Fondation Le Corbusier v. Madame Heidi Weber; Monsieur Bernard Weber

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber

Case No. D2003-0251

1. The Parties

The Complainant is Fondation Le Corbusier, Paris, France, represented by Maître

Dominique de Leusse, Paris, France.

The Respondents are Monsieur Bernard Weber of Zurich, Switzerland, and Madame Heidi Weber,

of Zurich, Switzerland, represented by Ms. Dawn Osborne of Rouse & Co International,

London, England.

2. The Domain Names and Registrar

All 32 disputed domain names are registered with Melbourne IT Ltd, trading

as Internet Name Worldwide. They are:

artlecorbusier.com>

<lecorbusierart.com>

<museumlecorbusier.com>

<lecorbusiermuseum.com>

<lecorbusierfondation.com>

<lecorbusierfondation.org>

<lecorbusierfoundation.com>

<lecorbusierfoundation.org>

<fondationlecorbusier.com>

<fondationlecorbusier.org>

<foundationlecorbusier.com>

<foundationlecorbusier.org>

<centre-lecorbusier.info>

<centrelecorbusier.info>

<lecorbusier-centre.info>

<lecorbusiercentre.info>

<centre-lecorbusier.com>

<centrelecorbusier.com>

<centre-lecorbusier.org>

<centrelecorbusier.org>

<lecorbusier-centre.com>

<lecorbusiercentre.com>

<lecorbusiercentre.org>

<lecorbusier-centre.org>

<lecorbusiercenter.com>

<lecorbusiercenter.org>

<lecorbusier-center.com>

<lecorbusier-center.org>

<center-lecorbusier.com>

<centerlecorbusier.com>

<center-lecorbusier.org>

<centerlecorbusier.org>

3. Procedural History

The Complaint was filed in French with the WIPO Arbitration and Mediation Center

(the "Center") on April 2, 2003. Next day the Center transmitted

by email to the Registrar a request for registrar verification in connection

with the domain names at issue. On April 4, 2003, the Registrar transmitted

by email to the Center its verification response confirming that Heidi Weber

is listed as the registrant of the eight disputed domain names:

<center-lecorbusier.com>

<center-lecorbusier.org>

<centerlecorbusier.com>

<centerlecorbusier.org>

<lecorbusier-center.com>

<lecorbusier-center.org>

<lecorbusiercenter.com>

<lecorbusiercenter.org>

and that Bernard Weber is listed as the registrant of the remaining twenty-four

disputed domain names. In each case, the Registrar provided contact details

for the administrative, billing, and technical contacts and stated that the

language of the registration agreement is English.

On 7 April 2003, Bernard Weber sought translation into English of all documents

submitted by the Complainant that are not in that language, stating that the

Respondents had not agreed with the Complainant to the use of any other language.

On April 9, 2003, in response to a request by the Center, the Complainant filed

the Complaint translated into English. Several of its attachments remained in

French. The Center verified that the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2003.

In accordance with the Rules, paragraph 5(a), the due date for the Response

was May 14, 2003. The Response was filed with the Center on May 19, 2003,

an extension of time until that day having been granted by the Center with the

concurrence of the Complainants’ representative.

The Center appointed Alan L. Limbury, Pierre-Yves Gautier and Gordon Harris

as panelists in this matter on June 23, 2003. The Panel finds that

it was properly constituted. Each member of the Panel has submitted the Statement

of Acceptance and Declaration of Impartiality and Independence, as required

by the Center to ensure compliance with the Rules, paragraph 7.

Language of the proceeding

Rule 11(a) provides that the language of the proceeding shall be the language

of the Registration Agreement unless otherwise specified in that agreement or

agreed by the parties. The Rule also provides that the Panel has the authority

to determine otherwise, having regard to the circumstances of the administrative

proceeding.

The language of each of the Registration Agreements is English. Prima facie,

Rule 11(a) requires that the language of the proceeding be English. It is not

suggested that the parties have agreed otherwise nor that the Registration Agreements

specify otherwise. Although initially filed in French, the Complaint has now

been translated into English. All the parties’ communications with the Center

have been conducted in English. The Respondents’ representatives are English

and they have requested that additional documents be translated into English.

Under these circumstances the Panel is not disposed to determine that the language

of the proceeding should be other than English.

Translation

In addition to the request for translation made by Bernard Weber on April 7, 2003,

there were numerous requests by the Respondents’ representatives that the documents

in French annexed to the Complaint be translated. The Center pointed out that,

under Rule 11(b), the Panel, not the Center, may order full or partial translation

into the language of the proceeding of any documents submitted in languages

other than the language of the proceeding.

The Respondents’ representatives are an English law firm. They do not speak

French. They say the Respondents speak some French but not well enough to comprehend

fully the French documents in the Complaint, upon some of which the Complainant

relies to establish rights in the domain name and bad faith registration of

the domain names. Accordingly, they say they cannot deal properly with the Complainant’s

allegations without English translations and that, if the Panel is to take them

into account, the Respondents need translations in order to deal fully with

the Response.

The Complainant says Bernard Weber knows and understands French perfectly;

the request for translation is vexatious and that, having received a copy of

the Complaint at the time it was filed, he chose English representatives knowing

of the French annexures. The Complainant also said Ms. Osborne’s profile as

a WIPO domain name panelist indicates an ability to deal with legal issues in

French. Ms. Osborne responded that her French skills do not enable her to deal

with the French annexures to the Complaint, many of which are court judgments

couched in legal language.

The Panel is mindful of the requirement of Rule 10(b):

"In all cases, the Panel shall ensure that the Parties are treated with

equality and that each Party is given a fair opportunity to present its case".

This requirement overrides the obligation of the Panel to conduct the proceeding

in such manner as it considers appropriate in accordance with the Policy and

the Rules - Rule 10(a) - and to ensure that the proceeding takes place with

due expedition - Rule 10(c).

The Panel has examined the documents in French annexed to the Complaint. It

is of the view that this proceeding may be determined fairly to both parties

without the need to order their translation into the language of the proceeding.

So far as the court judgments are concerned, Heidi Weber was a party to them

and must be presumed already to have been advised as to their meaning. Further,

the Response itself contains an accurate and sufficient summary (in English)

of the nature and outcome of the proceedings. Finally, the Complainant does

not rely on the content of those court judgments but rather on the fact of the

litigation and its outcome. So far as concerns the will of Le Corbusier, the

decree of July 24, 1968, and the description of the Complainant’s

activities, the Panel regards these documents as of minor significance, given

that the Complainant relies on registered trade marks and that Heidi Weber

has recognized contractually that the Complainant is the beneficiary under Le

Corbusier’s will.

Accordingly, the Panel declines to order translation of any documents.

Additional submissions

On June 17, 2003, the Complainant sought the leave of the Panel to file a Reply

to the Response, invoking Rules 10(a) and 12 and foreshadowing the issues it

wished to address. The Respondents objected to the admission of a Reply and

indicated their position on the foreshadowed issues, should the Panel be minded

to allow a Reply to be filed. The Panel’s consideration of this issue appears

in Section 6 of this determination.

4. Factual Background

The Swiss architect and visual artist Charles Edouard Jeanneret was famously

known worldwide as Le Corbusier. Heidi Weber was an associate of Le Corbusier

from 1958, until his death on August 27, 1965. In April 1959, she

organized the first exhibition of his furniture, paintings, lithographs and

drawings in Zurich.

In May 1960, Heidi Weber proposed to Le Corbusier the construction of a house

representing the culmination of his studies in the fields of architecture, interior

design and the visual arts, to serve as a "Le Corbusier museum" under

the name "House of Man". Le Corbusier agreed and submitted the plans

to her in 1962. She obtained the approval of the Zurich city council and took

charge of the building costs.

By an agreement dated June 14, 1962, and amended on November 26, 1962,

Le Corbusier granted to Heidi Weber, for a term of 30 years, the exclusive right

to sell worldwide the paintings, sculptures, enamel work, gouaches and collages

which he entrusted to her, while reserving the right during his lifetime to

decide which of his works would be put on sale. The agreement was expressed

to be able to be invoked against Le Corbusier’s inheritors, legatees and beneficiaries,

"in particular the foundation currently being constituted, and who must

obtain the approval of Madame Heidi Weber for any transfer of property occurring

after the death of Monsieur Le Corbusier…"

The Complainant is the foundation to which that reference was made. By his

last will made in Paris on June 16, 1965, Le Corbusier expressed the

wish to leave all his property to a public utility to be created and called

"Fondation Le Corbusier". By prime ministerial decree dated July 24, 1968,

the Complainant was officially recognized as a public utility establishment

and was authorized to accept Le Corbusier’s legacy, comprising real and personal

property and works of art.

The building in Zurich, which Le Corbusier designed and which Heidi Weber commissioned,

was inaugurated on July 15, 1967, and was named "Centre Le Corbusier".

That name has since been used in conjunction with the name Heidi Weber,

as in "Centre Le Corbusier – Heidi Weber". The building has at all

times been a public museum on the life and works of Le Corbusier, financed and

run by the Respondents. In June 1997, the building was described in an article

in "Flying Dutchman" as "the now famous Centre Le Corbusier

in Zurich". Recently the building housing the Centre Le Corbusier has

changed its name to the Heidi Weber Museum. However, the name Centre Le Corbusier

is still being used to describe the content and activity of the museum.

By contract dated March 2, 1973, which replaced the 30-year arrangement she

had with Le Corbusier, Heidi Weber entered into an arrangement with the Complainant

under which, for 20 years from January 1, 1972, she continued to enjoy

the exclusive right to sell the works of Le Corbusier, albeit on different terms.

The contract described the Complainant as the beneficiary under Le Corbusier’s

will and described Heidi Weber as "Directrice du Centre Le Corbusier

– Heidi Weber". In September 1984, the contract was amended in ways

that are presently immaterial. It ended on January 1, 1992.

In 1980, Heidi and Bernard Weber established in New York, under the laws of

the United States, "Le Corbusier Center Foundation", offering professional,

internship, membership and award programs and involvement in exhibitions and

conferences.

Since 1987, the Complainant has been the registered proprietor of the trademark

"LE CORBUSIER (with design of a hand)" in many countries including

France and Switzerland. Since 1997 the Complainant has been the registered proprietor

of United States Registered trademark No. 2,073,285 LE CORBUSIER for furniture

in International Class 20, claiming first use in 1927 and first use in commerce

in 1966.

Between 1989 and 1998, the Complainant and Heidi Weber were in litigation in

France over their contract. Heidi Weber sued the Complainant for breach of contract

for alleged refusal to supply her with Le Corbusier artworks. The Complainant

counterclaimed for non-payment of fees for certain artworks, which Heidi Weber

contended she had previously purchased from Le Corbusier during his lifetime.

The French courts, including appeal courts, decided in favour of the Complainant.

The right of the Respondents to use the names Le Corbusier, Centre Le Corbusier

or Le Corbusier Center Foundation was not in issue.

By a settlement agreement dated July 30, 1998, in which the Zurich building

was described as "Le Musée Le Corbusier à Zurich",

outstanding issues were resolved, including the transfer from Heidi Weber to

the Complainant of Swiss trade mark 450040, being a photograph taken by Bernard

of the Zurich building, with a licence granted back to her to use the mark solely

in Switzerland as the museum’s logo or as otherwise previously agreed in writing

by the Complainant.

On January 15, 1999, the Complainant registered the domain name <fondationlecorbusier.asso.fr>,

and subsequently <le-corbusier.com>, <le-corbusier.net>, <lecorbusier.net>,

< le-corbusier.org> and<lecorbusier.org>.

The disputed domain names were registered between November 4, 2000,

and September 25, 2002. Some are active in that they point to the

website of the Centre Le Corbusier at "www.centrelecorbusier.com"

and others are inactive, as follows:

Number

Domain name

Registrant

Date registered

Active/Inactive

1

<artlecorbusier.com>

Bernard

Nov.

4, 00

Inactive

2

<lecorbusierart.com>

Bernard

Nov.

4, 00

Inactive

3

<museumlecorbusier.com>

Bernard

Nov.

4, 00

Inactive

4

<lecorbusiermuseum.com>

Bernard

Nov.

4, 00

Inactive

5

<lecorbusierfondation.com>

Bernard

Nov.

4, 00

Inactive

6

<lecorbusierfondation.org>

Bernard

Nov.

4, 00

Inactive

7

<lecorbusierfoundation.com>

Bernard

Nov.

4, 00

Inactive

8

<lecorbusierfoundation.org>

Bernard

Nov.

4, 00

Inactive

9

<fondationlecorbusier.com>

Bernard

Nov.

4, 00

Inactive

10

<fondationlecorbusier.org>

Bernard

Nov.

4, 00

Inactive

11

<foundationlecorbusier.com>

Bernard

Nov.

4, 00

Inactive

12

<foundationlecorbusier.org>

Bernard

Nov.

4, 00

Inactive

13

<centre-lecorbusier.info>

Bernard

May

31, 02

Inactive

14

<centrelecorbusier.info>

Bernard

May

31, 02

Inactive

15

<lecorbusier-centre.info>

Bernard

May

31, 02

Inactive

16

<lecorbusiercentre.info>

Bernard

May

31, 02

Inactive

17

<centre-lecorbusier.com>

Bernard

June

1, 02

Active

18

<centrelecorbusier.com>

Bernard

June

1, 02

Active

19

<centre-lecorbusier.org>

Bernard

June

1, 02

Active

20

<centrelecorbusier.org>

Bernard

June

1, 02

Active

21

<lecorbusier-centre.com>

Bernard

June

1, 02

Active

22

<lecorbusiercentre.com>

Bernard

June

1, 02

Active

23

<lecorbusiercentre.org>

Bernard

June

1, 02

Active

24

<lecorbusier-centre.org>

Bernard

June

1, 02

Inactive

25

<lecorbusiercenter.com>

Heidi

Sept.

25, 02

Active

26

<lecorbusiercenter.org>

Heidi

Sept.

25, 02

Active

27

<lecorbusier-center.com>

Heidi

Sept.

25, 02

Active

28

<lecorbusier-center.org>

Heidi

Sept.

25, 02

Active

29

<center-lecorbusier.com>

Heidi

Sept.

25, 02

Active

30

<centerlecorbusier.com>

Heidi

Sept.

25, 02

Active

31

<center-lecorbusier.org>

Heidi

Sept.

25, 02

Active

32

<centerlecorbusier.org>

Heidi

Sept.

25, 02

Active

Also on November 4, 2000, Bernard Weber registered the domain names <museumheidiweber.com>

and <heidiweber.com>, neither of which is in dispute in these proceedings.

On May 10, 2002, Heidi Weber wrote to the Complainant announcing the forthcoming

creation of a website about Le Corbusier and the history of the "House

of Man" and stating her intention to register the domain names <LeCorbusier-Museum>

or <Museum-Le Corbusier>. She sought the Complainant’s comments. The Complainant

wrote to her on May 15, 2003, agreeing to her registering the domain

names <Centre H. Weber – Le Corbusier> or <Centre Le Corbusier>

and seeking the cancellation or transfer of the other domain names she and Bernard

had registered. There is some dispute over whether an earlier reply was written

and delivered but the Panel considers this of no consequence.

5. Parties’ Contentions

A. Complainant

Rights

The Complainant is the sole owner of the rights in the name Le Corbusier, the

trademark LE CORBUSIER, and the copyright relating to the work of Le Corbusier.

It is not contestable that the Complainant is the owner of the trademark LE

CORBUSIER.

Identity/confusing similarity

Each disputed domain name includes the trademark LE CORBUSIER with the addition

of a generic word: art, museum, fondation, foundation,

centre or center. The combinations obtained are generic and do

not stop the confusion caused by the use of the trademark LE CORBUSIER: The

Body Shop International PLC. v. CPIC Net and Syed Hussain, WIPO

Case No. D2000-1214; Space Imaging, eResolution Case No. AF0298.

The words foundation and museum were found to be descriptive in

Indivision Picasso v. Manuel Mu iz Fernandez [Hereisall], WIPO

Case No. D2002-0496 as was the word center in Nintendo of America

Inc. v. Berric Lipson, WIPO Case No. D2000-1121.

All the disputed domain names are confusingly similar to the famous trademark

LE CORBUSIER.

Legitimacy

The Respondents have no rights or legitimate interests in respect of the disputed

domain names.

The active domain names all lead to the same web site dedicated to the Heidi

Weber Museum. That web site, without authorization from the Complainant, uses

the Complainant’s Swiss trademark 450040 (being a representation of the building

conceived by Le Corbusier) and reproductions of his works with the indication

"© FLC" (standing for Fondation Le Corbusier). The

Respondents thus acknowledge that the copyrights belong to the Complainant and

they seek to use this false appearance of authorization to mislead the public.

The Respondents are fully aware of the rights of the Complainant since Heidi

Weber has already lost various litigations which she initiated.

The Respondents cannot avail themselves of a use of the domain name in connection

with a bona fide offer of goods or services. The sole goal of the web site is

to direct the public who like Le Corbusier’s work to another web site dedicated

to sale of his works: "www.a-a-a.li".

The Heidi Weber Museum’s web site uses as a key word the trademark LE CORBUSIER

and also the word MODULOR, which belongs to the Complainant and which a French

Court has determined (in a case against a third party) to be an original artwork

created by Le Corbusier and protected by copyright.

Thus the Respondents have used materials for their own profit that infringe

the trademark and the name Le Corbusier and the copyright, which are owned by

the Complainant.

The web site of the Respondents has for its only goal the promotion of the

Heidi Weber Museum and the sale of Le Corbusier’s work. The use of

the trademark and of the name LE CORBUSIER is not justified by any legitimate

interest.

There are on the web site only very rare mentions of the words "Centre

Le Corbusier", in order to try to justify the domain names registered.

In fact, the Respondents have no right and no legitimate interest in the disputed

domain names.

Bad faith

Former judicial cases prove the dissension between the Complainant and the

Respondents. Heidi Weber initiated litigation against the Complainant, which

she lost. The Respondents have used the new ground of the Internet to try to

take their revenge and to harm the Complainant.

Registration of domain names in light of the prior registrations by the Complainant,

was primarily for the purpose of disrupting the relations of the Complainant

with the public.

Two years after the registration by the Complainant of the domain name <fondationlecorbusier.asso.fr>,

Bernard Weber registered the domain names numbered 5 to 12 above. The simple

fact of having registered those domain names containing the trade name of the

Complainant is proof of his bad faith.

Neither Respondent has replied to numerous letters from the Complainant, further

evidencing bad faith.

The lack of use of some domain names proves bad faith. Bernard Weber registered

all 17 inactive domain names but does not use them, because he knows their use

is wrongful and because the principal goal is to prevent the Complainant from

registering them. This lack of use demonstrates that their registration was

made in bad faith and with intent to use those domain names as part of a bargain

with the Complainant. During a phone call in French, Bernard Weber indicated

to Mrs. Evelyne Trehin, executive manager of the Complainant, that he wanted

to solve the problem of the domain names at the same time as other issues, such

as the use of the Complainant’s figurative trademark that depicts the building

of the Heidi Weber Museum.

The Respondents use in bad faith materials which infringe the trademark and

copyrights of the Complainant in order to make money.

The Respondents act in bad faith because they could use other domain names

owned by Bernard Weber, namely <heidiweber.com> and <museumheidiweber.com>

instead of those which contain the trademark LE CORBUSIER.

B. Respondents

Rights

It is not admitted that the Complainant is the exclusive owner of all the rights

which relate to the name Le Corbusier. The Respondents also own rights in the

names Centre Le Corbusier and Le Corbusier Center Foundation and/or

alternatively the use of Le Corbusier by the Respondents is descriptive, honest

and legitimate fair use.

Confusing similarity

It is not admitted that the domain names are confusingly similar. The Respondents

have developed over thirty-five and twenty years worth of significant and worldwide

reputation in the names Centre Le Corbusier and Le Corbusier Center Foundation

respectively. The relevant section of the public is well educated and well versed

on the different organizations involved with Le Corbusier’s works. Such people

are unlikely to think that the disputed domain names, in particular those containing

the English word centre or the American English word center, are

anything to do with the Complainant. The Complainant has not cited one single

instance of actual confusion between the Complainant and the Respondents.

The respondent in Indivision Picasso v. Manuel Muniz Fernandez, WIPO

Case No. D2002-0496, had no legitimate and longstanding connection with

a genuine Picasso museum or "foundation" and his response revealed

no legitimate right to use the PICASSO name. Here, the Respondent has been administering

a Le Corbusier museum for over 35 years and has built up significant worldwide

reputation goodwill and unregistered trade mark rights in relation to its use

of the Centre Le Corbusier and Le Corbusier Center Foundation names.

The Respondents have also registered a few purely descriptive domain names,

which relate to their legitimate business <artlecorbusier.com> <museumlecorbusier.com>

and <lecorbusiermuseum.com> and intend to use these domain names in connection

with the promotion of the Le Corbusier museum in a legitimate and fair manner.

The dissenting panelist in the Picasso case held that while the domain

names were similar to the trade mark PICASSO, they were not confusingly similar

to the domain name which was the name of a genuine museum in existence but which

happened not to be associated with either the complainant or the respondent

in that case:

"I do not believe that any use whatsoever, or any inclusion of a trade

marked word in a domain name made of a complex expression, such as the domain

names at issue, in and by themselves equal to confusing similarity of the domain

names to the single word mark. In fact none of the three domain names- when

considered in their entirety and overall impression – are confusingly similar

to the single word mark Picasso, even if this is a famous mark."

The facts of Nintendo of America Inc v. Berric Lipson, WIPO

No. D2000-1121 and The Body Shop International Plc v. CPIC Net

and Syed Hussain, WIPO Case No. D2000-1214

were very different. The respondents in both cases failed to file a response

and consequently had not revealed any legitimate right to use the name to which

the domain names corresponded. In this case the Respondents have such legitimate

rights.

Legitimacy

The Respondents have used the name Le Corbusier since 1958. They have been

trading as Centre Le Corbusier since 1967, and as Le Corbusier Center Foundation

since 1980 - before the Complainant obtained any of the registered trade mark

rights on which it seeks to rely.

The Centre Le Corbusier is a Swiss based museum and centre for the promotion

of the life and works of Le Corbusier and has over many years become world famous.

The goodwill, reputation and unregistered trade mark rights in the name Centre

Le Corbusier are owned by the Respondents. The Respondents’ publicity materials,

third party press articles and other references from 1967, onwards demonstrate

the Respondents’ use of Centre Le Corbusier. Such is the reputation of the Centre

Le Corbusier that the Zurich Tourist board features the museum prominently in

its promotional video for Zurich on international airlines such as the inbound

Swiss Airline flight to Zurich from Canada.

The Corbusier Center Foundation features on the Respondents’ website. As a

result of such use the Respondents have developed and now own valuable goodwill,

reputation and unregistered trade mark rights in the name Le Corbusier Center

Foundation.

In 2000, Bernard Weber began registering domain names, and subsequently transferred

some of them to Heidi Weber, in order to use them as web addresses to advertise

the activities of the Centre Le Corbusier and Le Corbusier Center Foundation.

The Centre Le Corbusier website has been hosted at <centrelecorbusier.com>

since August 16, 2002. Since October 28, 2002, the domain

names numbered 17, 18, 21, 22, and 25 to 32 above have been pointed to the <centrelecorbusier.com>

website.

The inactive disputed domain names are either linked to holding pages or to

no active websites. The Respondents intend to use all of the domain names to

link to either the Centre Le Corbusier or the Le Corbusier Center Foundation

websites in the future. There is nothing sinister in this, it is simply that

this is as far as the Respondents have got in developing their website. For

example they have registered <lecorbusiercentre.info> <lecorbusier-centre.info>

<centre-lecorbusier.info> or <centrelecorbusier.info> which are

important names to the Centre Le Corbusier site but have not got round to linking

them to the actual site yet because they are busy and have many business issues

to deal with every day.

As previously mentioned the Respondents have set up a web page which advertises

the activities of Le Corbusier Center Foundation. This page is incorporated

within the Centre Le Corbusier website. The Respondents intend to develop this

side of the website and eventually to have a separate website devoted to the

activities of Le Corbusier Center Foundation using separate website addresses.

The following domain names owned by Bernard Weber are near variations of the

Le Corbusier Center Foundation name owned by the Respondents as a result

of over 20 years of use:

<fondationlecorbusier.com>

<fondationlecorbusier.org>

<foundationlecorbusier.com>

<foundationlecorbusier.org>

<lecorbusierfondation.com>

<lecorbusierfondation.org>

<lecorbusierfoundation.com>

<lecorbusierfoundation.org>

The Respondents did not register the full version of the name Le Corbusier

Center Foundation as a domain name because it would result in very long cumbersome

domain names such as

<lecorbusiercenterfoundation.com>;

<lecorbusiercenterfoundation.org>; and

<lecorbusiercenterfoundation.info>.

The Respondents registered domain names identical and similar to Centre Le

Corbusier and Le Corbusier Center Foundation in order legitimately to use the

domain names as web addresses to link to their Centre Le Corbusier and Le Corbusier

Center Foundation websites. The similar domain names were registered in order

to reflect the fact that third parties often misspell the Respondents’ names

and/or rearrange the order of the words. Alternatively the Respondents registered

purely descriptive domain names relevant to their business. Most importantly,

the Respondents have not come across any instances of confusion between any

of the variations of these names and the Complainant and the Complainant has

not given any evidence of actual confusion in its Complaint. This is due to

the existing reputation of the Respondents and their legitimate association

with their Le Corbusier museum and Le Corbusier’s body of work.

Bad faith

The intention for registering the domain names was to promote across the world

the legitimate activities of Centre Le Corbusier and Le Corbusier Center Foundation.

The Centre Le Corbusier website is live and has a section on Le Corbusier Center

Foundation, while a separate Le Corbusier Center Foundation website is in development.

The Respondents intend in future to link all of the domain names to the relevant

Centre Le Corbusier and Le Corbusier Center Foundation web sites. The Respondents

understood it to be common practice to register variations of names in order

to increase internet traffic to web sites, particularly when such similar variations

of the names have been commonly used by third parties to refer to the registrant

and/or the names describe the content of the site in a legitimate and fair manner.

The Respondents formally deny any of the conduct described in paragraph 4(b)

of the Policy as constituting evidence of bad faith registration and use, and

specifically deny all the Complainant’s assertions. In particular, the Respondents

deny that "the simple fact of having registered those domain names that

contain the trade name of the Fondation Le CORBUSIER" is the proof of bad

faith of Bernard Weber", saying they registered many variations of

the name Le Corbusier Center Foundation for reasons they have explained.

The Respondents also deny that the domain names were registered in order to

prevent the Complainant from reflecting the mark in corresponding domain names

and, in connection therewith, that the Respondents have engaged in a pattern

of such conduct. The Respondents say they did not register the domain names

for this purpose; the Complainant has not been prevented from reflecting the

mark in a corresponding domain name and the Complainant has submitted no evidence

of any such pattern of conduct. The Respondents also deny that the domain names

were registered by the Respondents primarily to disrupt the Complainant’s business,

saying the Respondent [sic] has its own legitimate business and purposes for

the international domain names it has registered.

Reverse domain name hijacking

The Respondents seek a finding of attempted reverse domain name hijacking,

saying the Complainant knew of the Respondents’ unassailable rights in relation

to the domain names.

6. Discussion and Findings

Additional submissions

Many panels have held that additional submissions are inappropriate except

in the rarest of circumstances, such as in the case of newly discovered evidence

not reasonably available to the submitting party at the time of its initial

submission, or arguments by the respondent that the complainant could not reasonably

have anticipated: CRS Technology Corp. v. CondeNet, Inc., NAF FA0002000093547;

Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International

Electronic Communications, Inc., WIPO

Case No. D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises,

WIPO Case No. D2000-0416; Wal-Mart

Stores, Inc. v. Richard MacLeod, WIPO

Case No. D2000-0662; Electronic Commerce Media, Inc. v. Taos Mountain,

NAF FA0008000095344; Parfums Christian Dior S.A. v. Jadore, WIPO

Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com,

WIPO Case No. D2000-0905 and Goldline

International, Inc. v. Gold Line, WIPO

Case No. D2000-1151.

Here the proposed Reply does purport to contain evidence that was unavailable

at the time of the filing of the Complaint and the Respondents have raised arguments

that the Complainant may not reasonably have anticipated. In particular, the

Respondents rely on a conversation said to have occurred on April 23, 2002,

between Heidi Weber and Ms. Trehin, the Complainant’s executive manager,

claiming that Ms. Trehin gave permission to the Respondents to use the domain

name <centrelecorbusier.com> as their main internet address and to use

on the web site the ‘figurative trademark’ depicting the building, together

with the Complainant’s photographs, with the same form of attribution as the

Complainant uses, namely "©FLC". The Complainant seeks leave

to file a Reply addressing this alleged conversation. The Panel does not regard

any dispute as to whether such a conversation took place as germane to the narrow

issues required to be addressed in this proceeding and accordingly disregards

the Respondents’ assertions, thus rendering the proposed Reply unnecessary insofar

as it would address that conversation.

Having carefully examined the issues to which the proposed Reply would be addressed,

the Panel considers the issues to be peripheral to its decision and that there

are no exceptional circumstances that would justify its admission into evidence.

Accordingly, the Panel does not admit the proposed reply to the Response and

has had no regard to it in making this determination. It follows that the proposed

Rejoinder is also rejected and disregarded.

Substantive issues

Pursuant to the Policy, our substantive inquiry focuses on four issues:

(I) does the Complainant have rights in a trademark or service mark;

(II) if so, are the disputed domain names identical or confusingly similar to

that mark;

(III) does either Respondent have a legitimate interest in the disputed domain

names;

(IV) were the disputed domain names registered and are they being used in bad

faith?

A. Rights in a mark

Whether or not the Complainant obtained any trade mark rights by inheritance

under the will of Le Corbusier (a question the Panel finds unnecessary to resolve),

the Complainant has clearly demonstrated that, when it filed the Complaint,

it was the registered proprietor of the trade marks LE CORBUSIER in the United

States and "LE CORBUSIER with open hand device" in other countries

including France and Switzerland.

B. Identical or Confusingly Similar

The domain names are not identical to either LE CORBUSIER mark.

The test of confusing similarity under the Policy is confined to a comparison

of the disputed domain name and the trademark alone, independent of the other

marketing and use factors usually considered in trademark infringement or unfair

competition cases. Thus, the content of the Respondents’ web site is irrelevant

to this issue. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc

v. NABR, WIPO Case No.D2001-1480;

Britannia Building Society v. Britannia Fraud Prevention WIPO

Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For

Sale, WIPO Case No. D2000-0662; Koninklijke

Philips Elecs. N.V. v. In Seo Kim, WIPO

Case No.D2001-1195; Energy Source Inc. v. Your Energy Source, NAF

Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,

Inc., WIPO Case No.D2001-1121 and

the cases there cited.

Each of the disputed domain names contains, in whole, the Complainant’s mark

LE CORBUSIER, with the addition of a purely descriptive word that does

nothing to detract from the association likely to be made by Internauts with

the famous name and mark LE CORBUSIER. The Respondent seeks to distinguish this

case from those cited by the Complainant by claiming that the Respondents have

a legitimate interest in their disputed domain names. The Panel does not regard

the presence or absence of legitimacy on the part of a domain name registrant

as relevant to the question whether the disputed domain name is confusingly

similar to the trade mark under consideration.

The Panel finds each of the disputed domain names to be confusingly similar

to the Complainant’s registered trade mark LE CORBUSIER.

The Complainant has established this element of its case.

C. Rights or Legitimate Interests

The name Le Corbusier is famous. The Complainant is the registered proprietor

of the trade mark LE CORBUSIER in the United States and of other marks incorporating

that name (with open hand design) in other countries. It appears from the Complainant’s

letter to Heidi Weber dated May 15, 2003, that the Complainant consents

to her registration of the domain name <centrelecorbusier.com>. The Complainant

has not consented to the registration of any of the other domain names held

by the Respondents. Heidi Weber was well aware of and in contractual relations

and lengthy litigation with the Complainant. The Panel infers that Bernard Weber

was likewise well aware of the Complainant and its role as beneficiary of the

will of Le Corbusier.

These circumstances are sufficient to constitute a prima facie showing

by the Complainant of absence of rights or legitimate interest in the disputed

domain names on the part of Respondent, other than those incorporating the expression

Centre Le Corbusier. The evidentiary burden therefore shifts to the Respondents

to show by concrete evidence that they do have rights or legitimate interests

in those other domain names: Do The Hustle, LLC v. Tropic Web (WIPO

Case No. D2000-0624) and the cases there cited.

The Respondents have demonstrated that their business in Zurich has been commonly

known by the name CENTRE LE CORBUSIER since 1967. It follows that, quite apart

from the consent of the Complainant, the Respondents have demonstrated, under

paragraph 4(c)(ii) of the Policy, rights to and legitimate interests in each

of the domain names numbered 13, 14 and 17 – 20. All of those domain names comprise

the expression Centre Le Corbusier (in some cases with a hyphen), followed

by the TLD .com, .info or .org.

Since October 2002, the domain names numbered 17 – 23 and 25 – 32, which the

Panel notes are similar in their reference in different forms to the Centre

Le Corbusier, have been actively connected to the web site used to promote the

Le Corbusier museum in Zurich, established in 1967. Thus, the Respondents have

demonstrated rights to and legitimate interests in each of those domain names

under paragraph 4(c)(i) of the Policy.

The Respondents have demonstrated that their organization in New York has been

commonly known as LE CORBUSIER CENTER FOUNDATION since 1980. However, none of

the disputed domain names corresponds with the name of the New York foundation,

nor have any of the domain names which incorporate the word FOUNDATION or FONDATION

been used (names 5 – 12). This latter point applies also to the domain names

numbered 1 - 4 and 15, 16 and 24. The Respondents have asserted their intention

to use all the inactive domain names in the future in connection with their

undoubtedly bona fide activities, however they have produced no proof of that

asserted intention. Accordingly, the Respondents have not demonstrated legitimacy

in relation to any of these domain names within any of sub-paragraphs 4(c)(i),

(ii) or (iii) of the Policy.

The Complainant has made reference to an alleged breach of copyright in relation

to the word "Modulor" which has, it is claimed, been upheld by the French court

as being protected by copyright. This Panel is empowered to consider issues

relating to the entitlement to proprietorship of domain names and related issues

in the context of registered and unregistered trade mark rights. It is not authorised

and cannot rule on matters relating to copyright infringement.

The Panel finds that the Complainant has failed to establish absence, on the

part of the Respondents, of rights and legitimate interests in domain names

13, 14, 17 – 23 and 25 – 32 but has established this element of its case in

relation to domain names 1 – 12 and 15, 16 and 24.

D. Registered and Used in Bad Faith

The Panel does not consider further the domain names in which it has found

the Respondents to have demonstrated that they have rights and legitimate interests.

Domain names 1 – 12 were all registered by Bernard Weber in November 2000,

and have not been used. Names 1 – 4 are apt to describe the activities of the

museum conducted at the building in Zurich since 1967. The Panel is not satisfied

that the Complainant has established any bad faith in the registration of these

four, nor in their subsequent passive use.

Names 15, 16 and 24 were registered by Bernard Weber on May 31 and June 1, 2002,

and have not been used. They differ from names 21 – 23 and 25 – 28 (in which

the Panel has found the Respondents to have rights and legitimate interests)

only in that they have not been used. Given the known propensity of Internauts,

when searching for a web site, sometimes to reverse the order of words, especially

since the order of words in English and French is often reversed, the Panel

accepts that it was reasonable for the Respondents to have registered each of

the domain names numbered 15, 16 and 24. The Complainant has not established

that these domain names were registered in bad faith.

Names 5 – 12 are notable in that they incorporate the word foundation or

fondation without the word centre or center. Given the

history of litigation, the timing of the registration of these domain names

and their long period of non-use, the Panel finds the Respondents’ explanation

as to why the full name of the New York foundation was not chosen (the cumbersomeness

of a long domain name) implausible and not valid. Choosing that particular combination

must have been appreciated as waving a red flag at a bull. The Panel infers

that those domain names were registered by Bernard Weber either in order to

prevent the Complainant from reflecting its LE CORBUSIER mark in a corresponding

domain name (the number of such domain names constituting a pattern of such

conduct) or primarily for the purpose of disrupting the business of the Complainant,

being a competitor of the Respondents in the provision of exhibitions and in

promoting the life and works of Le Corbusier. These circumstances are evidence

of both bad faith registration and bad faith use under paragraphs 4(b)(ii) and

(iii) of the Policy.

The Complainant has established this element of its case in relation to domain

names 5 – 12.

E. Reverse domain name hijacking

The Complainant has succeeded in relation to domain names 5 – 12 and failed

on the remaining 24 domain names. The Panel has considered whether it is permissible

to make a finding of Reverse Domain Name Hijacking in such a situation. So far

as the Panel is aware, this question has not been arisen before.

Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad

faith to attempt to deprive a registered domain-name holder of a domain name."

This appears to contemplate, in cases involving several domain names, that each

domain name may be considered separately. However Rule 15(e) provides:

"…If after considering the submissions the Panel finds that the complaint

was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking

or was brought primarily to harass the domain-name holder, the Panel shall declare

in its decision that the complaint was brought in bad faith and constitutes

an abuse of the administrative proceeding"

On one interpretation, Rule 15(e) permits a finding of Reverse Domain Name

Hijacking only where the complaint as a whole was brought in bad faith or primarily

to harass the domain-name holder. This interpretation would preclude a finding

of Reverse Domain Name Hijacking in any multiple domain name case in which the

Complainant was justified in complaining about one or more domain names (whether

or not successful in its complaint) but acted in bad faith in complaining about

one or more other domain names.

After deep discussion, the Panel considers the correct interpretation of Rule

15(e) to be in conformity with the individual domain name approach contemplated

by the definition because, as a matter of policy, complainants should be discouraged

from including claims known to be baseless amongst claims properly brought.

Any other interpretation would jeopardize the efficiency and integrity of the

Policy.

Accordingly, the Panel considers that it is entitled to consider each disputed

domain name separately in determining whether to make a finding of Reverse Domain

Name Hijacking.

To prevail on such a claim, it has been held that a respondent must show either

that the complainant knew of the respondent’s unassailable right or legitimate

interest in the disputed domain name or the clear lack of bad faith registration

and use, and nevertheless brought the complaint in bad faith: Sydney Opera

House Trust v. Trilynx Pty. Ltd., WIPO

Case No. D2000-1224 (November 8, 2000) and Goldline International,

Inc. v. Gold Line, WIPO Case No. D2000-1151

(January 8, 2001) or that the complaint was brought in knowing disregard

of the likelihood that the respondent possessed legitimate interests: Smart

Design LLC v. Hughes, WIPO Case No. D2000-0993

(October 21, 2000); or that the complainant knew it had no rights

in the trademark or service mark upon which it relied and nevertheless brought

the complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO

Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government

in New Zealand, as Trustee for the Citizens, Organisations and State of New

Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister

of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO

Case No. D2002-0754 (November 27, 2002).

Here, it is clear that the Complainant has known and accepted since 1967, that

the Respondents have certain rights to and legitimate interest in the name Centre Le Corbusier,

the name by which the building in Zurich (and, more recently the gallery within

that building) has been known. Accordingly, the Panel declares, pursuant to

Rule 15(e), that the Complaint in relation to names 13, 14, and 17 – 20 was

brought in bad faith and constitutes an abuse of the administrative proceeding.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the following domain names be transferred

to the Complainant:

<lecorbusierfondation.com>

<lecorbusierfondation.org>

<lecorbusierfoundation.com>

<lecorbusierfoundation.org>

<fondationlecorbusier.com>

<fondationlecorbusier.org>

<foundationlecorbusier.com>

<foundationlecorbusier.org>

For the foregoing reasons, in relation to all other disputed domain names the

Complaint is denied.

Alan L. Limbury

Presiding Panelist

Pierre-Yves Gautier

Panelist

Gordon Harris

Panelist

Dated: July 4, 2003

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