The Complainant is Dolce & Gabbana s.r.I. of Milan, Italy, represented by Studio Legale Turini, Italy.
The Respondent is Independent Digital Artists of Los Angeles, California, United States of America, represented by Rodenbaugh Law, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On May 20, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same date, 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”).
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 May 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. The Response was filed with the Center on June 15, 2010.
The Complainant submitted further submissions in reply to the Respondent’s Response on June 18, 2010. The Center subsequently advised the Complainant on June 18, 2010, that no express provision under the Policy permits supplemental filings by either party. The admissibility of the Complainant’s supplemental filing was left to be determined by the Panel.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 24, 2010. 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.
On July 30, 2010, the Center issued an Administrative Panel Order asking the Respondent to provide supplemental submissions relating to the use of the domain name in connection with marketing and business activities. The Respondent filed Supplemental Submissions in the form of the Shokrian Declaration and three supporting affidavits in the name of Blaine Russel, George Afansev, and Cyrus Nikou on August 5, 2010. The Complainant’s authorized representative provided a response to the Supplemental Submissions on August 10, 2010, emphasizing the fact the Respondent’s Supplemental Submissions were not received by the Complainant until August 9, 2010. On August 10, 2010, the Panel issued a further order extending the time for the filing of the Complainant’s response to the Supplemental Submissions to August 15, 2010. On the same date, the Complainant’s authorized representative sent an email communication indicating that as she was out of the office, she would not be able to file a further reply. The Panel nonetheless issued another order granting the Complainant until August 20, 2010 to file a reply. No further reply or filings were received from the Complainant. 4. Factual Background
The Complainant holds the exclusive license to manufacture, distribute and sell clothing and accessories which have been designed by Domenico Dolce and Stefano Gabbana. The Complainant owns many trademark registrations in more than 90 countries around the world. In particular, the Complainant owns the following trademark registrations:
- D&G DOLCE & GABBANA - International Trademark Registration No. 628886 dated June 7, 1994.
- D&G DOLCE & GABBANA - International Trademark Registration No. 652614 dated November 16, 1995.
- D&G (Design) - International Trademark Registration No. 872676 dated May 20, 2005.
- D&G DOLCE & GABBANA (Design) - International Trademark Registration No. 974309 dated July 22, 2008.
- D&G (Design) - Community Trademark Registration No. 452359 dated September 10, 1996.
The Complainant also owns at least one trademark registration for the D&G Design trademark in the United States of America, where the Respondent is apparently located (Complaint, Annex 6).
The Complainant’s DOLCE & GABBANA and D&G trademarks have been used and promoted in connection with upscale clothing and accessories in many countries around the world.
The disputed domain name was first registered on November 17, 2003, and for approximately 6 years, it was used in connection with a website for a business called David & Goliath Advertising Agency or D&G Advertising. The Respondent acquired the disputed domain name from a third party on February 24, 2010, who in turn had purchased the disputed domain name by public auction. At the time the Complaint was filed, the disputed domain name reverted to a one page website which featured the Respondent’s “D&G” Marketing logo. Shortly after acquiring the disputed domain name, the Respondent contacted 6 different D&G-related businesses, including the Complainant, to solicit offers to purchase the disputed domain name. The Complainant and Respondent exchanged correspondence about the proposed assignment of the disputed domain name, but were unable to reach an agreement. The Respondent sought payment in the amount of USD100,000. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that it is the owner of the famous D&G trademark, as evidenced by the numerous trademark registrations submitted with the Complaint, including International Trademark Registration Nos. 628886, 652614, 872,676, 974309 and Community Trademark Registration Nos. 452359, 1256551 and 3372141.
The Complainant further submits that the word “and” is commonly used to denote the ampersand symbol in domain names, because the “&” symbol cannot at this time be used under typical domain name protocols. Therefore, the Respondent’s use of the common word “and” between the letters “d” and “g”, creates the functional equivalent of the Complainant’s trademark D&G.
Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s D&G trademark. Rights and Legitimate Interests
The Complainant contends that the D&G trademark is considered to be famous in the area of fashion, as a number of panelists have acknowledged in several decisions (see Dolce & Gabbana S.p.A. v. Victory ,WIPO Case No. D2001-1174; Gado S.à.r.l e Dolce & Gabbana S.r.l, c. Antares S.p.a., WIPO Case No. D2007-1564).
In particular, the Complainant relies on substantial sales figures for the year 2008, which were approximately €1,266.6 million. Wholesale revenues reached €1,652.1 million, of which 45% represents the D&G brand and 55% represents the DOLCE&GABBANA brand. Sales of this magnitude support the argument that the Complainant’s D&G trademarks are well-known and that the Respondent must have known about the Complainant’s trademark rights when the disputed domain name was acquired by the Respondent.
The Complainant submits that the Respondent is not commonly known by D&G Marketing, and that no actual business exists under the D&G Marketing name. The Complainant submits that the Respondent is commonly known as Independent Digital Artists Studio or the acronym IDA.
The Complainant further submits that the Respondent was not authorized or licensed to use the D&G trademark, and that the Respondent’s use of the disputed domain name evidences a deliberate intention to attract Internet users to the Respondent’s website by trading on the goodwill of the Complainant’s trademark. Registered and Used in Bad Faith
The Complainant submits that the Respondent registered and used the disputed domain name for the following reasons: (i) the Respondent registered and is using a confusingly similar domain name for the purposes of targeting the trademark owner for resale for monetary gain; and (ii) the Respondent registered and is using a confusingly similar domain name for the operation of a website to interfere with the Complainant’s business by directing Internet users looking for the Complainant’s site to the Respondent’s site and interfering with the registration of the domain name by the Complainant. B. Respondent Identical or Confusingly Similar
The Respondent contends that the letters “D” and “G” are the initials of millions of individuals and business names throughout the world. As such, the Complainant cannot claim exclusive right to the initials “D” and “G”.
The Respondent submits that the Complainant has not offered proof of any United States (“U.S.”) trademark registration for the trademark D&G. The Respondent contends that the Complainant has put into evidence only International and Community Trademark Registrations and no evidence of trademark rights in the U.S. where the Respondent is located.
The Respondent contends that because the Complainant has not proved enforceable trademark rights in the U.S., and because the initials “D” and “G” are very common, the disputed domain name is not confusingly similar to the Complainant’s trademark D&G. Rights and Legitimate Interests
The Respondent submits that it had a legitimate interest in owning the disputed domain name, which is composed of two of the twenty-six letters of the English alphabet, and the common word “and”. The Respondent claims to have purchased the disputed domain name on February 24, 2010 with the intention of operating a marketing firm called D&G Marketing, standing for David & Goliath. The Respondent has submitted evidence of the Respondent’s D&G logo, letterhead, business cards and an e-mail address, and evidence of marketing the D&G Marketing business through Facebook and Twitter. The Respondent contends that its evidence supports the conclusion that the Respondent has a legitimate interest in the disputed domain name.
The Respondent contends that the short time frame from the time the Respondent acquired the disputed domain name to the date of the Complaint, explains the undeveloped state of the D&G Marketing business. The Respondent directs the Panel to several UDRP decisions which state that the lack of an active website is of little relevance to legitimate interests (see Casual Corner Group, Inc. v. Neil Young, NAF Claim No. 95112.)
The Respondent further submits that it is in the business of acquiring domain names, creating corporate logos and branding programs, and selling the entire branded portfolio (including the domain name) to interested buyers. This practice of buying and selling domain names and developed portfolio is characterized as a legitimate interest under the Policy. Registration and Use in Bad Faith
The Respondent submits that it was not aware of the Complainant’s rights in the D&G trademark. The Respondent further submits that it acquired the disputed domain name for the purposes of running a marketing business under the name D&G Marketing. In any event, the Respondent contends that the purchase of a domain name for purposes of resale is not evidence of bad faith in and of itself. The Respondent submits that it did not target the Complainant, but sent inquiries to several companies that used the initials “D” and “G”, and that this offering for sale of the disputed domain name to several entities is evidence of good faith. Furthermore, the offering for sale of the disputed domain name for more than the cost of registration is not evidence of bad faith per se. The disputed domain name was purchased by Respondent after it had been registered and used for many years, in the marketing field, thereby acquiring significant value which had nothing to do with the Complainant’s business. Therefore, in all the circumstances, the Respondent contends that the offer to sell the disputed domain name to Complainant for USD100,000 is not evidence of bad faith. The Respondent also filed supplemental evidence in the form of brief sworn statements from three identified customers, to whom it claims to have proposed business services under the D&G name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As a preliminary matter, the Panel finds unnecessary the Complainant’s supplemental filing regarding the ownership of trademark rights in the United States of America; the provided evidence of such rights have no immediate bearing on the Panel’s finding in any case, as discussed further below. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the D&G trademark by the evidence submitted in the Complaint. The Complainant owns many trademark registrations for the trademark D&G, including International Trademark Registration Nos. 628886, 652614, 872676, Community Trademark Nos. 452359, 1256551, 3372141 and 3372547, and U.S. Trademark Registration No. 3,108,433. These registrations are clearly sufficient to establish trademark rights in the D&G trademark.
The Panel finds that the disputed domain name is in fact the functional equivalent of the trademark D&G, and accordingly it can reasonably be viewed as a virtual replication of the Complainant’s D&G trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel’s assessment of the evidence filed in these proceedings is that it sets out the history of this domain name as follows:
1. The disputed domain name was registered in November 17, 2003. The disputed domain name was registered and used by David & Goliath Advertising Agency or D&G Advertising for over 6 years. From the case record, no complaint appears to have been made against the disputed domain name over this period.
2. The original domain name registration expired, and the disputed domain name was then sold by public auction. At that point, the disputed domain name was purchased by a third party, who then in turn sold it to the Respondent on February 24, 2010.
3. The Respondent acquired the disputed domain name, according to the submissions filed for the purpose of (i) operating a marketing business under the name D&G Marketing; and (ii) for the purpose of reselling the disputed domain name for a profit.
4. On March 12, 2010, sixteen (16) days after acquiring the disputed domain name, the Respondent sent e-mails soliciting 6 different “D&G” businesses offering to sell the disputed domain name.
5. In the relatively short period from the date of acquisition (February 24, 2010) to the commencement of these proceedings (May 10, 2010), the Respondent has taken some preliminary steps towards setting up a business. These preliminary steps include what could reasonably be viewed as typical conduct for the early stages of any business: for example, preparation of business cards and letterhead with a logo. As such, these steps do not carry significant weight in terms of proving the operation of an actual business. However, the Respondent also established temporary Twitter and Facebook accounts which promoted its D&G Marketing business in the field of online marketing. The Respondent has furnished evidence of 435 followers on Twitter. In its supplemental evidence, Respondent provided an affidavit and brief supporting statements from three potential customers, describing how D&G Marketing has promoted its business in association with the D&G name over the past few months. Although the evidence is somewhat thin in terms of proving business activity in the conventional sense (i.e. customers and revenues), it is significant for one consistent point: nothing in the Respondent’s website, printed materials, logo, graphics, or social networking sites makes any reference to the business of Dolce & Gabbana or to the fashion and design fields where the Complainant operates. All the evidence is in fact, consistent with the Respondent’s position that it is in the early stages of setting up an online marketing venture, with the possibility that it may sell the disputed domain name as part of its portfolio of domain names.
The Respondent has also brought forward evidence that the letters “D” and “G”, and the combination “D&G” are commonly adopted business identifiers in the U.S. market and elsewhere. The Respondent has identified many users of the “D&G” business name in the Los Angeles area alone, and notes that there are multiple trademark registrations for D&G in the U.S. and in Europe for a variety of products and services. Five of the businesses (other than the Complainant) approached by Respondent to solicit offers for the disputed domain name appear to have their own legitimate interests in using “D&G” as part of their operating names, (e.g. D&G Sports – California).
Bearing in mind that the burden of proof is on the Complainant to establish the absence of a right or legitimate interests on the part of the Respondent, in this Panel’s opinion, the evidence in its totality favours the Respondent. On the balance of probabilities, based on the evidence filed in this matter, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, in all of these circumstances, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.
In making its finding for the Respondent, the Panel nevertheless acknowledges that on the basis of a more complete evidentiary record and with the benefit of cross-examination, a Court or tribunal could reach a different conclusion. In the UDRP process, the Panel is limited in terms of the ability to test the evidence put forward by the parties. In many cases, the proof of abusive registrations is relatively straightforward. However, when a respondent provides (what ultimately proved to be) sworn evidence contesting the complainant’s essential allegations, with supporting documentation, and that evidence is not subject to cross-examination, and the complainant has been unable to put into the record contrary evidence or argument sufficient to rebut or call into question the veracity of that provided by the respondent despite being offered the opportunity to do so, the burden on the complainant to satisfy all elements under the policy is obviously difficult to meet. That was the particular challenge faced by the Complainant in this matter. C. Registered and Used in Bad Faith
In light of the Panel’s findings on rights and legitimate interests, it is not necessary to consider bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: August 25, 2010
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