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Arbitration and Mediation Center
Deanna S.p.A. v. Worldwide Media Inc.
Case No. D2003-0964
1. The Parties
The Complainant is Deanna S.p.A, S. Martino in Rio (Reggion Emilia), Italy, represented by Studio Rapisardi S.A., Italy.
The Respondent is Worldwide Media Inc., North Carolina, United States of America, represented by Law Offices of Stephen H. Sturgeon & Associates, PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <deanna.com> ("the Domain Name") is registered with The Registry at Info Avenue d/b/a IA Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2003. On December 5, 2003, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the Domain Name at issue. On December 8, 2003, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2003. The Response was filed with the Center on December 31, 2003.
The Center appointed Christopher P. Tootal as the sole panelist in this matter on January 22, 2004. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 23, 2004, the Complainant’s attorney wrote to the Center asking that:
(a) the Panelist give no consideration to the Respondent’s late-filed Response; and
(b) alternatively, the Panelist set a term for the Complainant to file a reply to the Response.
On January 26, 2004, the Panelist issued a Procedural Order in the following terms:-
"In reply to Complainant’s letter of January 23, the Panelist states that he is prepared to accept the Response. It was filed only one day late, and the Christmas holidays would have reduced the time available for preparing the Response. In the circumstances, it would be unreasonable to refuse to take the Response into account.
A Complainant has no right under the UDRP to reply to a Response, and on the basis of what he has seen so far in this case the Panelist sees no reason to make an exception here, unless the Complainant is able to show that:
• the Respondent has relied on factual evidence which was not previously available to the Complainant; and
• the Complainant has factual evidence that contradicts that of the Respondent and that is likely to have a significant effect on the outcome of the case.
The Panelist is not prepared to take notice of mere counter-arguments to the extensive argumentation put forward by the Respondent.
In the circumstances, the Panelist has ordered that the Complainant indicate within 48 hours to what (if any) factual matters in the Response it would wish to reply. Should the Panelist then decide that he would find a formal Reply of assistance in deciding this case, he would grant a short extension of time for its preparation."
The Complainant has not made any further submission.
4. Factual Background
(i) The Complainant appears to be the owner of trademark registrations in Italy in respect of MISS DEANNA, DEANNA DESIGN and MD MISS DEANNA ("the Trademarks").
(ii) The Domain Name was registered on October 14, 2001.
(iii) The Complainant was incorporated on March 13, 2002.
5. Parties’ Contentions
The Complainant has submitted, inter alia, as follows:-
(i) Its founder, Deanna Ferretti, in 1960 set up a home-made knitwear laboratory, known as Confezioni DEANNA and, from then, she progressively extended and improved its activity; in 1973 she incorporated the company "Miss Deanna S.r.l." which was merged into "Miss Deanna S.p.A." in 1988.
(ii) On April 24, 2002, Miss Deanna S.p.A. sold the branch of business including the Trademarks to the Complainant, Deanna S.p.A. which was incorporated on March 13, 2002.
(iii) The activity carried out by the Complainant and its predecessors has always consisted of the production and commercialization of fashionable and high-quality clothing products (above all women’s knitwear), through the use of the most precious raw materials and the use of high processing standards.
(iv) During its thirty year history Miss Deanna has made, produced and commercialized designer collections from Kenzo, Krizia, Armani, Coveri, Max Mara, Valentino, Montana, Joseph Tricot and others, as well as collections using the Trademarks.
(v) The success achieved by the Complainant is demonstrated by the fact that its factory reached a covered surface area of 12,000 square metres, with over 100 employees; the capital stock was increased to 6 billion lire and turnover reached 50 billion lire, 30% of which was made in Italy and 70% was generated in foreign markets and in particular Japan, South-East Asia, the European Union and USA.
(vi) The term ‘Deanna’ constitutes the core of the Trademarks and is the distinguishing and distinctive element thereof, being accompanied by generic words such as ‘miss’ or ‘design’. The Trademarks are used for different kinds of goods, such as perfumes, cosmetics, leather goods, items of clothing and shoes etc. with many international registrations at WIPO and other registrations in many countries.
(vii) The Trademarks are strong trademarks, with high distinctive capability, since they are fantasy trademarks, which are certainly not generic, nor descriptive of the products marked with those signs.
(viii) Immediately after its registration on June 27, 2002, (sic), the Domain Name was connected to a web-site with a clear pornographic content.
(ix) On November 11, 2002, the Complainant’s attorney sent a warming letter to Mr. Michael Berkens at the Complainant’s address.
(x) On November 22, 2002, Mr. Berkens sent an e-mail in reply stating:
"You will have to fax us proof of trademark registration and other relevant info ….".
[This e-mail bears the heading "Subject: Re: GIORGIO ARMANI S.p.A/PARAVA NETWORKS INC. – Domain name "DEANNA.COM". Neither party has explained the relevance of either of these corporations to the Domain Name – Panelist].
(xi) On November 25, 2002, Mr. Berkens sent a further e-mail (similarly headed) saying:-
"We agreed that we will transfer the domain but have not heard from you".
(xii) On November 26, 2002, the Complainant’s attorney replied by fax, as follows:-
"In reply to your 11.11.2002, e-mail, please find herein attached, information about the trademarks ‘Deanna’ owned by our client.
Looking forward to receiving your kind urgent reply we remain very truly yours."
(xiii) On December 9, 2002, Mr. Berkens denied that the Complainant had any claim to the Domain Name, and challenged it to file a claim under the UDRP with WIPO.
(xiv) The Domain Name has since been offered for sale on the Internet, first for US$20,000 and more recently for US$25,000.
(xv) Mr. Berkens and/or the Respondent have been involved in three other disputes concerning domain names (although there are no reports on the outcome of any of them).
(xvi) The Respondent and/or Mr. Berkens own numerous domain names which are offered for sale for sums of US$10,000 and US$25,000.
The Respondent asserts, inter alia, that:-
(i) There is no confusing similarity between the Domain Name and the Trademarks because the services and products for which the Complainant may have trademark rights are substantially different from the services and products which are being marketed via the Domain Name.
(ii) The term "DEANNA" is subject to substantial third party use unaffiliated with Complainant. A search on the Internet search engine Google.com for the word "DEANNA" yields innumerable third-party web pages.
(iii) The Complainant admits that there was a bona fide offering of goods and services when the Complainant describes the content of the web pages prior to the notice to the Respondent of the dispute. Respondent was utilizing the domain name for the marketing of adult entertainment. The name Deanna (Deanna is also portrayed) had for several years been utilized as a brand of adult entertainment. Deanna is also portrayed on the site.
(iv) Although the Respondent and/or its principal may have been involved in previous domain name disputes, Complainant has not provided any evidence indicating that the Respondent has lost any domain name disputes or that Respondent and/or its principal may have engaged in cybersquatting activity. Individuals who are involved in Internet businesses and in business involving domain names may have individuals who may make unfounded allegations or who create disputes. However, there is no proof that the Respondent and/or its principal may have engaged in cybersquatting activity.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Is the Domain Name confusingly similar to any of the Trademarks?
Clearly, the Domain Name is not identical to any of the Trademarks. The questions to be decided here therefore are:-
(i) is there confusing similarity to any of the Trademarks?; and
(ii) has the Complainant rights in any such Trademark?
The Respondent advances a lengthy argument based on numerous decided cases which consider it is relevant to examine the respective fields of activity of the Complainant and Respondent. This Panelist does not accept that this approach is the proper one. The Panelist is of the opinion that the test for the purposes of Paragraph 4(a)(i) of the Policy involves a simple comparison of the domain name and the relevant trademark. The only part of the Trademarks that is in any way distinctive is the name DEANNA. In the Panelist’s opinion, it is unarguable that "DEANNA" and "MISS DEANNA" are confusingly similar (because the word "MISS" merely identifies the marital status of "DEANNA").
The Panelist also accepts that the Complainant has "rights" in the
Trademarks. While the Complainant might have difficulty in asserting any rights
in the USA (where it has no registered trademarks), the Panelist is prepared
to accept that the Complainant could restrain infringement of Trademarks if
a third party were to sell relevant goods in Italy bearing any of those Marks.
The Panelist therefore decides the first element of Paragraph 4(a) in favour
of the Complainant.
B. Rights or Legitimate Interests
As to element (ii), the Policy sets out the following, non-limitative, circumstances
which would enable a Respondent to demonstrate he has rights or legitimate interests
in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations
to use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers or
to tarnish the trademark or service mark at issue.
The Respondent registered the domain name on October 14, 2001, several
months before the Complainant itself was incorporated. The Respondent has pointed
to the results of a "Google" search against the name "DEANNA".
The Panelist has conducted a brief search for himself. There appeared to be
over 500,000 entries. A brief perusal of a few tens of these makes it clear
that Deanna is a common first name of women engaged in a wide variety of activities
(including "adult entertainment"). In such circumstances, it would
be very difficult for anyone to claim exclusive rights in the name DEANNA simpliciter.
The Respondent claims that it can rely on Paragraph 4c(ii) of the Policy to
demonstrate its rights or legitimate interests in the Domain Name as a result
of having set up a web-site offering "adult entertainment" (as the
Respondent describes it) or pornographic material (as the Complainant describes
it). The Respondent asserts (see Paragraph 5.B.(iii) above) that the Complainant
"admits there was a bona fide offering of goods and services".
The Panelist does not accept that the Complainant has made any admission as
to the Respondent’s bona fides in the this respect.
Nevertheless, given the inherent non-distinctiveness of the name DEANNA, it
was open to anyone to register the Domain Name, and in the Panelist’s opinion
the Respondent was entitled so to do. The Respondent manifestly registered the
Domain Name before it had notice of this dispute and, as acknowledged by the
Complainant, was using the Domain Name. Was this use a bona fide offering
of goods and services? In this respect, paragraph 4(c)(ii) of the Policy offers
a respondent the opportunity of demonstrating he has rights or legitimate interests.
In this case the Respondent relies primarily on a plethora of legal argument,
and innumerable prior decisions. It does not seek to explain why, if it was
conducting a bona fide offering of goods or services, it promptly closed
down the website and put the Domain Name up for sale for the sum of US$20,000
once it was challenged by the Complainant.
However, in light of the Panelist’s finding below under the third element of
the Policy, it is unnecessary to reach a decision under Paragraph 4(a)(ii) of
C. Registered and Used in Bad Faith
The Panelist has not seen any clear evidence to suggest that the Domain Name
was registered in bad faith. For instance, there is no evidence to suggest that
the US-based Respondent knew of the Complainant’s Italian trademarks when the
Respondent registered the Domain Name (and it should be remembered that none
of the Trademarks is in respect of DEANNA simpliciter). There is no other evidence
that at that time the Complainant might be intending to use the name DEANNA
on its own – indeed the Complainant, Deanna S.p.A, was not incorporated under
that name until 5 months after the Domain Name was registered. In the absence
of evidence and taking into account the fact the name DEANNA is a common first
name, it is not possible to conclude that the Respondent’s registration was
motivated by bad faith.
The Complainant has, in the opinion of the Panelist, therefore failed to establish
element (iii) of Paragraph 4(a) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Christopher P. Tootal
Date: February 16, 2004