WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi Adele S.r.l v. Manfred Fandl
Case No. D2007-1432
1. The Parties
The Complainant is Fendi Adele S.r.l of Rome, Italy represented by Simone & Partners S.p.A., Italy.
The Respondent is Manfred Fandl of Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 28, 2007. On September 28, 2007, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On October 5, 2007, PSI-USA, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 28, 2007. The Response was filed with the Center on October 23, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 5, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is well-known internationally as a prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion.
The Complainant owns numerous FENDI trademarks throughout the world, including international registration No. 426,761 FENDI of December 1, 1976 and Community trademark registration No. 003500535 FENDI of May 27, 2005 (the “FENDI Marks”).
The Respondent is a natural person domiciled in Austria and working as a professional fire fighter at the Vienna Fire Department. The disputed domain name was registered by the Respondent on August 7, 2006 and is not currently used in connection with any content.
The Complainant sent a cease and desist letter to the Respondent on September 28, 2006 asking him to immediately cancel or transfer the domain name. The Respondent replied stating that the domain name was registered for private purposes only and that it was not in use at that time. However, the Respondent offered the transfer of the domain name against payment of the Respondent’s lawyer’s costs and the Respondent’s costs connected with the cancellation of the domain name in the amount of EUR 1,240.84. The Complainant did not reply to this letter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the famous FENDI Marks in which the Complainant has rights because the trademark has been incorporated in its entirety into the contested domain name and is followed simply by a generic commercial term, describing the Complainant’s clientele. As a result, the Complainant contends that likelihood of confusion exists.
(2) The Respondent has no rights to or legitimate interests in the domain name as he has not been authorized by the Complainant to use the FENDI Marks or variations thereof or to register corresponding domain names. The Complainant further contends that the Respondent does not bear the name FENDI (but FANDL) and is not commonly known either by the name FENDIMAN. Thus, the Respondent cannot have any rights or legitimate interests in respect of the domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that the Respondent must have been aware of the Complainant’s rights in the well-known FENDI Marks at the time it registered the domain name.
With regard to bad faith use, the Complainant contends that the Respondent’s passive holding of the domain name amounts to illicit use.
B. Respondent
The Respondent denies that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Respondent contends that the name “FENDIMAN” is not connected with the Complainant.
(2) The Respondent alleges that “FENDI” or “FENDIMAN” is a nickname given to him by his colleagues soon after he started work at the Vienna Fire Department in 1986 and that he has used this nickname on the Internet since April 3, 2001 in various forums.
(3) The Respondent denies that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Respondent contends that he searched the Internet for the name FENDIMAN before he registered the domain name without finding any information on the Complainant. Furthermore, the Respondent contends that he only knew the street “Fendigasse” in Vienna, which is named after the Austrian painter Mr. Peter Fendi, at the time of the registration of the domain name and that he had no knowledge of the Complainant until he received its cease and desist letter in September 2006. Furthermore, the Respondent denies that the Complainant’s FENDI Marks are well-known in Austria and contends that he has never seen any advertisements from the Complainant.
With regard to bad faith use, the Respondent alleges that the domain name was registered for private purposes to share private files (containing e.g. photographs) with friends. Finally, the Respondent contends that he has no commercial interest in the domain name and is not going to use the domain name in connection with an active website, to incorporate the Complainant’s trademark.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive FENDI Marks in which the Complainant has exclusive rights.
The mere addition of the generic word “man” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology,WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent lacks rights or legitimate interests.
However, the Respondent has provided the following evidence in order to prove that he has been using the nickname “FENDIMAN” at least since 1988:
- Ten statements by employees of the Vienna Fire Department, confirming that they know the Complainant under the nickname “FENDIMAN”;
- Printouts from Internet websites showing the Respondent’s use of the name “FENDIMAN” on the Internet.
Furthermore, the Complainant also provided websites with evidence of the Respondent’s use of the nickname “FENDIMAN” on the Internet.
It is well established that a nickname can also satisfy the requirement of paragraph 4(c)(ii) of the Policy if it can be proven that the Respondent has verifiably used such name over a longer period of time (cf. PENGUIN BOOKS LIMITED v. THE KATZ FAMILY and ANTHONY KATZ,WIPO Case No. D2000-0204; Technology Properties, Inc. v. Design Shack, NAF Case No. FA94807; Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766; Gambro AB, Gambro Lundia AB and Gambro Healthcare, Inc. v. Family Health & Wellness Center,WIPO Case No. D2001-0447; Gordon Sumner, p/k/a Sting v Michael Urvan,WIPO Case No. D2000-0596).
In the view of the Panel, the Respondent has provided conclusive evidence that he has been known under the name “FENDIMAN” at least since 1988 and has been actively using such name at least since 2001. Therefore, the Panel concludes that the Respondent is commonly known by the name “FENDIMAN” and had already been commonly known under such name at the time he registered the domain name and therefore has established a legitimate interest in the domain name under paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Policy requires that the Complainant proves all elements of paragraphs 4(a)(i-iii) of the Policy. Thus, since the Complainant has failed to prove that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) of the Policy, the Panel need not discuss whether the Respondent registered and/or used the disputed domain in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: November 19, 2007
Full & Egal Universal Law Academy