WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donna Karan Studio, Gabrielle Studio, Inc. and The Donna Karan Company
Case No. DBIZ2002-00064
1. The Parties
Complainants in this proceeding are: Donna Karan Studio, a New York general partnership with a principal place of business at 550 Seventh Avenue, New York, New York 10018, United States of America; Gabrielle Studio, Inc., a Delaware corporation with an address at 87 Mayfield Avenue, Edison, New Jersey, United States of America; and The Donna Karan Company, a New York corporation with a principal place of business at 550 Seventh Avenue, New York, New York 10018, United States of America ( collectively the "Complainant"). Complainant is represented in this proceeding by Anna Kraske, Esq., 550 Seventh Avenue, 11th Floor, New York, New York 10018, United States of America.
Respondent in this proceeding is Richard Wilson, an individual whose address is c/o Resource Marketing, Inc., 111 North Benbow Road, Greensboro, North Carolina 27401, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <dkny.biz>.
The registrar for the disputed domain name is 123 Registration.com, P.O. Box 2600, Sarasota, Florida 34230-2600, United States of America.
3. Procedural History
This case will be decided according to the rules and regulations found in the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the Supplemental STOP Rules).
The Complaint was filed on April 26, 2002, by e-mail and on April 30, 2002, in hard copy. On May 27, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Receiving no response from Respondent, the Center transmitted to Respondent a Notification of Respondent Default by e-mail on July 2, 2002.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 23, 2002, and the Center proceeded to appoint the Panel on July 24, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is August 7, 2002.
4. Factual Background
Complainant is a United States company operating in the business of apparel and related products and owns worldwide registrations of the trademark "DKNY" (collectively referred to hereinafter as the "Complainant Trademark"). That trademark is famous throughout the world in connection with those products.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. Partiesí Contentions (Summarized)
-- Ms. Donna Karan is one of the world's best known and most esteemed designers of fashion and related accessories. In 1985, Ms. Karan founded a company which marketed Ms. Karan's very successful line of designer women's fashions under the trademark, "DONNA KARAN NEW YORK".
-- In 1988, that company launched a second, more moderately priced line of clothing and accessories under the trademark "DKNY". DKNY is both a trademark in its own right and an abbreviation of the trademark "DONNA KARAN NEW YORK". Since that time, "DKNY" clothing and related goods have been marketed and sold in many other countries throughout the world, with total wholesale revenue topping $1 Billion in 2001.
-- Complainant owns several registered trade and service marks in the United States and other countries for "DKNY" (Complaint Exhibit C). Complainant also owns domain name registrations for <dkny.com> and <donnakaran.com>.
-- Respondentís domain name is identical to the Complainant Trademark.
-- Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent does not own a trademark or service mark registration that is identical, similar, or in any way related to the "DKNY" or "DKNY" logo marks or the <dkny.biz> domain name. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use the Complainant Trademark.
-- The Respondent registered the <dkny.biz> domain name in bad faith. Respondent was surely aware of the fame attached to the Complainant Trademark. Respondent's registration of the disputed domain name was primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to another party for commercial gain.
-- Respondent is clearly in the business of buying and selling domain names for profit. An online investigation revealed that Respondent is the owner of the domain name <domainsinvest.net>. A review of the web site found there indicated that Respondent established a company called Resource Marketing, Inc. in 1998 and that the business of Resource Marketing, Inc. is buying and selling domain names for profit. The text of the <domainsinvest.net> web site states, among other things, that "We've found and acquired hundreds of domains . . . . Resource Marketing then markets to domains and sale [sic] the domains at high prices. The average price we sale [sic] domains for is $500 dollars" (Exhibit J to the Complaint).
-- Respondent filed no response to the Complaint.
-- In the absence of a response from Respondent, the Panel is mindful that Respondent due process rights must be assured in connection with this administrative proceeding. In that vein, the Center forwarded a copy of the Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail. These notifications are sufficient to convince the Panel that there has been adequate notice of this proceeding to Respondent and that Respondent's right to due process has not been violated.
6. Discussion and Findings
To prevail in this administrative proceeding and to obtain for itself a transfer of the disputed domain name <dkny.biz>, Complainant must prove the following (STOP, paragraphs 4(a)(i) through 4(a)(iii):
-- the domain name is identical to a trademark or service mark in which Complainant has rights; and
-- Respondent has no rights or legitimate interests in respect of the domain name; and
-- the domain name was registered or is being used in bad faith.
As evident from Exhibit C of the Complaint, Complainant possesses valid and subsisting United States registrations of the trademark "DKNY" (e.g., United States Registration Nos.: 2,358,744, dated June 13, 2000, for perfume international class 3; or 2,203,071 dated November 10, 1998, for retail store services in international class 42 as well as similar trademark registrations in other countries). It is also clear that Complainant's rights in that trademark preceded Respondent's registration of the disputed domain name.
Moreover, the disputed domain name, <dkny.biz>, is clearly identical to the Complainant Trademark, as the only point of difference is the addition of the ".biz" gTLD, which is without significance in determining identity under a STOP proceeding.
Consequently, the Panel has determined that the burden of proving that the disputed domain name is identical to a trade or service mark in which Complainant has rights, as delineated in paragraph 4(a)(i) of STOP, has been sustained by Complainant in this case.
No Rights or Legitimate Interests
Respondent has failed to rebut Complainant's plausible contention that Respondent received neither authorization nor a license from Complainant to use the Complainant Trademark. Additionally, Respondent has not provided the Panel with any evidence of the circumstances listed in paragraphs 4(c)(i) through 4(c)(iii) of STOP that would establish Respondent's rights or legitimate interests in the trademark. While those circumstances may not be exhaustive of the ways in which Respondent could establish its rights or legitimate interests in the Complainant Trademark, the Panel considers the lack of a response from Respondent as evidence that, in the face of the fame and renown of that mark, Respondent could never hope to make such a showing.
Based on the record as presented to it, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of STOP to demonstrate that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel concludes that the Complainant Trademark is famous around the world in its association with clothing and related accessories. Previous STOP panels have found bad faith registration based solely on the level of worldwide fame attached to a trademark at issue (see for example the mark "Alfa Romeo" in Fiat Auto S.p.A v. Italienska bil, WIPO Case No. DBIZ2001-00030 (February 12, 2002), and the mark "Lancia" in Fiat Auto S.p.A. v. Search Hound, Case No. DBIZ2001-00023 (February 11, 2002)).
In addition to the preceding argument for a finding of bad faith registration, Complainant has also submitted evidence to the Panel (see Exhibit J to the Complaint) that Respondent is in the business of selling domain names for substantially more than the registration costs. While such conduct is not impermissible in the context of domain names unrelated to established trade or service marks, it is improper when dealing with domain names identical to marks of international repute such as Complainant's. Thus, the Panel is persuaded by Complainant's evidence to agree that Respondent's registration of the disputed domain name was primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name, a specific condition prompting a ruling of bad faith (paragraph 4(b)(i) of STOP).
In accordance with the foregoing, the Panel finds that Complainant has carried its burden under paragraph 4(a)(iii) of STOP to show that Respondent registered the disputed domain name in bad faith.
The Panel finds the disputed domain name, <dkny.biz>, is identical to Complainantís "DKNY" trade and service marks. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered the disputed domain name in bad faith because Respondent surely knew that the Complainant Trademark was so internationally famous that infringement of that mark was inevitable and because Respondent's primary purpose in registration was to market the name for excessive gain.
As a result and according to the provisions found in paragraph 4(i) of STOP and paragraph 15 of the STOP Rules, the Panel orders that the disputed domain name, <dkny.biz>, be transferred from Respondent, Richard Wilson, to Complainant, The Donna Karan Company.
Dennis A. Foster
Dated: August 5, 2002