However is a nice win for the domain holder who was represented by Mike Rodenbaugh of Rodenbaugh Law.
Its a very interesting decision since Dolce & Gabbana has a very well known trademark on D&G since at least 1994 and the domain owner even offered to sell Dolce & Gabbana the domain, (among others) for an amount in excess of $100,000.
The panel put a LOT of weight on the fact that the domain holder put up a Twitter and Facebook page for D & G Marketing and actually had followers
Here are the highlights from the decision:
“The Complainant also owns at least one trademark registration for the D&G Design trademark in the United States of America”
“The disputed domain name was first registered on November 17, 2003, and for approximately 6 years, it was used in connection with a website for a business called David & Goliath Advertising Agency or D&G Advertising.”
“The Respondent acquired the disputed domain name from a third party on February 24, 2010, who in turn had purchased the disputed domain name by public auction.”
At the time the Complaint was filed, the disputed domain name reverted to a one page website which featured the Respondent’s “D&G” Marketing logo. ”
“Shortly after acquiring the disputed domain name, the Respondent contacted 6 different D&G-related businesses, including the Complainant, to solicit offers to purchase the disputed domain name. The Complainant and Respondent exchanged correspondence about the proposed assignment of the disputed domain name, but were unable to reach an agreement. The Respondent sought payment in the amount of USD100,000.”
“The Complainant submits that the word “and” is commonly used to denote the ampersand symbol in domain names, because the “&” symbol cannot at this time be used under typical domain name protocols. Therefore, the Respondent’s use of the common word “and” between the letters “d” and “g”, creates the functional equivalent of the Complainant’s trademark D&G.”
“Accordingly, the Complainant contends that the disputed domain name <dandg.com> is confusingly similar to the Complainant’s D&G trademark.”
“”The Respondent submits that it had a legitimate interest in owning the disputed domain name, which is composed of two of the twenty-six letters of the English alphabet, and the common word “and”. ”
“The Respondent claims to have purchased the disputed domain name <dandg.com> on February 24, 2010 with the intention of operating a marketing firm called D&G Marketing, standing for David & Goliath. The Respondent has submitted evidence of the Respondent’s D&G logo, letterhead, business cards and an e-mail address, and evidence of marketing the D&G Marketing business through Facebook and Twitter. The Respondent contends that its evidence supports the conclusion that the Respondent has a legitimate interest in the disputed domain name.”
“The Respondent further submits that it is in the business of acquiring domain names, creating corporate logos and branding programs, and selling the entire branded portfolio (including the domain name) to interested buyers. This practice of buying and selling domain names and developed portfolio is characterized as a legitimate interest under the Policy.”
“The Respondent submits that it was not aware of the Complainant’s rights in the D&G trademark.”
“The Respondent further submits that it acquired the disputed domain name for the purposes of running a marketing business under the name D&G Marketing. In any event, the Respondent contends that the purchase of a domain name for purposes of resale is not evidence of bad faith in and of itself.”
“The Respondent submits that it did not target the Complainant, but sent inquiries to several companies that used the initials “D” and “G”, and that this offering for sale of the disputed domain name to several entities is evidence of good faith”
“Furthermore, the offering for sale of the disputed domain name for more than the cost of registration is not evidence of bad faith per se.”
“The disputed domain name was purchased by Respondent after it had been registered and used for many years, in the marketing field, thereby acquiring significant value which had nothing to do with the Complainant’s business. Therefore, in all the circumstances, the Respondent contends that the offer to sell the disputed domain name to Complainant for USD100,000 is not evidence of bad faith.”
“The Panel finds that the Complainant has established rights in the D&G trademark by the evidence submitted in the Complaint.
“The Panel finds that the disputed domain name <dandg.com> is in fact the functional equivalent of the trademark D&G, and accordingly it can reasonably be viewed as a virtual replication of the Complainant’s D&G trademark.”
“Therefore, the Panel finds that the disputed domain name <dandg.com> is confusingly similar to the Complainant’s trademark.
The Panel’s assessment of the evidence filed in these proceedings is that it sets out the history of this domain name as follows:
“1. The disputed domain name was registered in November 17, 2003. The disputed domain name was registered and used by David & Goliath Advertising Agency or D&G Advertising for over 6 years. From the case record, no complaint appears to have been made against the disputed domain name over this period.
“2. The original domain name registration expired, and the disputed domain name was then sold by public auction. At that point, the disputed domain name was purchased by a third party, who then in turn sold it to the Respondent on February 24, 2010.”
“3. The Respondent acquired the disputed domain name, according to the submissions filed for the purpose of (i) operating a marketing business under the name D&G Marketing; and (ii) for the purpose of reselling the disputed domain name for a profit.”
“4. On March 12, 2010, sixteen (16) days after acquiring the disputed domain name, the Respondent sent e-mails soliciting 6 different “D&G” businesses offering to sell the disputed domain name.”
“5. In the relatively short period from the date of acquisition (February 24, 2010) to the commencement of these proceedings (May 10, 2010), the Respondent has taken some preliminary steps towards setting up a business.
“These preliminary steps include what could reasonably be viewed as typical conduct for the early stages of any business: for example, preparation of business cards and letterhead with a logo. As such, these steps do not carry significant weight in terms of proving the operation of an actual business. ”
“However, the Respondent also established temporary Twitter and Facebook accounts which promoted its D&G Marketing business in the field of online marketing. The Respondent has furnished evidence of 435 followers on Twitter. ”
“In its supplemental evidence, Respondent provided an affidavit and brief supporting statements from three potential customers, describing how D&G Marketing has promoted its business in association with the D&G name over the past few months. Although the evidence is somewhat thin in terms of proving business activity in the conventional sense (i.e. customers and revenues), it is significant for one consistent point: nothing in the Respondent’s website, printed materials, logo, graphics, or social networking sites makes any reference to the business of Dolce & Gabbana or to the fashion and design fields where the Complainant operates. All the evidence is in fact, consistent with the Respondent’s position that it is in the early stages of setting up an online marketing venture, with the possibility that it may sell the disputed domain name as part of its portfolio of domain names.””
“The Respondent has also brought forward evidence that the letters “D” and “G”, and the combination “D&G” are commonly adopted business identifiers in the U.S. market and elsewhere. The Respondent has identified many users of the “D&G” business name in the Los Angeles area alone, and notes that there are multiple trademark registrations for D&G in the U.S. and in Europe for a variety of products and services. Five of the businesses (other than the Complainant) approached by Respondent to solicit offers for the disputed domain name appear to have their own legitimate interests in using “D&G” as part of their operating names, (e.g. D&G Sports – California).”
“Bearing in mind that the burden of proof is on the Complainant to establish the absence of a right or legitimate interests on the part of the Respondent, in this Panel’s opinion, the evidence in its totality favours the Respondent. On the balance of probabilities, based on the evidence filed in this matter, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name.”
“Accordingly, in all of these circumstances, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy. “In making its finding for the Respondent, the Panel nevertheless acknowledges that on the basis of a more complete evidentiary record and with the benefit of cross-examination, a Court or tribunal could reach a different conclusion. In the UDRP process, the Panel is limited in terms of the ability to test the evidence put forward by the parties. In many cases, the proof of abusive registrations is relatively straightforward. However, when a respondent provides (what ultimately proved to be) sworn evidence contesting the complainant’s essential allegations, with supporting documentation, and that evidence is not subject to cross-examination, and the complainant has been unable to put into the record contrary evidence or argument sufficient to rebut or call into question the veracity of that provided by the respondent despite being offered the opportunity to do so, the burden on the complainant to satisfy all elements under the policy is obviously difficult to meet. That was the particular challenge faced by the Complainant in this matter.”
If you compare this case with one released yesterday, over the domain name BandH.com, that held for the much less famous trademark of B&H (photo equipment) since the domain was pointed to a affiliate site selling photo equipment