Domain Name Shame

Domain Name Dispute By Design...

The Complainant, Rocco Barocco, is a well-known Italian fashion designer who has registered his name as a trademark in several countries in the field of fashion, design and accessories.  His chief website can be found at "www.roccobarocco.it".  Respondent has a pattern of registering other well-known trademarks as part of domain names and, apparently by design, registered the disputed domain "www.roccobarocco.com".

Faced with no reply by the Respondent to the Complainant's contentions, the sole panelist readily ordered transfer of the disputed domain based upon the fact that the domain was identical to Complainant's trademark, there was no evidence of rights or legitimate interest of the Respondent in the domain name and the record was clearly indicative that Respondent had registered and used the domain in bad faith.  In so holding, the Panelist cited to the facts that: Respondent offered to sell the domain to the highest bidder on its website; Complainant and his trademark are well-known in the fashion industry; and Respondent had a history of cybersquatting.

A curious element to the Panel's decision involved the proper language for the proceeding and decision.  The registration agreement for the disputed domain name was in Russian. Pursuant to paragraph 11 of the UDRP Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the Panel's authority to determine otherwise, having regard to the circumstances of the proceeding.  Here, in determining that the proceedings and the decision would be in English, the Panel noted that the Complainant had submitted a request that English be the language of the proceeding, plus the Center had notified the Complaint in both Russian and English. Barocco Roma srl Unipersonale v. Eurobox Ltd./Whois privacy services, provided by DomainProtect LLC/"Barocco Roma srl Unipersonale", WIPO Case No. D2008-0047

A Domain Name Fashion Faux Pas

Complainant has trademark rights to the mark "JACK&JONES" in the European community, for fashion clothing and certain accessories.  Complainant operates a website under the domain name "jackandjones.dk", which displays pictures of the clothing sold under the "JACK&JONES" trademark.

In this classic case of cybersquatting, Respondent registered the domain name "jackandjones.com", which linked to websites offering fashion goods of third parties and other content.  While the two names "jack" and "jones" are common, the Panel found that their combination as "jackandjones" is not and nor is their use for fashion goods.  The fact that the disputed domain name "jackandjones.com" linked to another website allowing users to make Internet searches for websites displaying other fashion brands was held to be evidence that Respondent was trying to create a risk of confusion with Complainant's trademark and website.  Further, it showed that Respondent used the domain name for the purpose of attracting web traffic intended for the website of Complainant, but directing such web traffic to websites offering fashion goods of third parties.  Holding that Respondent's use of a confusingly similar trademark is liable to exploit Complainant's trademark "JACK&JONES", the Panel ordered transfer of the disputed domain name.  Aktieselskabet af 21. November 2001 v. Domains By Proxy, Inc./John Fox, WIPO Case No. D2007-1623

Fendi's Slow Burn Over Domain Name. . .

Fendi, the prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion, got burnt when it sought transfer of the domain name "fendiman.com" from the Respondent, a professional fire fighter in the Vienna Fire Department.  Fendi owns numerous FENDI trademarks throughout the world and sent the Respondent a cease and desist letter in September 2006, shortly after Respondent's registration of the disputed domain.

In response to Fendi's cease and desist, Respondent claimed that the domain name was registered for private purposes only and was not in use at that time.  Although Respondent offered to transfer the domain to Fendi against payment of his lawyer's costs and the costs associated with cancellation of the domain, Fendi did not respond to his offer and, instead, commenced a WIPO proceeding against him.

In response to the WIPO complaint, Respondent contended that the name "FENDIMAN" was not connected to Fendi, that "Fendi" or "Fendiman" was a nickname given to him by his colleagues soon after he started work at the Vienna Fire Department in 1986 and that he has used this nickname on the Internet since April 3, 2001 in various forums.  To support his contentions, Respondent submitted 10 statements by his co-workers attesting to the nickname and printouts from Internet websites showing Respondent's use of the name "FENDIMAN" on the Internet.

Arguing against registration in bad faith, Respondent claimed that he had searched the Internet for the name "FENDIMAN" prior to the domain's registration without finding any information on Fendi.  In addition, he claimed that he only knew the street "Fendigrasse" in Vienna, which is named after the Austrian painter Mr. Peter Fendi, and that he had never seen any ads from Fendi in Austria. 

The Panel did not ever reach Respondent's bad faith argument, finding that Fendi had failed to prove that Respondent had no rights or legitimate interests under the Policy.  The Panel noted that it is well-established that a nickname can satisfy the requirement of rights or legitimate interest under the Policy if it can be proven that the Respondent has verifiably used such name over a longer period of time.  In the Panel's view, Respondent had provided conclusive evidence that he had been known under the name "FENDIMAN" at least since 1988 and had been actively using such name at least since 2001, thereby denying Fendi's complaint.

Bet that settlement offer didn't look so bad after that decision.
Fendi Adele S.r.l. v. Manfred Fandl, WIPO Case No. D2007-1432