Christian Dior fails to pick up 'kiannadior.com'
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In Christian Dior Couture v Kianna Dior Productions (Case D2009-0353, May 24 2009), a World Intellectual Property Organization arbitration panel has found in favour of the respondent, concluding that the latter had a legitimate interest in the disputed domain name 'kiannadior.com'.
Christian Dior Couture is a world-renowned French fashion house. Christian Dior uses various DIOR-formative trademarks, including DIOR, CHRISTIAN DIOR and MISS DIOR, in association with fragrances, clothing and fashion accessories. The DIOR marks are the subject of trademark registrations in various jurisdictions around the world.
Kianna Dior Productions (KDP) is a company which promotes the films of Kianna Dior, an adult film actress. Kianna Dior is the stage name of Victoria Woo, the founder and president of Kianna Dior Productions. In 2002 Woo incorporated the respondent company, which proceeded to register the disputed domain name 'kiannadior.com'. Since that time, KDP has used the domain name in association with a website which promotes Woo's films and related activities.
In March 2009 Christian Dior began proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) in respect of 'kiannadior.com'. A complainant in UDRP proceedings must establish that:
- the domain name is identical or confusingly similar to a trademark in which it has rights;
- the registrant does not have any rights or legitimate interests in the domain name; and
- the registrant registered the domain name and is using it in bad faith.
Christian Dior alleged that the disputed domain name was highly similar to the trademark DIOR, since the mark is completely included in the domain name. In fact, Christian Dior took the position that where a domain name incorporates the whole of a complainant’s mark, this is sufficient to justify a finding of confusing similarity. In support of this position, Christian Dior relied on two earlier UDRP decisions in which it was the successful complainant. Interestingly, both cases involved respondents who were adult film actresses and had adopted a stage name which used Dior as a surname.
Although the panel ultimately agreed that 'kiannadior.com' was confusingly similar to the DIOR marks, the panel rejected Christian Dior’s argument that including the totality of a complainant’s mark in a domain name must lead to a finding of confusing similarity. The panel was of the opinion that "the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive". For example, the DIOR mark could be wholly incorporated in the hypothetical domain name 'diorama.com', but the word 'diorama' has an independent dictionary meaning in English which dispels any confusion with the trademark DIOR.
Ultimately, KDP was successful in the proceedings by establishing that it had a legitimate interest in the disputed domain name. KDP furnished evidence that Woo had been commonly known as Kianna Dior since 2001 and had used the domain name in association with a website which promoted her activities under her stage name since 2002. Accordingly, the panel concluded that Woo was recognized in her industry and by her audience by the domain name.
Having concluded that KDP had a legitimate interest in the domain name, the panel dismissed the complaint and did not address the issue of bad-faith use and registration. The panel noted that if KDP was infringing Christian Dior's trademark rights, the latter should initiate infringement proceedings in an appropriate court.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto
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