WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donna Karan Studio v. Raymond Donn
Case No. D2001-0587
1. The Parties
The Complainant is Donna Karan Studio, a corporation having its principal place in New York, New York, USA.
The Respondent is Mr. Raymond Donn, an individual with an address in Whitefield, Manchester, England.
2. The Domain Name and Registrar
The domain name at issue is <dknyjeans.com>. The domain name registrar is Domain Bank, Inc.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on April 23, 2001, and in hard copy on April 25, 2001.
On April 25, 2001, the Center transmitted a request for register verification to Domain Bank, Inc. in connection with this case.
On April 26, 2001, Domain Bank, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant as well as the administrative, technical and zone contact.
On April 26, 2001, the Center notified Complainant that its Complaint was deficient.
The Center received Complainant's amendment to the Complaint by e-mail on April 26, 2001, and by hardcopy on April 30, 2001, resolving the deficiency.
On May 1, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On May 1, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by May 20, 2001. The notification was sent to the Respondent by courier, fax and by email.
The Respondent filed its Response with the Center by email on May 18, 2001, and by hard copy on May 21, 2001.
Complainant filed a Reply with the Center by email on June 5, 2001, and in hardcopy on June 7, 2001.
Respondent filed a Response to Complainant's Reply with the Center by email on June 6, 2001.
Respondent filed a further email on June 12, 2001.
Complainant elected a one-member Panel. On May 31, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist and set June 13, 2001, as the deadline for issuance of a decision. The deadline was extended to June 27, 2001.
4. Procedural and Factual Background
Both parties filed submissions in this matter dealing with the issue of "without prejudice" communications without the invitation of the Panelist. This is contrary to paragraph 12 of the Rules. Accordingly, the Panelist has decided not to take these submissions into consideration in this case.
Respondent's Procedural Statements
The Respondent objects to the jurisdiction of this administrative procedure on two grounds:
"Firstly the Respondent denies that he was notified of the requirement to resolve disputes in this manner in this matter and any such terms and conditions were not brought to his notice. Secondly these proceedings have been tainted with unfairness arising from unlawful and unfair use by the Complainant of information and confidence which was provided without prejudice. Please see the Complainants exhibit M which clearly confirms that all email correspondence was on a without prejudice basis…"
Complainants' Factual Statements
The following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"The Complainant, Donna Karan Studio, is the exclusive licensee of the trademarks consisting of or including the name or initials of Ms. Donna Karan, one of the world's best known and most esteemed designers of fashion and related accessories…In 1996, Ms. Karan assigned the trademarks consisting of or including her name or initials to Gabrielle Studio, Inc. ("Gabrielle"), and Gabrielle, in turn, granted Complainant an exclusive license to use and to sublicense the use of the trademarks throughout the world...Complainant licenses the use of the trademarks to various companies, including The Donna Karan Company ("The Company"), of which Ms. Karan is the head designer…
In 1988, after four highly successful seasons with Ms. Karan's main collection marketed under the trademark DONNA KARAN NEW YORK, The Company launched a second more moderately priced line of clothing and accessories under the trademark DKNY. DKNY, of course, is both a trademark in its own right and an abbreviation of the trademark DONNA KARAN NEW YORK...there are now over sixty freestanding DKNY retail stores worldwide, including in Respondent's hometown of Manchester, England.
In 1998, The Company expanded on the success of its DKNY line by launching a new line of clothing under the trademark DKNY JEANS, a trademark previously used by the Company on selected clothing items, and opening several DKNY JEANS stores…
Goods from the DKNY JEANS line of clothing and accessories are marketed and sold with labels and hang tags bearing the trademark DKNY JEANS. Goods from the DKNY line bear the trademark DKNY alone or the trademark DKNY Logo. The DKNY Logo is comprised of the trademark DKNY and the trademark DONNA KARAN NEW YORK with a dot under the first letter of each word.
The trademarks DKNY, DKNY Logo and DKNY JEANS have been registered for clothing and related fashion accessories (such as footwear, sunglasses, leather goods, and jewelry) in approximately 80 countries throughout the world, including in the United Kingdom, the European Union and the United States…
Clothing bearing the trademarks DKNY and DKNY Logo was first marketed and sold in the United States in 1988, well before Respondent registered Respondent's domain name <dknyjeans.com>. Since that time, DKNY clothing and related goods have been marketed and sold in many other countries throughout the world, including in the United Kingdom…
Clothing bearing the trademark DKNY JEANS was first marketed and sold in the United States in 1991, also well before Respondent registered Respondent's domain name <dknyjeans.com>. Since that time, DKNY JEANS clothing and related goods have been marketed and sold in many other countries throughout the world, including in the United Kingdom…
The DKNY collection of fashion and related products has been enormously successful worldwide…
The Company advertises its DONNA KARAN NEW YORK, DKNY and DKNY JEANS products on the Internet through numerous domain names including <dkny.com> and <donnakaran.com>. Until the end of 2000, The Company owned the domain name <dknyjeans.com> and operated a web site on which it marketed DKNY JEANS products…The Company inadvertently allowed its domain name registration to lapse.
Respondent appears to have registered the <dknyjeans.com> domain name immediately after The Company's registration had lapsed."
5. Parties’ Contentions
Complainant and Respondent make the following allegations in the Complaint and Response.
A. Similarity of the Domain Name and Trademark
In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant alleges that:
"The relevant portion of Respondent’s domain name <dknyjeans.com> is identical or confusingly similar to the registered trademarks DKNY, DKNY Logo and DKNY JEANS in which Complainant has exclusive rights. Not only is it exactly the same as the DKNY JEANS mark, but it also includes the entirety of the DKNY mark combined with the term jeans, which is one of the products sold by Complainant's licensees under the famous marks."
The Respondent accepts that:
"the name is similar to the registered trade mark in which the Complainant has rights. This however is not a bar to his rightful ownership of the name in question."
B. Respondent's Rights and Legitimate Interests
Complainant contends that the Respondent has no rights or legitimate interests in the domain name on the basis of the following elements:
"Respondent does not own a trademark or service mark registration that is identical, similar, or in any way related to the DKNY, DKNY Logo or DKNY JEANS marks or the <dknyjeans.com> domain name.
Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant or Gabrielle to use the trademarks for which Complainant is the exclusive licensee.
Neither DKNY nor DKNY JEANS is Respondent’s personal name and Respondent's initials are not DKNY. Respondent is not engaged in any business or commerce under the names DKNY or DKNY JEANS.
Respondent does not currently use the domain name <dknyjeans.com> in connection with any bona fide offering of goods or services. Instead, …the web site currently associated with the domain name <dknyjeans.com> is inactive…Respondent admitted that he does not have a website connected with the domain name [in a letter] dated February 6, 2001 [Exhibit K]…"
The Respondent asserts that:
"he has a legitimate interest in the domain name. He has the same interest as any person who legitimately registered a domain name that has been abandoned. It was more than three months after the Respondent had registered the name that he was first contacted. This time lapse shows at a minimum the lack of interest of the Complainant."
C. Bad Faith Registration and Use
Complainant claims that the domain name was registered and used in bad faith by the Respondent and relies on the following elements:
"Upon information and belief, Respondent registered the domain name <dknyjeans.com> in December 2000, with knowledge of the famous DKNY, DKNY Logo and DKNY JEANS trademarks, after The Company's registration for the domain name had inadvertently been permitted to lapse. Respondent's actual awareness of the trademarks is evident in his statements to Complainant's in-house counsel that he is "a follower of Donna Karan fashion and a good customer of yours . . . ." and that he is a regular customer at the DKNY store in Manchester, England. Furthermore, Respondent admitted his actual awareness that The Company was operating a web site at <dknyjeans.com>, stating, "You originally had a website with the use of the domain name as stated." See Exhibit K.
Upon information and belief, Respondent did not accidentally become aware that the <dknyjeans.com> domain name had become available. In his letter to Complainant's in-house counsel, Respondent states, "This name was available through Domain Bank as part of a list of names which were available because they had either been abandoned by their previous owner or, alternatively, had defaulted in payment," and he claims that "that domain name became available for sale and was offered to me for a fee by Domain Bank." See Exhibit K.
Through a link on its web site, Domain Bank, Inc., the registrar with which Respondent registered the <dknyjeans.com> domain name, offers a service operated by its partner NameProtect.com called "Expired Domain Name Monitoring." Using that service, subscribers can monitor domain names to determine when previously registered domain names have expired. Printouts from the NameProtect.com web site, as accessed through the Domain Bank web site, are attached as Exhibit L. The only plausible explanation for the <dknyjeans.com> being supposedly "offered" to Respondent in a "list of names" is that Respondent deliberately utilized this service so that he could be informed when the <dknyjeans.com> domain name or others became available…..
Administrative panels have routinely found bad faith where a company's famous trademark is registered as a domain name by a party with no connection with the company or its products…
The fact that Respondent is not making any use of the <dknyjeans.com> domain name in connection with the sale of goods or services and has admitted that he has no intention of doing so is strong evidence of Respondent's bad faith…
Finally, Respondent cannot claim that he is entitled to own the domain name for legitimate noncommercial activity. There is no evidence that Respondent is currently making any such use of the domain name. Current use of the domain name for such a purpose is required by the plain language of UDRP Paragraph 4(c)(iii)… Indeed, given the fame of the DKNY JEANS and related marks, the only reasonable conclusion is that any unauthorized use of the <dknyjeans.com> domain name will result in consumer confusion."
Claimant also relies on various communications in particular with the former solicitor of the Respondent to show that the Respondent registered the domain name with the intent to resell it. For the reasons set out below, such communications are not admissible and have not been taken into account in this decision.
Respondent disputes the allegations of the Complainant:
"The Respondent was not aware that the Complainant originally had a website at <dknyjeans.com> and therefore could not possible have registered the domain name in bad faith. The Respondent first became aware that such domain name existed when he subscribed to a website know as Dnsindex.com which publishes domain names that have expired. The Respondent never made any attempt to contact the Complainant subsequent to purchasing the name. …
The Respondent did not at any time have any intention of selling the name and it was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name as the Complainant had already done so and had deliberately allowed it to lapse. The Respondent has never been engaged in a pattern of any such conduct.
The Respondent did not at any time have any intention of selling the name and it was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name as the Complainant had already done so and had deliberately allowed it to lapse. The Respondent has never been engaged in a pattern of any such conduct….
The Respondent admits that he has not as of yet made any use of the Domain name.
The Respondent admits that he has no trademark or service mark rights that could be associated with the domain name."
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Procedural Issues
The Respondent has raised two procedural issues that should be decided at the outset in stating that (1) "the Respondent denies that he was notified of the requirement to resolve disputes in this manner in this matter and any such terms and conditions were not brought to his attention" and (2) "these proceedings have been tainted with unfairness arising from unlawful and unfair use by the Complainant of information and confidence which was provided without prejudice." (Response, page 3)
The Respondent does not provide any support for its allegation that it was without notice of these proceedings and this panelist is satisfied that the Respondent was on constructive if not actual notice of the existence of this procedure.
The Respondent registered the domain name in December 2000. He did so after the domain name registered in the name of the Complainant had lapsed. The Registrar for the domain name confirmed on April 25, 2001, that the Policy is applicable. The Respondent must have signed an agreement with the Registrar and such agreements systematically make reference to this administrative procedure. Therefore, the panelist does not accept that the Respondent was not aware that these proceedings were applicable to the domain name in dispute.
With respect to (2), the Panelist agrees that without prejudice communications should not be taken into account in reaching a decision with respect to the domain name. The term "without prejudice" is generally not used in the United States. However, its meaning is clear and it is also clear that communications between lawyers made to settle a dispute are generally not admissible.
However, submission of "without prejudice" documents does not in and of itself taint the process. Otherwise, in every case in which such documents were submitted there would be an automatic obligation to start anew. The issue is whether those documents have been taken into account in reaching the decision. In this case, they have not been taken into account.
Therefore, the Panelist rejects the Respondent’s objections to jurisdiction.
B. Similarity of the Domain Name and Trademark
Complainant has established its rights in the trademarks "DKNY", "DKNY (and logo)" and "DKNY JEANS" with numerous trademark registrations in the United Kingdom and internationally (Complaint, Exhibit A). The Respondent acknowledges that <dknyjeans.com> is similar to the registered trademark of the Complainant.
This Panelist finds that <dknyjeans.com> is confusingly similar to Complainant’s trademarks. The deletion of the space between the words "dkny" and "jeans", the use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000).
Therefore, the Complainant has satisfied the first requirement.
C. Respondent's Rights and Legitimate Interests
The Complainant has established that the trademarks have been registered in the United Kingdom and internationally. The trademarks are well known in the United Kingdom. Such trademark registration was prior to the date on which the domain name was reserved.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademarks or to apply for any domain name incorporating the trademarks. Therefore prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name within the meaning of Paragraph 4(c)(ii) or (iii) of the Policy.
The Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain name in his Response.
Therefore, the Panelist concludes on the basis of the evidence of the Complainant that the Respondent has no rights or legitimate interests in the domain name.
D. Bad Faith Registration and Use
Bad Faith Registration
The Panelist is satisfied that the DKNY and DKNY JEANS trademarks are sufficiently well known internationally, including in the United Kingdom, that it would have been difficult for any registrant to ignore their existence altogether and register in good faith. Moreover, the Respondent states in his letter of February 6, 2001, that "as a follower of Donna Karan fashion and a good customer of [the Complainant] I decided to purchase the name and paid the appropriate fees" (Complaint, Exhibit K). In his Response, Respondent further admits that he first became aware of the Complainant’s web site at <dknyjeans.com> by subscribing to a Dnsindex.com web site which publishes expired domain names.
Based on the above admission, the Panelist finds that the Respondent knew of the Complainant’s mark at the time he registered the domain name at issue and in any event should have known of Complainant’s mark given its widespread use and notoriety: see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No. D2000-0226 (WIPO, April 3, 2000); Expedia, Inc. v. European Travel Network, Case No. D2000-0137 (WIPO, April 18, 2000); Nutrexpa S.A. v. Louisiana’s Cola & Cacao Distributions, Case. No. D2000-1370 (WIPO, January 18, 2001).
The fact that the domain name had been registered in the name of the Complainant and had expired does not eliminate this bad faith. The purpose of the Policy is to discourage cybersquatting, which is the use of domain names to take advantage of trademarks owned by other persons. The fact that the domain name with the same trademark had expired does not mean that the Respondent has any right to use a well-known trademark as its domain name when such use could cause confusion to consumers and damage to the owner of the trademark.
Bad Faith Use
The domain name at issue appears not to have a web site or other on-line presence. The Respondent admits that he is holding the domain name without making any use of it to date (Response, page 6). Nor has the Respondent adduced any evidence that he is preparing to use the domain name. In this respect it appears necessary to point out that the provision contained in Article 4 (a)(iii) of the Policy "...domain name has been registered and is being used in bad faith" cannot be construed as limited to positive actions but it also implies "non-action". In certain circumstances the lack of action of a registrant of a domain name can be considered as equivalent to use in bad faith.
In Sigla Sistema Globo de Gravacoes Audio Visuais Ltda. v. Italo de Barros Nadeo, WIPO Case No. D2000-0732 (September 15, 2000), the panel noted that "a number of decisions…already exist that have established that the passive use of a Domain Name similar to a well-known or famous trademark does constitute use in bad faith on the part of the registrant. Decision of Case No. 2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows clearly decided that "non action" or lack of action may constitute use in bad faith. This decision has since been frequently quoted and has served as guidance in other cases…In the Telstra case, it was decided that "non action" may constitute bad faith both at the time of registration and in the subsequent non use, depending on the facts of the case."
The domain name in dispute is clearly connected with the well-known DKNY and DKNY JEANS. The Respondent has no connection with Complainant or its products. This fact pattern suggests opportunistic bad faith: see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No.D2000-0226 (WIPO, April 3, 2000); Veuve Cliquot Ponsardin v. The Polygenix Group Co., Case No. D2000-0163 (WIPO, May 1, 2000); GA Modefine SA v. Armani International Investment, Case No. D2000-0305 (WIPO, June 26, 2000).
Therefore, based on the Complainant’s evidence, bad faith can be inferred from Respondent’s registration of a domain name consisting of the Complainant’s well-known trademarks and his passive holding of the domain name.
Accordingly, the Panelist concludes that the Respondent registered and is using the domain name <dknyjeans.com> in bad faith.
For the foregoing reasons, the Panelist holds:
(a) that the domain name is confusingly similar to the DKNY and DKNY JEANS trademarks in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent has registered and is using the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist decides that the domain name <dknyjeans.com> must be transferred to the Complainant.
Thomas H. Webster
Dated: June 27, 2001