UDRP complaint denied despite respondent's 'thin' evidence

In Dolce & Gabbana srl v Independent Digital Artists (Case D2010-0813, August 25 2010), Dolce & Gabbana srl, the well-known Italian fashion company, has failed to obtain the transfer of the domain name 'dandg.com', despite its trademarks in the term 'D&G'.
The domain name was first registered in 2003 and used for approximately six years in connection with a website for a business called David & Goliath Advertising Agency, or D&G Advertising. In 2010 it was purchased by the respondent, Independent Digital Artists, from a third party who had bought it via public auction. Shortly after acquiring the domain name, the respondent contacted six different businesses using the letters 'D&G', including Dolce & Gabbana, with the intention of soliciting offers to purchase the domain name. Dolce & Gabbana and the respondent were unable to reach agreement on price because the respondent was seeking $100,000. Dolce & Gabbana filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP).
To be successful in a UDRP procedure, a complainant must evidence 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;
  • 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.
As for the first limb of the UDRP, Dolce & Gabbana demonstrated that it had numerous D&G marks and the panel found that the domain name was the functional equivalent of the marks. Thus, it could reasonably be viewed as a virtual replication of the marks and was confusingly similar for the purposes of the UDRP.
Despite the confusing similarity, Dolce & Gabbana still had to prove that the respondent had no rights or legitimate interests in the domain name under the second limb of the UDRP. In general, while the overall burden of proof rests with complainants, panels have recognised that this may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, complainants are simply required to make out a prima facie case that respondents lack rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.
In the present case, Dolce & Gabbana asserted that the respondent was neither commonly known by the acronym 'D&G', nor a licensee of Dolce & Gabbana. However, the respondent responded by submitting evidence that it had purchased the domain name with the intention of operating a marketing firm called D&G Marketing, short for David and Goliath, as per the previous use of the domain name. In this regard, it submitted evidence of its D&G logo, letterhead and business cards, an email address, and evidence of marketing the business through Facebook and Twitter. The respondent also supplied an affidavit and brief supporting statements from three potential customers.
With regard to its attempt to solicit an offer to purchase the domain name shortly after obtaining it, the respondent explained that it was in the business of acquiring domain names, creating corporate logos and branding programmes, and selling entire branded portfolios (including domain names) to interested buyers. According to the respondent, this was viewed as a legitimate interest under the UDRP.
The panel acknowledged that the evidence provided by the respondent was ''somewhat thin in terms of proving business activity in the conventional sense''. However, despite the respondent's failure to prove the operation of an actual business, the panel attached decisive importance to the respondent's lack of intention to make any reference to Dolce & Gabbana's business, or even to the fashion and design fields. In the panel's opinion, the evidence was consistent with the respondent's position that it was in the process of setting up an online marketing business, with the possibility that it may sell the domain name as part of its portfolio.
Moreover, it was relevant that the letters 'D' and 'G' and the combination 'D&G' were commonly adopted as business identifiers in the US market and elsewhere. Five of the businesses approached by the respondent with a view to soliciting an offer for the domain name would appear to have a legitimate interest in using the letters 'D' and 'G' as part of their operating name.
As a result, the panel accepted that the respondent had rights and legitimate interests in the domain name. Therefore, the complaint failed without the need for consideration of bad faith under the third limb of the UDRP. However, the panel drew attention to the fact that a court or tribunal could have reached a different conclusion on the basis of more complete evidence. In the panel's view, it was difficult for Dolce & Gabbana to contest the respondent's sworn evidence in a procedure such as the UDRP.
The panel's closing remarks underline the fact that the case was a difficult one and could have gone either way based on the facts at hand. If the respondent had failed to respond or failed to supply detailed evidence, the panel could have found against it. As the panel pointed out, on the face of it, the respondent's assertions were somewhat thin. However, the respondent managed to do just enough to convince the panel that a business was really being planned and that the evidence was not merely a montage designed to camouflage its real intentions and hoodwink the panel. The case thus illustrates the importance of submitting detailed evidence when responding to a UDRP complaint, particularly in relation to the issue of rights and legitimate interests in the domain name.  
David Taylor, Hogan Lovells, Paris

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