In the recent decision of CHRISTIAN DIOR COUTURE v. Kianna Dior Productions (WIPO D2009-0353, May 24, 2009), a single member Panel was faced with a dispute over the domain www.kianndior.com. Complainant, famous French fashion house known for fragrances, clothing and other fashion accessories and maintains a web site at www.dior.com. Respondent, is a well known pornstar working in the adult entertainment industry for more then a decade and also maintains an additonal web site at www.kiannaxxx.com. The Panel noted that Christian Dior must prove three elements under the ICANN UDRP policy section 4(a) which include: “(i) the domain name is identical or confusingly similar to a trade mark 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.”
In addressing the first element, whether the domain was identical or confusingly similar to Complainant’s mark(s), the Panel first noted there was no doubt that Complainant had trademark rights in DIOR, CHRISTIAN DIOR and MISS DIOR. Complainant argued that since the domain wholly incorporates the DIOR mark, that it would be sufficient to establish confusing similarity. Interestingly, the Panel stated:
This Panel is 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 in the present case. For example, the Complainant’s trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.
Ultimately though, the Panel concluded that Complainant had established this element and that the domain was confusingly similar to the Complainant’s DIOR mark.
Moving to the second element, whether Kianna Dior had any rights or legitimate interests in the domain, the Panel noted that Complainant established a prima facie case. Once a Panel makes that determination, the burden of proof switches to Respondent. The Panel relied on evidence and arguments presented by Respondent that Respondent’s company, Kianna Dior Productions was an active corporation which registered the domain. The Panel in analyzing the facts made the following finding:
Paragraph 4(c)(ii) of the Policy requires only that the Respondent has been commonly known by the domain name. The Panel finds that by virtue of use since 2001, the Respondent (to use the words of paragraph 4(c)(ii), “as an individual, business, or other organization”) has provided evidence of being commonly known in her industry and by her audience by the domain name. If the Respondent is infringing the Complainant’s trademark rights, the Complainant may initiate infringement proceedings in an appropriate court. But in this case, the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii). The Panel finds that the Respondent has on balance discharged the onus which fell to it under paragraph 4(a)(ii) of the Policy and accordingly finds that the Complainant has in the present administrative proceedings failed to establish the second limb of its case.
As a result, the Panel declined to review the final bad faith element, since Complainant failed to establish the second element. The Panel DENIED Complainant’s request for transfer.
DefendMyDomain Commentary: But See our previous posting on June 8, 2009, “Jim’s Dead, But His Music and Persona Only Live On In One Jim Morrison Domain” wherein the JimMorrison domain was Transferred.
