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September 8, 2010 / Nate Harris

Dolce & Gabbana s.r.l. v. Independent Digital Artists

Summary of Dolce & Gabbana s.r.l. v. Independent Digital Artists
(WIPO Case No. D2010-0813)
Filed May 20, 2010; Decided August 25, 2010 (Panelists: Christopher J. Pibus)

Domain Names: <dandg.com>

dandg.com

dandg.com

The Parties

Complainant Dolce & Gabbana s.r.l. of Milan, Italy is the exclusive licensee of clothing and accessories designed by Domenico Dolce and Stefano Gabbana. Dolce & Gabbana owns trademark registrations in over 90 countries around the world, including several incorporating the formative D&G.

The domain was first registered (by a party other than Respondent Independent Digital Artists) in 2003, and was used for six years in connection with a business called David & Goliath Advertising Agency, or D&G Advertising. Once the domain expired, Independent Digital Artists acquired it in February 2010. Independent Digital Artists’ business model is to develop and sell an entire “branded portfolio”, including business name, logo, and domain name. As part of this model, the domain pointed at a page featuring Independent Digital Artists’ marketing logo for David & Goliath Marketing, (unrelated to the original owner of the site, despite the identical name). Independent Digital Artists offered to sell the disputed domain name for $100,000, targeting several businesses having the name (or initials) D&G.

Identical or Confusingly Similar

Dolce & Gabbana has established rights in the D&G trademark. Furthermore, “[t]he 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.” Thus, the disputed domain name is nearly identical to Dolce & Gabbana’s mark.

Rights or Legitimate Interests

Independent Digital Artists introduced evidence that it had begun setting up a business, such as the printing of business cards and letterhead bearing the D&G logo, as well as creating Twitter and Facebook accounts. Further, several businesses operate under the name “D&G”, meaning that Dolce & Gabbana does not have exclusive rights to the name. Accordingly, Dolce & Gabbana has failed to show that Independent Digital Artists has no rights or legitimate interest in the disputed domain name. Yet the Panel makes clear this was a close case:

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.

Bad Faith

The Panel did not consider bad faith.

Decision

The complaint is denied.

Commentary

“D and G” may be functionally equivalent to “D & G”, but is it aesthetically equivalent? In my view, the ampersand adds something that the word “and” doesn’t.

The block quote above seems to indicate that the Panel felt the letterhead and business card evidence was flimsy, but because it was uncontroverted the Panel apparently felt constrained to find that those preparations showed rights or legitimate interest in the mark.

I’m curious how Independent Digital Artists has rights or legitimate interests in the mark when it basically copied the name of the previous owner of the disputed domain, David & Goliath Marketing. Wasn’t this likely to cause confusion?

Epilogue

9/7/2010: dandg.com still points to Independent Digital Artists’ David & Goliath Marketing placeholder page.

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