WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dolce & Gabbana s.r.l. v. Couture Industry, Trent Rezor Case No. D2008-1850 1. The Parties
The Complainant is Dolce & Gabbana s.r.l., Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Couture Industry, Trent Rezor, Wesley Chapel, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2008. On December 2, 2008, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On December 2, 2008, R 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” or “UDRP”), 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 December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. On December 10, 2008, the Center received an informal email communication from the Respondent. Further on December 22, 2008, the Center received an email communication from the Complainant enclosing email communications from the Respondent.
The Respondent did not submit a formal Response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on January 14, 2009. 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 the Rules, paragraph 7. 4. Factual Background
The Panel will not make any findings of fact here, for the reasons explained below. 5. Parties' Contentions A. Complainant
The Complainant alleges that “Dolce” and “Gabbana” are the last names of the two famous stylists who founded the Dolce & Gabbana company. The Complainant is the exclusive licensee of numerous trademarks DOLCE & GABBANA. The mark is famous around the world.
According to the Complainant, its mark and the disputed domain name are identical, since the character “&” has the same meaning as the word “and”.
The Complainant states that the Respondent was not authorized by the Complainant to use its marks and that it is not commonly known by a name related to the disputed domain name.
The Complainant alleges that the Respondent registered the disputed domain name with the intent to attract Internet users to its website by trading on the goodwill of the Complainant's mark.
The Respondent uses the disputed domain name for a web site that consists of a single page, displaying some photographs and stating: “THIS GALLERY FEATURES THE ARTWORK OF JOSEPH AMES, PROTIGE AND REINCARNATION OF THE GREAT ANDY WARHOL”.
According to the Complainant, the Respondent intended to use the web site for commercial gain by selling Mr. Ames' works of art, but also clothing and bags with the name “Seventeen Evening & Prom Bags”. Such use is not bona fide use under the Policy.
The Complainant alleges that the Respondent registered and used the disputed domain name in order to trade off the Complainant's reputation by creating a false association between the web site at the disputed domain name and the Complainant's trademark, so as to attract Internet users to the Respondent's web site. This constitutes bad faith registration and use in the sense of the Policy.
The Complainant notes that the web site at the disputed domain name does contain the disclaimer: “This website is not associated in any manner with D&G, Dolce and Gabbana Fashions”, but states that the presence of such a disclaimer is not sufficient to avoid a finding of bad faith use of the disputed domain name. B. Respondent
Although the Respondent did not submit a formal Response, the Panel considers that its email communications constitute a Response. Those communications are reproduced below.
On December 10, 2008, the Center received an informal email communication from the Respondent stating:
“Please note that we have not profited or sold any thing from this domain, no links, nothing. I just displayed my art.”
On the same date, the Respondent sent an email to the Complainant stating:
“I have seen your complaint. Please note that I have not even looked at the web site in years, in fact I forgot all about it. Anyway how, I notified R yesterday to remove ‘' from my account, and you can do whatever you want to do with it. You should have contacted me directly, it would have saved you all of this time. I always believe in handling situations like this amicably. Anyhow, the domain is all yours.” (Emphasis added) 6. Discussion and Findings
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” (emphasis added).
In this case, the parties have both asked for the domain name to be transferred to the Complainant. This Panel holds that in this UDRP proceeding, having regard to a general legal principle governing arbitrations as well as national court proceedings, it would not be appropriate for it to act nec ultra petita nec infra petita, that is, it should not here issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of compliance (or not) with the three requisite elements of the Policy.
A similar conclusion was reached by the panel in Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, NAF Claim No. FA 133625 (January 9, 2003); in Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, NAF Claim No. FA170616 (September 5, 2003); and in United Pet Group, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1039 (September 25, 2007). See also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. FA 212653 (January 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enterprises, Inc. v. Morales, NAF Claim No. FA 475191 (June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). A. Identical or Confusingly Similar
For the reasons indicated above, the Panel need not consider this element of the Policy. B. Rights or Legitimate Interests
For the reasons indicated above, the Panel need not consider this element of the Policy. C. Registered and Used in Bad Faith
For the reasons indicated above, the Panel need not consider this element of the Policy. 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 disputed domain name be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: January 16, 2009
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