WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Christian Dior Couture v. Christina Dior/Chris Vella Case No. D2009-0032 1. The Parties
1.1 The Complainant is Christian Dior Couture of Paris, France, represented by Cabinet Marc Sabatier, France.
1.2 The Respondent is Christina Dior/Chris Vella of Australia. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2009. On January 13, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2009, the Registrar 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”).
3.2 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 January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 12, 2009, sending the same by email to the Respondent's email address on record (provided by the Complainant, confirmed by the Registrar as correct, and those appearing on the Registrar's publicly available WhoIs page on the date the Complaint was notified) with a copy to an email address which appeared on the website at the disputed domain name on the date of the Notification of Respondent Default.
3.3 On February 12, 2009, the Center received an email communication from the Respondent seeking clarification with regard to the Center's default notification. On February 13, 2009, the Center sent its response to the Respondent's email, enclosing a copy of the Complaint and the Notification of Complaint and Commencement of Administrative Proceeding as sent on January 22, 2009. On the same date, the Respondent sent an email indicating, inter alia, a different postal address to which all communications should be forwarded, stating that the email and postal addresses which the Center had on record were “out of date”. On February 16, 2009, the Center sent its response, stating, inter alia, that it had commenced the panel appointment process, and informing the Respondent that his email communications will be included in the case file to be forwarded to the Panel (on appointment) for its consideration and discretion.
3.4 On February 16, 2009, the Respondent sent an email to the Complainant in the following terms:
“Hey,
I believe you guys are the one that issued the complaint?
I didnt recieve any original notification as i only monitor this one email address as its the only link on my page.
I really cant be bothered going to all the effort of fighting about stuff im happy to change the name of the site and register it as something else as long as u guys pay for it. I spent money to register it cos i have an ABN registered under this name for entertainment purposes.
If you want to go thru all the trouble of getting courts and panels to look over stuff your welcome to do it, otherwise im happy to sort this out tomorrow.
Chris Tyler
[street address omitted]
Potts Point NSW 2011”
3.5 On February 18, 2009, the Complainant, responded by email stating that it was not prepared to pay any money to the Complainant in relation to the transfer of the Domain Name.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 20, 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.
3.7 On February 20, 2009 the Respondent sent a further email to the Center, asking whether it was possible at this late stage to file a late Response. On February 23, 2009, at the Panel's direction, the Center sent an email to the Respondent in the following terms:
“Please note that the Panel in this matter has stated that it will not consider a submission filed out of time save in exceptional circumstances, and that it is for the party submitting a late submission at the time of that submission to provide an adequate explanation as to why the submission was late and why, notwithstanding the fact that it is late, it should be considered by the Panel. In the absence of the Respondent providing an adequate explanation, any late submission will not be considered (see F GmbH v. Mr. Chris Olic,WIPO Case No. D2005-0994 and the cases referred to therein). Further, regardless of the reasons given for a late submission, the Panel is unlikely to consider that submission if it is [filed] after the Panel has provided the Center with a draft of its decision. The Panel has indicated that it is likely to file a draft decision in this matter very shortly.
3.8 On February 23, 2009, the Respondent sent a document to the Center in purported response to the Complaint. It contained the following explanation for late filing:
“The reason for my late submission was due to my contact details being updated with my ISP (Internet Service Provider) and not being passed through the appropriate channels to update other facets of my inter-web portfolio, such as C. Since they are a reseller, I assumed that a correction would have been made, but clearly this has not been done. For the record and to further prove the legitimacy of the reason for my late submission, both my email and residential address has been changed since the site was registered, and then later my surname.”
3.9 The purported response did not contain the statement required by paragraph 5(b)(viii) of the Rules.
3.10 On February 24, 2009, the Complainant sent a document to the Center replying to the Respondent's purported response. 4. Factual Background
4.1 The Complainant is the well-known fashion house and luxury goods retailer. It takes its name from the influential fashion designer Christian Dior who founded the Complainant and who died in the late 1950s.
4.2 The Complainant is the owner of various trade marks that comprise or incorporate the words “Christian Dior”. These include:
(i) International Trade Mark No 134,476 filed on January 26, 1948 for the words “Christian Dior”, in classes 14, 18, 20, 23, 24, 25, 26 and 28 and designating 20 territories; and
(ii) Australian registered trade mark no. 208746 filed on March 16, 1967 in class 25 and taking the following form1:
4.3 The Complainant operates a website from the domain name .
4.4 The Respondent is an individual who resides in Australia. He is a performer who uses the stage name “Christiana Dior” for his “drag act” i.e., an act in which he is dressed up as a woman.
4.5 The Domain Name was created on December 21, 2003.
4.6 On November 10, 2008, the Complainant's French lawyers sent a letter by registered post and email, using the address and email details revealed by a WhoIs search in relation to the Domain Name, to the Respondent. That letter demanded that the Respondent cease to use the “Christina Dior” name and the Domain Name. The letter was returned marked “unclaimed”.
4.7 As at the date of the Complaint the Domain Name resolved to a website operated by the Complainant, with a picture of the Respondent dressed in drag and with links headed “Photos”, “Details”, “Schedule”, “Myspace”, “Contact” and “Dragtube”. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is “quasi-identical” to its CHRISTIAN DIOR trade mark. It refers to the decision in LouisVuitton v. Net-Promotion,WIPO Case No. D2000-0430 involving the domain name .
5.2 On the issue of rights and legitimate interests the Complainant simply asserts that the Respondent has no such rights, characterises the “Christiana Dior” as the Complainant's “nickname” and asserts that no license or other authorisation has been granted to the Respondent in relation to the use of the name,
5.3 On the issue of bad faith registration and use the Complainant:
(i) refers to a letter before action sent by the Complainant's French lawyers to the Respondent that was returned “unclaimed”;
(ii) claims that given the reputation of the Complainant it is not possible for the Respondent not to have been aware of the Complainant;
(iii) asserts that the Respondent “has choosen [sic] the nickname CHRISTINA DIOR and the domain name CHRISTINADIOR.COM in order to take advantage of the notoriety CHRISTIAN DIOR and to attract the public's attention , due to the image of luxury and feminity [sic] that the Complainant trademark carries”;
(iv) points to certain alleged similarities between the calligraphy used for the “Christina Dior” name on the Respondent's website, and that used by the Complainant in relation to the CHRISTIAN DIOR mark;
(v) claims that the use of the name “Christina” in the Domain Name, was not innocent but in order to increase traffic to the Respondent's website; and
(vi) claims that the Respondent's website contains adult content and refers to the decisions in Brown & Bigelow, Inc. v. Bostjan Rodela, NAF Claim No. 96466 and Ty, Inc. v. O.Z. Names,WIPO Case No. D2000-0370, which are said to be authority for the proposition that linkage for a domain name to pornographic content, provides evidence of bad faith.
5.4 For reasons that are described later on in this case, it is not necessary to describe the contents of the Complainant's additional submission dated February 24, 2009. B. Respondent
5.5 The Panel deals in greater detail later on in this decision with the consequences of the Respondent's failure to serve a Response on time and the fact that his purported response does not contain the requisite certification.
5.6 The purported response has not been drafted by reference to the provisions of the Policy, but instead makes a number of specific points. In particular:
(i) The Respondent asserts that he has registered Christina Dior as an Australian Business Name.
(ii) The function of his business is “entertainment, providing shows to individuals and venues”.
(iii) His business is small and his “website has minimal traffic and little recognition in local, national or international media”.
(iv) He does not see how there could be mistake between his name and that of the Complainant and there is no way in which “people could possibly mistake [his] site for [the Complainant's]”.
(v) He denies that he has ever used the Complainat's brand “ubiquity” to his advantage and asserts that his name comprises “a humorous pun used for entertainment purposes”.
(vi) He claims that he is “not out to utilize the Christian Dior brand name for fame or recognition, nor [does he] wish to associate [himself] with its image in any way in order to make money out of [the Complainant's] name”.
(vii) He repeats his offer to transfer the domain name in return for payment of re-registration of a new domain name and “a sum of money for loss of business”.
(viii) He lastly seeks to characterise the Complainant as bullying. He refers to charitable work he claims to have undertaken in relation to HIV/AIDs and claims that if the Complainant succeeds in shutting down the Respondent's website, this “will do more damage than good in the eyes of the gay and lesbian community, many [of] which support Christian Dior”.
5.7 No further evidence or documents are filed in support of these statements. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
6.4 The Panel will consider each of the three requirements of the Policy in turn, but before it does so it will briefly comment on the procedural issues arising out of the Respondent's request to file a late Response. A. The Late “Response”
6.5 As has already been described, the Respondent did not file a Response in this case on time but instead filed a document making a number of points that he asked the Panel to take into consideration in deciding this matter.
6.6 As the Panel made clear through an email from the Center dated February 23, 2009, the Respondent needs to set out the “exceptional circumstances” that would justify a late response in this case (citing the Panel's decision in F GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994).
6.7 In his initial emails to the Center, the Respondent claimed that he was not aware of the Complaint prior to February 12, 2009 because the email and real world addresses given for him in the WhoIs details for the Domain Name were “out of date”. His document of February 13, 2009, would appear to lay the blame for this on his ISP who allegedly did not properly update his “inter-web portfolio”.
6.8 The explanation provided is vague and unsubstantiated and in the Panel's view does not provide a sufficient and satisfactory explanation that would of itself justify the admission of a late Response in this case. A registrant has an obligation to ensure that the contact WhoIs details for its domain name are accurate and up-to-date. It would be contrary to the aims and spirit of the Policy if a respondent were allowed to use its own failure to comply with its obligations to slow down the progress of proceedings under the Policy by reason of its own failures in this respect. If a respondent fails to keep its WhoIs details accurate and as a consequence fails to obtain actual notice of proceedings, then to a large extent that respondent is the author of its own misfortune. If a registrant believes that that failure here is one of a third party it should bring forward cogent evidence of this. This was not done in this case. Even when provided with such evidence a panel may be unsympathetic. The responsibility here is ultimately that of the respondent. If a respondent fails to comply with its obligations in this respect as a result of a failure of a third party, it may be more appropriate to leave a respondent to such remedies as it may have against that third party as a result of that failure.
6.9 Further, there is the additional issue in this case of the failure by the Respondent to provide the necessary certification required by paragraph 5(b)(viii) of the Rules. As this Panel stated in Audiotech Systems Ltd. v. Videotech Systems Ltd.,WIPO Case No. D2008-0431, this is not a trivial matter. The Policy provides a relatively informal process of dispute resolution. It has no formal rules of evidence and panels frequently are prepared to treat as evidence assertions of fact to be found in the parties' submissions insofar as these facts can reasonably be expected to be within the knowledge of that party. In the circumstances, it is imperative that submissions contain at the very least the limited safeguard provided by paragraph 5(b)(viii). Other panels have consequentially disregarded in their entirety responses that have not been in compliance with the Rules.
6.10 That however, is not quite the end of the matter. Currently, the Respondent provides contact details for him on the website appearing from the domain name that sets out a different email address from that appearing in the WhoIs register for the Domain Name. It would appear that an eagle-eyed member of the Center's staff spotted this address at about the time of the Respondent's default and decided to copy the Center's notice of default to that address.2 It seems that it was a consequence of this email that the Respondent first became aware of this Complaint.
6.11 This is potentially an issue of significance if these contact details were available on the website operating from the Domain Name as at the date of the Complaint. This is because under paragraph 3(b)(v) of the Rules a complainant must:
“Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a).”
6.12 The wording in paragraph 3(b)(v) of the Rules is echoed in the Center's pro forma complaint form, which provides a space for a Complaint to identify “All information known to the Complainant regarding how to contact the Respondent”.
6.13 The wording of the Rules talks of the complainant's “knowledge” and does not require any proactive investigation. Nevertheless, the Panel is of the view that it is not unreasonable to expect a complainant to have at the very least looked at the website operating from the Domain Name at the time of the complaint to see if this reveals some other address (see in this respect paragraph 2(a)(ii)(C) of the Rules).
6.14 Should the Complainant's lawyers have been aware of the other email address spotted by the Center and disclosed this in the initial Complaint? The Panel cannot be certain but suspects that they should have been. A copy of a webpage operating from the Domain Name is attached to the Complaint, which appears to contain the “contact” link described in paragraph 4.7 above.
6.15 Ultimately, if the Panel had considered it necessary to get to the bottom of this matter, it might have issued a procedural order directed to the parties seeking clarification of this issue. In fact, it does not consider this to be necessary. In the particular circumstances of this case, the Panel's decision does not turn upon the admission of the “Response” and the material provided by the Respondent in large part reinforces the Panel's conclusions in this case. Therefore, as it did in Audiotech Systems Ltd, supra, the Panel has decided to admit this document and has taken this material into account in reaching its conclusions in this case, but the absence of a certification has meant that it has approached the factual statements contained in that document with a degree of scepticism and caution.
6.16 So far as the Complainant's reply to this document is concerned, the Policy and Rules do not provide for the filing of a “reply”, and the circumstances in which a non-standard submission of this sort will be considered are limited (see, for example, Hydentra, LP. v. Xedoc Holding SA, WIPO Case No. D2008-0454 and the various cases cited therein). However, it is not necessary to consider whether those circumstances apply in this case since, as will become apparent, the Panel has been able to reach a conclusion in the Complainant's favour without resort to this additional submission. B. Identical or Confusingly Similar
6.17 This issue is straightforward. The Domain Name can only sensibly be understood as the name “Christina Dior” combined with the “.com” TLD and the only difference between the second level of the Domain Name and the Complainant's CHRISTIAN DIOR word marks is the juxtaposition of the letters “n” and “a”. In the circumstances the Domain Name is confusingly similar to trade marks in which the Complainant has rights.
6.18 This is sufficient to decide this issue in the Complainant's favour, but the Panel also accepts that the Domain Name is confusingly similar to the Complainant's marks that take the form of the words “Christian Dior” in stylised text (for example, Australian registered trade mark no. 208746). C. Rights or Legitimate Interests
6.19 This is a case where the question of rights and interests is in large part bound up in the assessment of bad faith. As discussed in greater detail under the heading of bad faith, the Panel is of the view that the Respondent has registered and used the Domain Name as part of a broader scheme in which he has adopted a name similar to the Complainant's mark and with a view to making a deliberate and parodical reference to the Complainant's mark for the purposes of obtaining a commercial advantage for himself in the context of his “drag” act.
6.20 This Panel is of the view that where the parodical domain name does not sufficiently differentiate itself from the mark that it parodies (which, in this case for reasons that are subsequently explained, the Panel thinks it does not), then the fact that a parody may be intended does not provide a right or legitimate interest for the purposes of the Policy. In such a case a respondent cannot rely upon paragraph 4(c)(i) of the Policy since the offering of goods and services through the domain name, which trades on the complainant's mark, is not bona fide.
6.21 The Respondent also does not have a right or legitimate interests for the purpose of the Policy by reason of the Respondent's claimed Australian Business Name Registration. No evidence is offered in respect of this claim, but the Panel has no reason to believe this to be incorrect. However, an Australian Business Name Registration is not the same as, or to be treated as the equivalent to, a registered trade mark. It does not give the possessor of that Registration any exclusive right to use that name3 and does not of itself provide a right or legitimate interest for the purposes of the Policy.
6.22 Further, there is the assertion that the Respondent has used the “Christina Dior” name in respect of his stage activities since 2003. Again this is not evidenced but it does not strike the Panel as implausible given that the Domain Name would appear from its WhoIs details to have been registered in that year.
6.23 This perhaps raises the question whether the Respondent is able to rely upon paragraph 4(c)(ii) of the Policy which provides as an example of rights or legitimate interests:
“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;”
6.24 This provision is not without its difficulties. However, there is no need to explore them in this decision. The reason for this is that as was recently stated by the three-member panel in Intel Corporation v. Base ltd T,WIPO Case No. D2008-1820:
“ultimately if a complainant can satisfy a panel that a domain name was registered with a view to taking advantage of the goodwill in the complainant's trade mark, then the burden of proof of showing that the respondent has become “commonly known” by any name would pass to the respondent. The Respondent has chosen not to file a Response in these proceedings and in the absence of such evidence there is no need for the Panel to consider this issue further.”
6.25 In this case there is a purported response, but the statement in Intel still applies. There is insufficient evidence before the Panel on this issue.
6.26 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
6.27 The Complainant in this case has brought forward evidence to suggest that the Respondent must have been aware of the Complainant at the time he chose the stage name Christina Dior. The Panel accepts that this is the case. Further, the Panel accepts that the stage name Christina Dior was chosen because of its allusion to the Complainant's mark.
6.28 The Panel's immediate reaction when it saw the papers filed by the Complainant, and the evidence provided by the Complainant as to the Respondent's activities, was that the Respondent had adopted a stage name that was intended to involve a humorous and parodical allusion to the Complainant's trade mark4. The Respondent in his “Response” has now effectively confirmed that this was the case.
6.29 In the circumstances, the Respondent's later suggestion that he does not wish to associate himself with the image of the Complainant is, with all due respect to the Respondent, clearly nonsense. He has chosen a name which associates him with the glamour and image of the Complainant's brand and which simultaneously seeks to “subvert” (the Panel uses the term in an entirely non-judgmental sense) that brand by associating it with a drag act. It is precisely in that simultaneous association and subversion that the alleged humour lies.
6.30 Does this constitute bad faith registration and use? The Panel concludes that it did and does, but the question is a difficult one and requires further explanation.
6.31 Whilst the Respondent's choice of name involved a parodical allusion it does not distract from the fact that the Respondent has sought to adopt a name that takes advantage of the reputation that the Complainant has built up in the CHRISTIAN DIOR mark for his own commercial benefit. Quite possibly the choice of Domain Name came after the choice of stage name (the exact dates are unclear). However, this Panel is satisfied that both were part of a broader scheme to ride on the coattails of the Complainant's reputation (at least partly) for commercial gain.
6.32 The Panel makes no comment upon whether or not the choice of such a name for a drag act in anyway infringes the Complainant's trade marks under Australian law. However, it is not Australian law that is relevant here. It is merely a question of whether there is the requisite intention on the part of the Respondent so far as the registration and use of the Domain Name is concerned, to take unfair advantage of the reputation of the Complainant's mark.
6.33 The Panel believes that the Respondent has and had that intent. First, the Complainant has plainly and unambiguously asserted that the domain name was chosen with a view to increasing traffic to his website. Whilst the Respondent appears to go to great pains to deny that there is as a matter of fact any confusion or diversion, he does not address the crucial issue of his intent. This is not a pedantic point. Intent is frequently crucial in proceedings under the Policy. Further, if the Respondent had taken a moment's thought to consider what might occur if he adopted a domain name that was so similar to the Complainant's mark, he would have realised that this was likely to mean that a number of Internet users were likely to have be drawn to the Respondent's website (whether because they had misspelled the Complainant's mark when placing it into an Internet browser or otherwise). In the absence of any evidence to the contrary, the Panel is prepared to accept that the Complainant's assertions in this respect are correct.
6.34 It follows from this that the Complainant is able to show that the circumstances of paragraph 4(b)(iv) of the Policy are made out. This gives as an example of circumstances indicating bad faith:
“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 complainant's 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.”
6.35 It does not matter for the purposes of paragraph 4(b)(iv) that once an Internet user reaches the Respondent's site, it is abundantly clear that the Respondent is unconnected with the Complainant (something which the Panel accepts is the case here). It is the intentional diversion of traffic that is important here, rather than any particular harm or confusion that may or may not occur once the Internet user gets to the Respondent's site.
6.36 The Panel also considers that it does not matter in the particular circumstances of this case that the specific intention to divert may not have been the predominant motivation for registration (notwithstanding the Panel's earlier comments). In cases where a respondent upon registration has some other legitimate purpose in mind (for example the registration of domain name with a descriptive content for a business using the domain name in its descriptive sense), and knows that he will also fortuitously benefit from the existence of initial interest confusion with another's mark, matters may be very different. In such a case determining what is the primary, main or pre-dominant motivation of registration may well be very important. But that is not the case here. The Panel is satisfied that the registration is part of a broader scheme that seeks in part to take commercial advantage of the reputation of the Complainant's mark in relation to the provision of his own services. In the view of the Panel any registration that forms part of that broader scheme is a registration in bad faith regardless of the extent of the Respondent's intention to divert Internet users. Perhaps in such circumstances, the registration does not strictly fall within the scope of paragraph 4(b)(iv) of the Policy.5 However, that is not fatal to the Complainant's case as paragraph 4(b)(iv) of the Policy is simply one of a number of non-exhaustive examples of bad faith.
6.37 Claims of legitimate parodical use by a respondent have rarely been successful under the Policy6. However, there are cases under the Policy that might be said to suggest that there is no bad faith in this particular case. Perhaps the most compelling of these is the recent decision of the Panel in Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman,WIPO Case No. D2008-1267. In that case the trade mark relied upon by the complainant was HARRY WINSTON and the domain name was . The trade mark was one that was well-known for jewellery and the domain name was being used by the respondent in connection with the sale of “dog and cat supplies and accessories”. The respondent candidly admitted that it had chosen the domain name with knowledge of the complainant's mark and with the intention of gaining commercial advantage from its association with the complainant's mark. Nevertheless, it claimed that the domain name involved a parodical imitation of that mark. The panel agreed that this was so, concluded that this was not a bad faith registration and the complaint consequently failed.
6.38 As one would expect from the panelist concerned, the decision in the Harry Winston case is very well-reasoned. It has already been cited with approval in other cases (see Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. Private Registrant and Private Registrant,WIPO Case No. D2008-1234). Nevertheless, with some hesitation this Panel has formed the view that the facts are distinguishable and it does not change the outcome of this case. The reasons for this are as follows.
6.39 In the Harry Winston case the panel stated as follows:
“The area where confusion is a possibility is where an Internet user, aware of the Complainants' name and trade mark sees the Domain Name and misreads it believing it to be . In what circumstances is this likely to occur and what will be the consequence of the mistake? Where is the Domain Name likely to appear other than in an advertisement or directory entry for the Respondent's pet boutique? The Complainants do not elaborate. It seems to the Panel that in such a context the parody is likely to be appreciated for what it is. If anyone does misread the name, the mistake will be so fleeting as to be of no consequence. If the reader does not immediately appreciate the mistake, it will be because he or she is unaware of the Complainants in which case, again, the mistake will be of no consequence.”
6.40 This Panel for the most part agrees. However, as has already been explained the concern in the case primarily arises out of the initial confusion that might arise as a consequence of the diversion of Internet users to the Respondent's site. This issue the panel in Harry Winston also addresses in the following terms:
“Another possibility is that someone will type in the Domain Name by mistake when intending to type in the Complainants' name and trade mark. But this has to be a very remote possibility; ‘r' and ‘i' are several keys apart on the keyboard.”
6.41 The Panel would suggest that the position is somewhat different in the case before it. Firstly, here the difference between the Domain Name and the mark is the juxtaposition in the Domain Name of two letters that are next to one another. Although several keys apart on a keyboard, the Panel considers that it is the sort of spelling or typographical mistake that may be commonly made by unskilled typists.
6.42 Further, the panel in Harry Winston went on to consider a number of quotes from a number of United States trade mark decisions by which the panel was “most taken”7. The last of these quotes and the conclusions that followed were:
“It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting.” [Tommy Hilfiger Licensing, Inc. v Nature Labs, LLC [221 F.Supp.2d (S.D.N.Y. 2002)].
The Panel is satisfied that the Respondent's intention in registering and using the Domain Name as she has was to parody the Complainants' famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent's intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy. The Policy is intended to address clear cases of cybersquatting, and whatever else the present case may be, it is not that.”
6.43 It would appear, therefore, that the panelist in Harry Winston concluded that the change of text and meaning form “Harry” to “Hairy” would “successfully differentiate the parody from the original”. Indeed, this would appear to be how the panel in Union Square Partnership read the Harry Winston case, stating that:
“the difference between the disputed domain name (‘hairywinston' for a dog product boutique) and the complainant's famous mark (‘harrywinston' for jewelry) was part of the parody, and thus alerted Internet users at the outset that the site was not affiliated with the mark owner”
6.44 In contrast, the Panel in this case is not convinced that the change from “Christian” to “Christina” in the Domain Name does successfully differentiate the parody from the original. Not only is there simply a juxtaposition of two letters, but “Christina” is simply the feminine form of “Christian”. The fact that the Domain Name and the stage name may be parodical does become clear once the Internet user reaches the Respondent's site, but in the opinion of the Panel by then it is too late.
6.45 The Panel does not think that the comments about the Policy intending to deal with “clear cases of cybersquatting” take matters much further. As the majority of the panel stated in Aspis Liv Försäkrings AB v. Neon Network LLC,WIPO Case No. D2008-0387.
“The dissenting panelist states that the Policy was initially devised to tackle ‘cybersquatting / cyberpiracy' and that the Respondent is not engaged in this activity. Of course, what constitutes ‘cybersquatting' is hotly contested and one person's ‘cybersquatting' could be said to be another person's ‘fair use'. The majority of the Panel accepts entirely that in this case the Respondent is not engaged in ‘classic cybersquatting' in the sense of registration of a domain name that incorporates a trade mark so as to extort money out of the trade mark holder (the most prevalent form of ‘cybersquatting' at the date that the Policy was initiated). But we do not accept that the drafters of the Policy in their wisdom sought to rigidly limit the types of activity that might constitute abusive registration. For example, they deliberately left open the list of circumstances that might indicate bad faith. This task is left to panels to address on a case by case basis.”
6.46 Lastly, there is one further aspect of this case that troubles the Panel. That is the attitude of the Respondent to the question of sale. It is clear that right from the start the Respondent was willing to transfer the Domain Name if the price was right. In his email of February 16, 2009 he states:
“I really cant be bothered going to all the effort of fighting about stuff im happy to change the name of the site and register it as something else as long as u guys pay for it.”
The offer of transfer for payment is repeated in the purported “response” and on this occasion there is a reference to unspecified compensation for “lost business”. Indeed, parts of the text of the purported response can be read more as a series of reasons why the Complainant should enter into negotiations with him over the terms of sale than as answers to the points made in the Complaint.
6.47 These offers strike the Panel as somewhat odd and raise a series of concerns and issues to which the answers are not clear. The Respondent's case is that he has set up a legitimate business using a legitimately parodical name and that name is reflected directly in the Domain Name. There is no suggestion of a broader deal in which he might change the name under which he performs. So why is he prepared to change the domain name that he uses and to what will he change it? Why also does he not specify what sum of money he wants? Is it that if he does reveal the number, this will show that the Respondent is seeking to extract some value from the Domain Name that arises not out of its associations with his business but because of its confusing similarity to that of the Complaint?
6.48 The offers of sale are far from determinative of the Panel's decision in this matter. The Panel's concerns are admittedly somewhat speculative and would be insufficient by themselves to justify a finding of bad faith. Nevertheless, the offers further distinguish this case from the Harry Winston case in which it was quite clear that the respondent had no wish to sell the domain name to the complainant. It is also a factor that the Panel is entitled to take into account when it comes to its overall assessment of the issue of whether bad faith is present in this case.
6.49 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.50 In coming to its conclusions there are a number of factors that the Panel has not taken into account. First, there is the Complainant's contention that the Domain Name has been used to link to pornographic material. Leaving aside the question of whether linkage to such material shows bad faith (and the Panel would merely comment that the Complainant's assertions in this respect are far too simplistic), the Complainant does not attach to the Complaint any evidence to support that assertion.
6.51 Second, the Panel has also taken no account of the Respondent's assertion that any decision against him will do the Complainant more damage than good in the “eyes of the gay and lesbian community”. The Panel has no idea whether that assertion is true. However, even if it is, that is a commercial question for the Complainant, which it no doubt took into account when deciding to commence these proceedings. It is not relevant to any assessment of bad faith (save perhaps that this provides a good example of the reasons offered by the Respondent as to why the Complainant should purchase the Domain Name, which are mentioned in paragraph 6.46 above). 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: February 27, 2009
1 Why it is that the Complainant sought to single this mark out from its many Australian marks is unclear. However, the Panel also notes that the Complainant is also the owner of at least one other plain word mark in Australia for the words “Christian Dior”; i.e. registered trade mark no. 245421.
2 From the case file material that the Panel has seen it would appear that at the time that the Complaint was notified by the Center the website operating from the Domain Name was temporarily down and therefore this information was not available at that time. The relevant individual at the Center is therefore to be commended for both re-checking this and spotting the relevant email address at the time that the Notice of Default was sent.
3 See, for example, the explanation of business names accessible on the Australian governmental website available at .
4 For example, the Complainant's evidence contains other examples of punning names for drag artists, some of which are somewhat cruder in nature.
5 It depends upon the extent to which the test in of paragraph 4(b)(iv) contains an objective element. For an example of a case in which the panelist thought that it did, see the Harry Winston case discussed in greater detail in this decision.
6 As at the date of this decision 14 cases are listed under the heading “II.B.4.b(ii).Parody Sites” in the “Index of WIPO UDRP Panel Decision”. In all of those cases the panel ordered that the relevant domain names be transferred.
7 However, it is important to note that the panel in Harry Winston was not saying that United States trade mark law was relevant to the assessment of bad faith. Indeed, it expressly disclaimed any knowledge of whether or not there was infringement.
Full & Egal Universal Law Academy