The Complainants are Donna Karan Studio LLC., Gabrielle Studio, Inc., and The Donna Karan Company LLC of New York, New York, United States of America, represented by Cho & Partners, Republic of Korea.
The Respondent is DKNY PARTY of New York, New York, United States of America.
The disputed domain name <dknyparty.com> (the “Disputed Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2010. On February 25, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 26, 2010, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 2, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 9, 2010. The Center verified that the amended 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 8, 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.
Complainant, Donna Karan Studio, is the exclusive licensee of the trademarks consisting of or including the name or initials of Ms. Donna Karan. Ms. Karan is a well known and highly regarded designer of fashion and related accessories.
Ms. Karan began her professional career as a fashion designer at Anne Klein & Company. After Ms. Klein's death in 1974, Ms. Karan became the head designer of Anne Klein & Company and held that position for ten years, during which time she received considerable press attention, both in the United States of America and internationally. In late 1984, Ms. Karan left Anne Klein & Company to start her own label. In 1985, she founded The Donna Karan Company LLC (“The Company”), where she has been Chief Designer ever since. Ms. Karan's new line of designer women's fashion, marketed by The Company under the trademark DONNA KARAN NEW YORK was a commercial success and well publicized in the media.
In 1988, The Company launched a second more moderately priced line of clothing and accessories under the trademark DKNY, an abbreviation of the trademark DONNA KARAN NEW YORK. The Company's DKNY collection was a commercial success, and today there are over ninety DKNY and Donna Karan stores worldwide. 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.
Complainants' hold registered trademarks for DKNY and a DKNY Logo in the European Community, the United Kingdom and in the United States for various goods including handbags, jewelry, and women's apparel. The trademarks DKNY and DKNY Logo have been registered for clothing and related fashion accessories (such as footwear, sunglasses, leather goods, and jewelry) in approximately 115 countries throughout the world.
In 1996, Ms. Karan assigned the trademarks consisting of or including her name or initials to Complainant Gabrielle Studio, Inc. (“Gabrielle”), and Gabrielle, in turn, granted Complainant Donna Karan Studio an exclusive license to use and to sublicense the use of the trademarks throughout the world. Donna Karan Studio licenses the use of the trademarks to various companies, including The Company, of which Ms. Karan is the Chief Designer. Gabrielle, Donna Karan Studio and The Company are all wholly owned by Donna Karan International, Inc., a Delaware corporation.
Clothing bearing the trademarks DKNY and DKNY Logo was first marketed and sold in the United States in 1988. Since that time, DKNY clothing and related goods have been marketed and sold in many other countries throughout the world, including in republic of Korea, Australia, Belgium, Brazil, Canada, Cyprus, France, Germany, Greece, Hong Kong - SAR of China, Iceland, Indonesia, Israel, Indonesia, Italy, Japan, Kuwait, Lebanon, Malaysia, Monaco, the Netherlands, Norway, the Philippines, Portugal, Saudi Arabia, Singapore, South Africa, Spain, Switzerland, Taiwan, Thailand, Turkey, United Arab Emirates, the United Kingdom of Great Britain and Northern Ireland, and Venezuela. Today, there are in excess of 115 company-owned and licensed free standing Donna Karan collection, DKNY, and DKNY JEANS stores worldwide. The Company advertises its DONNA KARAN NEW YORK and DKNY products on the Internet through numerous domain names including <dkny.com> and <donnakaran.com>.
As Chief Designer of The Company, Ms. Karan has been honored with numerous awards for her fashion designs and related products. For example, in 1990, Ms. Karan was voted “Women's Wear Designer of the Year,” and in 1992, she was voted “Men's Wear Designer of the Year,” both by the Council of Fashion Designers of America (“CFDA”). Ms. Karan won the Fifi Award for best Women's Fragrance Introduction of 1992 (for her women's fragrance marketed and sold under the trademark DONNA KARAN NEW YORK), and the Fifi Award for best Men's Fragrance Introduction of 1994 (for her men's fragrance marketed and sold under the trademark DK MEN). In 1996, Ms. Karan was once again voted Women's Wear Designer of the Year by the CFDA, and was presented with the Parson's Award for Outstanding Achievement. In 2003, Ms. Karan was the first American designer to receive Fashion Group International's “Superstar Award.” In 2004, Ms. Karan received the CFDA Lifetime Achievement Award. In 2004, Ms. Karan also received an honorary doctorate from her Alma mater, the Parsons School of Design, to commemorate her contribution to the school and the fashion industry. In 2007, Glamour magazine named Ms. Karan one of its women of the year.
Respondent registered the Disputed Domain Name on June 18, 2008. On March 10, 2010, the registrar notified WIPO that it had placed the Disputed Domain Name on registrar lock
Complainants argue that: (i) the Disputed Domain Name is identical or confusingly similar to a mark in which the Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name <dknyparty.com> contains the registered trademark DKNY in which Complainant Donna Karan Studio has exclusive rights, and that the Disputed Domain Name is essentially identical and/or confusingly similar to Complainants' famous DKNY trademark. Complainants assert that the term “party” is not distinctive and should be given little if any consideration when comparing the Disputed Domain Name with the trademark DKNY. Complainants conclude that the term “party” contributes to a likelihood of confusion, since this term might naturally be viewed as somehow associated with the DKNY brand.
Regarding the second element, Complainants contend that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. To the best of Complainants' knowledge, Respondent does not own any trademark or servicemark registration that is identical, similar, or in any way related to the DKNY or DKNY Logo marks or the Disputed Domain Name. Complainants contend, moreover, that Respondent is not a licensee of Complainants, and that Respondent has never been authorized by Complainants to use the DKNY trademarks, nor been authorized to register the Disputed Domain Name.
In reference to the third element, Complainants contend that Respondent registered the Disputed Domain Name with knowledge of the famous DKNY and DKNY Logo trademarks, that the DKNY clothing line was launched decades before Respondent registered the Disputed Domain Name containing the term DKNY in 2008, and that the DKNY brand is marketed and so recognized worldwide that Respondent must have been aware of it at the time Respondent registered the Disputed Domain Name.
Complainants further contend that Respondent's use of Complainants' DKNY mark falsely suggests that Complainants are or may be associated with the website of the Disputed Domain Name. Complainants state that on July 9, 2009, they checked the website to which the Disputed Domain Name resolved and it was being used to promote a party which had no relationship, affiliation, or other connection to Complainants or the DKNY brand. Complainants checked the website again on August 4, 2009, and the website was not operational. Complainant again checked the website on December 9, 2009, and it was once again being used to promote parties that had no relationship, affiliation, or other connection with Complainants or the DKNY brand. Complainants contend that the Disputed Domain Name was registered with the intent of attracting Internet users to the <dknyparty.com> website by free riding on the fame of the DKNY and DKNY Logo trademarks, and that the Disputed Domain Name was therefore registered and is being used in bad faith.
The Respondent did not reply to Complainants' contentions.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The case record contains ample evidence to demonstrate Complainants' rights in the registered DKNY and DKNY Logo trademarks. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainants' DKNY mark. The insertion of the term “party” following the mark does not defeat confusing similarity. See CELLEX-C International Inc. v. Jaye Pharmacy and Absolute Cellex C, WIPO Case No. D2003-0423 (finding that disputed domain name <absolutecellexc.com> is identical or confusing similar to Complainant's mark, “CELLEX-C”). The Panel finds Complainants' cases persuasive on this first element, namely Google, Inc. v. Thilak Raj, Net Jobs, WIPO Case No. D2009-0033, and SAP AG v. Domains by Proxy Inc./Sales, WIPO Case No. D2009-0264. Moreover, to the extent a domain name wholly incorporates a complainant's registered mark, that too is sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See, e.g., Capital One Financial Corporation v. Ryan Evans, WIPO Case No. D2008-1236. Accordingly, the Panel finds that Complainant has demonstrated the first element.
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainants have not authorized Respondent to use their DKNY trademark. There is also no evidence that Respondent is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy is inapplicable in this case. Further, Respondent does not appear to be using the Disputed Domain Name in connection with any offering of goods or services, much less offerings that could be considered bona fide. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. As Complainants point out, the DKNY mark is associated with Donna Karen, a well known and famous individual. A respondent's use of a domain name that is associated with a complainant's name is not a legitimate or fair use of a complainant's mark since it diverts Internet traffic to the respondent's site, thereby potentially depriving complainant of visits by Internet users to its own site. See Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299. Based on the un-refuted evidence submitted with the Complainant, the Panel finds that Respondent is not making fair use of Complainant's wll-known DKNY mark, but is using the mark to attract Internet users to Respondent's website and then providing links to other sites having little or nothing to do with Complainants.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some right or legitimate interest in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainants have therefore prevailed on this part of their Complaint.
Paragraph 4(a)(iii) of the Policy requires that Complainants establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Complainants have submitted no evidence that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant, or to a competitor of Complainants, for profit. Paragraph 4(b)(i) of the Policy. Nor is there evidence that Respondent registered the Disputed Domain Name in order to prevent Complainants from reflecting their mark in a corresponding domain name. Paragraph 4(b)(ii) of the Policy.
Nonetheless, when accepting all facts alleged in the Complaint as true, the Panel finds that Complainants have shown registration and use in bad faith by Respondent.
Given Complainants' long and widespread use of its DKNY trademark for clothing and apparel services throughout the world, Respondent was quite likely aware of Complainants at the time it registered the Disputed Domain Name. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business. Respondent, by use of the Disputed Domain Name, draws Internet users away from Complainants websites to its own website and thus damages Complainants' business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
Further, when a company's famous trademark is registered as a domain name by a party with no connection with the company or its products, a Panel may find bad faith registration and use. The cases cited by Complainants on this point are persuasive. Donna Karen Studio v. Donn, WIPO Case No. D2001-0587 (domain name was registered in bad faith where Respondent had no rights to name and “should have known of Complainant's [DKNY] mark given its widespread use and notoriety”); Chanel, Inc. v. Buybeautycom, WIPO Case No. D2000-1126 (“Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use the CHANEL mark, the very fact that Respondent has registered <buychanel.com> established bad faith use and registration”); Guerlain S.A. v. SL Blancel Web, WIPO Case No. D2000-1191 (respondent's incorporation of famous trademark GUERLAIN into domain name <misguerlain.com> “cannot be the result of mere coincidence” and respondent “could not possibly make any plausible actual or contemplated active use” other than in bad faith); Parfums Christian Dior v. Javier Garcia, WIPO Case No. D2000-0226 (finding “opportunistic bad faith” where respondent registered domain names <christiandior.com> and <christiandior.net>); Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (finding bad faith where the domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The fact that Complainants have United States registered trademarks and the Respondent is located in the United States further support a finding of registration and/or use in bad faith in this case. In a case where the complainant's trademark registration preceded the respondent's domain name registration , respondent was presumed to have notice of the trademark. See Kate Spade, LLC v. Darmstadter Designs, WIPO Decision No. D2001-1384. Accordingly, under the circumstances, the Panel determines that Respondent acted in bad faith in registering and using the Disputed Domain Name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <dknyparty.com> be transferred to the Complainants.
Andrew J. Park
Dated: April 22, 2010