumers by creating the impression that the website www.samfrancis.com is sponsored or authorized by the artist. Therefore, the elements of paragraph 4(b)(iv) have been met.

I would find that Complainant has shown the existence of the elements in the Policy paragraph 4(b)(iv). I would find that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii). Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, I would order that the Domain Name be transferred to Frederick M. Nicholas, Administrator of the Estate of Sam Francis.

Richard W. Page
Presiding Panelist

September 27, 2000