Donna Karan Studio v. Raymond Donn

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.

7. Decision

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

Presiding Panelist

Dated: June 27, 2001