The Complainant is CHRISTIAN DIOR COUTURE of Paris, France, represented by Cabinet Marc Sabatier, France.
The Respondent is Kianna Dior Productions of California, United States of America, represented by Victoria Woo.
The disputed domain name <kiannadior.com> is registered with Catalog.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2009. On March 18, 2009, the Center transmitted by email to Catalog.com a request for registrar verification in connection with the disputed domain name. On March 23 and 24, 2009, Catalog.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Respondent.
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 March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2009. The Response was filed with the Center on April 15, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on April 24, 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.
On April 29, 2009 the Complainant made additional submissions in the form of a letter sent by email to the Center which the Panel has also taken in consideration in reaching its decision. The Panel has subsequently extended the decision due date.
1. The Complainant is a French fashion house known principally for its fragrances, clothing and fashion accessories.
2. The Complainant has extensively used the trademarks DIOR, CHRISTIAN DIOR and MISS DIOR in relation to some or all of those goods.
3. The trademarks are the subject of registrations around the world.
4. The Complainant has not licensed or otherwise permitted the Respondent to use the trademarks or to register or use any domain name incorporating the trademarks.
5. The disputed domain name corresponds with a website which promotes the films of Kianna Dior, an adult film actress.
6. Kianna Dior is a nome de plume of Victoria Woo, the founder and President of the Respondent's company.
7. The disputed domain name was registered on June 8, 2006.
8. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
The Complainant asserts trademark rights and states that the disputed domain name is confusingly similar to its trademarks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent admits that the Complainant has trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR but denies that the disputed domain name is confusingly similar to any of the trademarks.
The Respondent claims to have a legitimate business interest in the disputed domain name and denies having either registered or used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, a 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; 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the domain name are identical or confusingly similar.
On the evidence, there is little doubt1 that the Complainant has trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR acquired through both use and registration2. The remaining question is whether the disputed domain name <kiannadior.com> is confusingly similar to one or more of those trademarks.
The Complainant submits that “the domain name <kiannadior.com> is high similar (sic) to the trademark DIOR, since the trademark is completely included in the domain name”.
The Complainant goes on to argue that:
“the dominant part of the domain name <KIANNADIOR.COM> is DIOR which evokes the Complainant's trademarks. The adjunction of KIANNA at the beginning of the domain name refers to a first name, like when the Complainant uses the first name and the family name CHRISTIAN DIOR, which creates a likelihood of confusion with the Complainant trademarks. Furthermore, KIANNA seems to be a female first name which refers to MISS DIOR used by the Complainant. The consumers will believe that KIANNA DIOR is a new sign of the Complainant. The letters IAN (of KIANNA) are included in the trademark CHRISTIAN DIOR”.
In reply, the Respondent submits that:
“the word “kianna” is at least as distinctive as the word “dior”. Both words exhibit a special distinctiveness. In viewing both words at arms' length, it would be nearly impossible to conclude that the word “dior” is the more unique or distinctive of the two.”
In its additional submissions following the Response, the Complainant submitted (i) that even if the disputed domain name is not initially perceived as the name, “Kianna Dior”, that fact becomes apparent after visiting the Respondent's website, and (ii) that “the use of the sign DIOR for porn activities creates likelihood of confusion and tarnishment of its trademark”.
The Panel turns to examine those submissions having regard to the way in which paragraph 4(a)(i) of the Policy has been interpreted.
First, the Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored3.
Secondly, website content is irrelevant in the determination of confusing similarity4. So, too, for the purposes of paragraph 4(a)(i) of the Policy, the use to which a domain name has been put is not of assistance in the assessment of confusing similarity5.
Thirdly, the Policy does not ask whether the domain name and trademark are very similar or, as the Complainant here has put it, “highly similar”. If the two signs are not identical6, then they must be confusingly similar in order for a complainant to be able to succeed under the first element of the Policy.
The key question in the present case is whether “kiannadior” is on a direct comparison confusingly similar to the trademark DIOR. On the one hand, “Kianna” is an uncommon female first name. An initial issue here is therefore whether the domain name would be seen as a personal name at all, rather than as an invented or meaningless single word. The answer lies partly in the Respondent's acknowledgement that both words “exhibit a special distinctiveness”. The Panel finds it more likely than not that the domain name “kiannadior” would be perceived as a first and last name – “Kianna Dior” or to put it another way, the Panel finds the surname “dior” to be readily perceivable as such in the disputed domain name.
The question resolves to whether Kianna Dior and DIOR are confusingly similar. In support of an affirmative answer to that question, the Complainant relies on two earlier UDRP disputes in which it was the successful party, Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008 and Christian Dior Couture & Chloé v. Konstantinos Zournas, WIPO Case No. D2008-1440 in which the panels ordered the transfer, respectively, of <annadior.com> and <chloedior.com> to the Complainant. In those cases, the panels assumed that the domain names would be appreciated as “Anna Dior” and “Chloe Dior”7.
From the former decision, the Complainant cites the panel statement that:
“The Domain Name wholly incorporates the Complainant's DIOR mark, and numerous Panels have found that the fact that a domain name wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for the purpose of the Policy.”
This Panel is of the opinion that the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive in the present case. For example, the Complainant's trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity.
Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.
In the Konstantinos Zournas case concerned with the domain name <chloedior.com>, it is noteworthy that there were joint complainants, Christian Dior Couture and Chloé. Then, as now, Christian Dior Couture was the registered owner of the trade mark DIOR. Joint complainant Chloé was the registered owner of the trade mark CHLOE. The panelist wrote:
“By virtue of the Amended Complaint, Christian Dior Couture and Chloé are joint Complainants in this matter. The relevant comparison is therefore between the trade marks DIOR and CHLOE, and the disputed domain name. The latter wholly incorporates the two trade marks in an unaltered form and without any further additions. Each of the marks is noticeable and recognizable in the disputed domain name. The wholesale inclusion of the two marks renders the disputed domain name at the very least confusingly similar to the Complainants' marks.
The Panel therefore finds that the contested domain name is confusingly similar to the Complainants' trade marks DIOR and CHLOE8. […]
The Panel notes that the Respondent's initial assertion that the Complainant Christian Dior Couture has no rights to the name “Chloe Dior” is rendered somewhat moot by Chloé joining as a Complainant9. […]
There is a further difficulty here in that the Complainants are perhaps not likely to intend to reflect the marks in a corresponding domain name since there is no evidence that they are collaborators in matters other than these proceedings. There is no material before the Panel to indicate that they so intend10.”
The last of those passages raises unanswered questions about how paragraph 3(a) of the Rules11 might have impacted on that case if the co-complainants had no commercial relationship with each other except for the UDRP proceedings. However, it is the approach to the assessment of trademark rights taken by the panel in that case which is also noteworthy. The panel appears to have formed the view that the joining together of Christian Dior Couture and Chloé as co-complainants was enough to establish rights in portmanteau combination marks which each company separately owned12.
The finding in that case is not the finding put in argument by the Complainant here, namely, that the domain name <chloedior.com> was found to be confusingly similar to the trademark DIOR. Rather, the finding in the Konstantinos Zournas case was that the complainant had trademark rights in CHLOE DIOR and that the domain name was “at the very least confusingly similar to the Complainants' marks.”
Neither prior UDRP case relied upon by the Complainant is of dispositive assistance to this Panel. Instead, the issue of confusing similarity can be judged using principles applied in the assessment of the confusing similarity of two trademarks which have been adopted generally by UDRP panellists. In spite of the addition of the name “Kianna” in the present case, the element “Dior” remains the more distinctive part of the disputed domain name and the more significant component. Internet user confusion between the disputed domain name and the well known DIOR mark is in these circumstances more likely than not, and the Panel believes that this is case the merits of which should perhaps more appropriately be examined under subsequent elements of the Policy. On balance, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and accordingly finds that the Complainant has established the first element of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests13.
The Panel finds that the Complainant has established a prima facie case.
Paragraph 4(c) of the Policy states that any of the following circumstances if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the domain name registrant of the dispute, the registrant's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the domain name registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
On the facts, paragraph 4(c)(ii) deserves consideration. The Response includes a sworn statement from Victoria Woo. Ms. Woo swears that she adopted the stage name Kianna Dior in 2001 and provides evidence that since 2001 she has featured in 186 adult movies under the name Kianna Dior. Annexed to Ms. Woo's declaration is a list of film titles which support the veracity of those claims.
There is also evidence of the incorporation of the Respondent Company in the State of Delaware in 2002 for the purpose of promotion of Ms. Woo's films.
Ms. Woo states that “the website <kiannadior.com> was created and set up in 2002, to promote and market Kianna Dior's adult films and other adult content”. According to Internic's WhoIs data, the disputed domain name appears to have been created on May 14, 2002. This information was also confirmed by the registrar. The disputed domain name however appears to have been registered with the current registrar in 2006. There is evidence that website content was appearing in connection with Kianna Dior's activities from as early as 2002. Other material annexed to the Response points to that content having been hosted elsewhere.
Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name.
If the Respondent is infringing the Complainant's trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii).
The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.
Since the Policy requires the Complainant to prove every aspect of paragraph 4(a) of the Policy, the Panel finds it unnecessary to consider the arguments on “bad faith” in order to reach its decision14.
For all the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Dated: May 24, 2009
1 The Panel notes that many of the trademark registrations exhibited stand in the name of Christian Dior S.A. and not the name of the Complainant.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA705262 (“Complainant's registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052 (finding that the complainant's registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant's rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
4 See Qn #1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Question, (February 2005) at “http://www.wipo.int/amc/en/domains/search/overview/index.html”. “The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”
5 Cf. paragraphs 4(a)(ii) and (iii) of the Policy where the use is often of crucial importance.
6 Or, as expressed in some cases, “legally identical”, by which it is meant that they differ no more than by the addition of the TLD, or in punctuation which cannot be expressed in the domain name. See footnote #3.
7 Both of those cases also involved respondents who were adult film actresses.
8 This from the section of the decision concerned with trademark rights and confusing similarity.
9 This from the section of the decision concerned with rights or legitimate interests.
10 This from the section of the decision concerned with bad faith.
11 Complaint was filed jointly by Christian Dior Couture and Chloe and so raises consideration of paragraph 3(a) of the Rules which states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Prior panels interpreting paragraph 3(a) of the Rules have generally required multiple named complainants to demonstrate a commercial link between one another.
12 See, for example, International Olympic Committee, United States Olympic Committee, and CTV Inc. v. Texas International Property Associates - NA NA, NAF, Claim No. FA1253280 (“Although IOC, USOC and CTV Inc. collectively comprise Complainant in these proceedings, that does not entail a finding that Complainant has rights in any portmanteau combination of the trademarks found to belong to the individual entities.”)
13 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
14 See, for example, Creative Curb v. Edgetec International Pty. Ltd., NAF Claim FA 116765 (Nat. Arb. Forum Sept. 20, 2002); 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, WIPO Case No. D2004-0541.