Nickname may constitute legitimate interest in registering domain name
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In Sandro Andy v Balzarin (Case D2010-0348, April 21 2010), Sandro Andy has failed to obtain the transfer of the domain name 'sandro.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Sandro, a company based in Paris, France, filed a complaint with the World Intellectual Property Organization under the UDRP against Alessandro Balzarin, an individual based in Frankentahl, Germany, seeking the transfer of the domain name 'sandro.com'.
To achieve the transfer of a domain name under the UDRP, a complainant needs to establish all of the three following circumstances:
- The domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Sandro operates a website at 'sandro-paris.com', and sells clothing items for men and women. Sandro owns the French trademark SANDRO (Registration 1669006) for goods in Classes 3, 18, 24 and 25 of the Nice Classification, dated June 4 1991. The domain name 'sandro.com' was registered on March 14 1997.
Addressing the first limb of the UDRP, Sandro claimed that the domain name was identical to its trademark SANDRO. In response to this point, Balzarin alleged that:
- Sandro had not established existing trademark rights in the term 'Sandro', as French trademark registrations could not be considered in proceedings in English; and
- as Sandro's Community trademark had been filed, but not registered, Sandro had failed to satisfy the first limb of the UDRP.
Balzarin also argued that, as Sandro's company name consisted of the terms 'Sandro' and 'Andy', and as Sandro was totally unknown in Germany, the domain name 'sandro.com' could not be confusingly similar. Balzarin added that no likelihood of confusion could be ascertained because he never used the term 'Sandro' in connection with the classes of goods for which the trademark was protected.
In spite of these - rather bizarre - arguments, the panel was satisfied that Sandro had clear rights in the SANDRO mark and decided that the first limb of the UDRP had been satisfied. The panel stated that, under the UDRP, it was sufficient for Sandro to prove that it had trademark rights in the relevant jurisdiction, regardless of the registration language. Furthermore, the panel was satisfied that the domain name replicated the trademark, irrespective of the alleged lack of risk of confusion with Sandro's company name.
Turning to the second limb of the UDRP, Sandro alleged that, based on its internet and trademark search, Balzarin had no rights or legitimate interests in respect of the domain name.
In response, Balzarin submitted that a nickname constituted a right and a legitimate interest to register and use a domain name. He further claimed that German laws granted him protection for the use of the domain name, given that it corresponded to the nickname Sandro, based on his name Alessandro. Balzarin also submitted that he had used the nickname Sandro since his childhood and that he was known by this name in his capacity as a professional photographer. The panel was convinced with the evidence brought forward by Balzarin and decided that Sandro had failed to establish the second limb of the UDRP.
Finally, Sandro sought to establish the third requirement by submitting that Balzarin had registered and was using the domain name in bad faith. He claimed that Balzarin registered the domain name after the application date of the trademark, which was well known worldwide for clothes, notably in France, Benelux, Germany, Italy, United Kingdom, South Korea and Lebanon. Sandro added that the domain name pointed to a website only representing the picture of a sunflower.
Balzarin stated that he had chosen to register the domain name to establish an online presence for customers that knew him as a photographer. Balzarin established that he was a well-known photographer, as he had numerous pictures published in German newspapers. Balzarin asserted that he had no knowledge of any similar trademark or fashion label, especially as Sandro had no trademark rights in Germany. In addition, Balzarin disputed that the mark was well known throughout the world, particularly because a search for the keyword 'Sandro' via Google in German did not result in any record concerning Sandro or the SANDRO mark.
Although the cumulative requirements had not been established, the panel addressed the third condition in view of the arguments raised by the parties. The panel held that no evidence proved that Balzarin could have known about Sandro's mark when he registered the domain name. On the contrary, the panel noted that Balzarin had a legitimate reason for choosing it as his domain name in 1997, given that it corresponded to his nickname, and that Sandro had not established that the SANDRO mark was a well-known and famous mark. From this perspective, the panel held that the third requirement had not been met.
This case represents a warning for any potential complainants seeking to recover domain names under the UDRP. The panel demonstrated that, despite procedural evidence of similarity, one does not need to be a famous person to be entitled to a domain name, so long as a legitimate interest is involved - even in the case of a nickname.
David Taylor, Hogan Lovells, Paris
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