In Dolce & Gabanna v Independent Digital Artists, a case brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), Dolce & Gabbana s.r.l., the well known Italian fashion company, failed to obtain the domain name, despite its trade marks in the term D&G, as the respondent, Independent Digital Artists, was able to convince the Panel of its rights and legitimate interests in the domain name.
The Domain Name was first registered in 2003 and used for approximately six years in connection with a web site for a business called David & Goliath Advertising Agency or D&G Advertising. Then it was purchased by the respondent in 2010 from a third party who had bought it via public auction. Shortly after acquiring the domain name, the respondent contacted six different businesses who were using the letters D&G, including Dolce & Gabanna, with the intention of soliciting offers to purchase the domain name. The complainant and the respondent were unable to reach agreement on price because the respondent was seeking $100,000, and so the complainant filed a complaint under the UDRP.
To be successful in a UDRP procedure, a complainant must show that:
(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; 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.
As for the first limb of the UDRP, the complainant evidenced that it had numerous trade marks in the term D&G and the Panel found that the domain name was in fact the functional equivalent of this term. Thus it could reasonably be viewed as a virtual replication of the trade mark and so was confusingly similar for the purposes of the UDRP.
Despite establishing confusing similarity, the complainant still had to prove that the respondent had no rights or legitimate interests in the domain name under the second limb referred to above. In general, whilst the overall burden of proof rests with complainants, panels have recognized that this may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore complainants are simply required to make out a prima facie case that respondents lack rights or legitimate interests. Once such prima facie case is made, it is the respondent who carries the burden of demonstrating rights or legitimate interests in the domain name.
In this case the complainant made out its case by asserting that the respondent was neither commonly known by the acronym ‘D&G’, nor a licensee of the complainant. However, the respondent submitted evidence that it had purchased the domain name with the intention of operating a marketing firm called D&G Marketing, short for David and Goliath, as per the previous use of the domain name. It submitted evidence of its D&G logo, letterhead, business cards, an e-mail address and evidence of marketing the business through Facebook and Twitter. The respondent also supplied an affidavit and brief supporting statements from three potential customers.
With regard to its attempt to solicit an offer to purchase the domain name shortly after obtaining it, the respondent explained that it was in the business of acquiring domain names, creating corporate logos and branding programs, and selling entire branded portfolios (including domain names) to interested buyers. According to the respondent, this was viewed as a legitimate interest under the Policy.
The Panel acknowledged that the evidence provided by the respondent was ‘somewhat thin in terms of proving business activity in the conventional sense’. However, despite the respondent’s failure to prove the operation of an actual business, the Panel attached decisive importance to the respondent’s lack of intention to make any reference to the complainant’s business or even to the fashion and design fields where the complainant operated. In the Panel’s opinion, all the evidence was consistent with the respondent’s position that it was in the process of setting up an online marketing business, with the possibility that it may sell the domain name as part of its portfolio.
The Panel also thought it was relevant that the letters ‘D’ and ‘G’ and the combination ‘D&G’ were commonly adopted as business identifiers in the US market and elsewhere. Indeed five of the businesses approached by the respondent with a view to soliciting an offer for the domain name would appear to have had a legitimate interest in using the letters ‘D’ and ‘G’ as part of their operating name.
As a result, the Panel accepted that the respondent had rights and legitimate interests in the domain name. Therefore the complaint failed without the need for consideration of bad faith under the third limb of the UDRP. However, the Panel drew attention to the fact that a court or tribunal could have reached a different conclusion on the basis of more complete evidence. In the Panel’s view it was difficult for the complainant to contest the respondent’s sworn evidence in a procedure such as the UDRP.
The Panel’s closing remarks underline the fact that the case was a difficult one and could have gone either way based on the facts at hand. If the respondent had failed to respond or failed to supply detailed evidence it is possible that the Panel could have found against it. As the Panel pointed out, on the face of it the respondent’s assertions were somewhat thin, but clearly the respondent managed to do just enough to convince the Panel that a business was really being planned and that the evidence was not merely a montage designed to camouflage the respondent’s real intentions and hoodwink the Panel. The case thus illustrates the importance of submitting detailed evidence when responding to a UDRP complaint, particularly in relation to the issue of rights and legitimate interests in the domain name.
David Taylor is a Partner at Hogan Lovells International LLP in the Intellectual Property, Media and Technology Group in Paris. He specialises in Internet-related intellectual property, and in particular the protection of brands online. He heads up the International Domain Name Practice, which covers the registration, recovery and protection of domain names and clients’ rights in over 160 jurisdictions. Jane Seager is Counsel at Hogan Lovells International LLP in Paris and works closely with David.
