Le Corbusier panel issues landmark split decision
In Fondation Le Corbusier v Weber, a three-member World Intellectual Property Organization (WIPO) panel has for the first time found in favour of the complainant for some domain names while also finding it guilty of attempting reverse domain name hijacking in respect of some others that were part of the same complaint.
Heidi Weber was an associate of Swiss architect and artist Le Corbusier for many years, and had the exclusive right to sell his art works worldwide. In 1960, Le Corbusier designed, and Heidi and Bernard Weber financed, a museum dedicated to Le Corbusier's art works. The museum, which was inaugurated in 1967 under the name Centre Le Corbusier, is operated by the Webers. Upon his death, Le Corbusier's will directed the creation of a foundation named Fondation Le Corbusier. Heidi Weber continued to have the exclusive right to sell Le Corbusier's works, but the relationship with the foundation became contentious and the parties engaged in protracted contract litigation in France.
After the French courts decided in favour of the foundation, the Webers registered 32 domain names incorporating the name Le Corbusier. The foundation filed a complaint with WIPO, arguing that the domain names were confusingly similar to its LE CORBUSIER mark. The Webers counterclaimed that:
- the foundation was not the exclusive owner of all rights in the LE CORBUSIER mark, and, alternatively, their use of the name Le Corbusier is a "descriptive, honest, legitimate fair use";
- the domain names were not confusingly similar to the mark LE CORBUSIER;
- the domain names were registered to promote the legitimate activities of the Centre Le Corbusier and Le Corbusier Center Foundation (a New York institution that the Webers created to promote Le Corbusier's works) and were not registered in bad faith; and
- the foundation was engaging in reverse domain name hijacking.
The panel found that the foundation has rights in the registered mark LE CORBUSIER and that all 32 disputed domain names are confusingly similar to that mark. However, the panel ordered the transfer of only the eight domain names that incorporate the French term 'fondation' or English word 'foundation' on the grounds that these were registered in bad faith, as (i) none of them correspond to the name of the Le Corbusier Center Foundation in New York, and (ii) they host inactive websites.
The panel refused to transfer the remaining domain names. It found that the Webers had demonstrated a legitimate interest in the domain names that (i) incorporate the phrase Centre Le Corbusier or variations thereof (eg, Le Corbusier Centre), and (ii) are connected to an active website that promotes the Le Corbusier museum in Zurich. As for the remaining domain names not linked to active websites, the panel concluded that they had not been registered in bad faith as they contain words, such as 'art' or 'museum', that describe the Webers' business.
Turning to the Webers' claim of reverse domain name hijacking, the panel reasoned that Paragraph 15(e) of the Uniform Domain Name Dispute Resolution Policy Rules should be interpreted to evaluate the parties' interests and actions with respect to each of the domain names enumerated in a complaint, rather than the complaint as a whole. Interpreting the rule differently would preclude a finding of reverse domain name hijacking in any multiple domain name case that contains domain names that are justifiably complained about, as well as others claimed in bad faith. In the case at hand, the panel found that the foundation has known and accepted since 1967 that the Webers have certain rights and interests in the name Centre Le Corbusier, and hence in some of the domain names enumerated in the complaint. Accordingly, the panel found the foundation guilty of attempted reverse domain name hijacking in respect of the six domain names that (i) incorporate the name Centre Le Corbusier, and (ii) are linked to an active website that promotes the museum.
Susan C Shin, Goodwin Procter LLP, New York
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