The Complainant is CHRISTIAN DIOR COUTURE, France.
The Respondent is Paul Farley, United States of America.
2. The Domain Name and Registrar
The disputed domain name <annadior.com> (the “Domain Name”) is registered with Melbourne IT, trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2008. The Center transmitted by email to Melbourne IT a request for registrar verification in connection with the Domain Name, and on January 7, 2008, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Response was filed with the Center on January 18, 2008. It was unsigned and no hard copy has been provided. When the Respondent was reminded of the Respondent’s obligation to provide a hard copy, “Anna Dior” sent an email to the Center advising that “we are not planning to send hard copies via regular mail”, and enquiring if that would be alright. The Center responded on January 31, 2008, drawing the Respondent’s attention to the relevant provisions of the Rules which require a respondent to submit a signed, hard copy of its response, but noting that the email from “Anna Dior” had been passed on to the Panel.
The Center appointed Warwick Smith as the sole panelist in this matter on January 25, 2008. The Panel finds that it was properly constituted. The Panel 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.
4. Factual Background
The Complainant is the owner of the famous French fashion label “Christian Dior”. It is the proprietor of numerous registrations of the marks DIOR, and CHRISTIAN DIOR around the world, including in the United States of America where the Respondent resides. (The Complainant is the proprietor of the mark DIOR in the United States in international classes 14 and 18 (for handbags), with effect from May 1994, and in class 23 (clothing) with effect from September 1993.)
The Complainant is also the proprietor of the mark MISS DIOR in Canada (for clothing, registration effective from August 1963), and in France (for leatherwear and jewellery, registration effective from December 1987). The mark MISS DIOR is also registered in the United States in respect of perfumes – the United States registration dates from December 1951, and the registered proprietor is the Complainant’s sister company, Christian Dior Perfumes.
The Domain Name was registered on December 13, 2004. It resolves to an adult website (“the website”), through which a Norwegian-born woman (variously referred to on the website as “Miss Anna Dior” and “Mistress Anna”) offers bondage, discipline and sado-masochism services (“BDSM”) to customers in the San Francisco Bay and Washington D.C. areas of the United States. It is possible for customers or admirers to purchase certain of “Mistress Anna’s” personal clothing items through the website.
The home page at the website contains a prominent statement: “If you are not 21 years of age or are offended by adult content, please Leave.”
The contact email addresses provided on the website are yahoo.com email addresses (i.e. they are not addresses at the Domain Name).
Although the Whois particulars for the Domain Name (and the Registrar’s verification response) show the registrant as “Paul Farley”, with an address in North Carolina, the Response names the Respondent as “Anna DIOR dba, Annadior.com, Paul Farley of PO Box 10141, San Jose, California”, and concludes with the words “Respectfully Submitted, Anna Dior and Paul Farley”.
In the Response, the Respondent explains that “Anna Dior” is “the nom de plume of a provider of alternative lifestyle non-sexual domination services”. The website has picture gallery pages, an “FAQ” page, a users’ testimonial page, and a
“Wish List” page, where clients of Mistress Anna receive advice on gifts she would find welcome. The “Wish List” includes reference to various perfumes, including “Christian Dior”.
In the Response, the Respondent asserts that “the Respondent” has been using the “common law trade mark ANNA DIOR”, for more than eight years, and that the Respondent’s alleged common law rights in that mark are based on a first use in commerce in “approximately January 1995” (i.e. approximately 13 years ago). The Respondent has not registered that claimed mark with the United States Patent and Trademark Office (or, apparently, in any other jurisdiction).
The Respondent says that, on receipt of the Complaint in this proceeding, the Respondent offered to discontinue any reference to the Complainant’s perfume on the website, in order to prevent any possibility of confusion. The Respondent says that he/Mistress Anna also offered, in “an abundance of caution”, to place a disclaimer on the website. Both offers are said to have been summarily refused by the Complainant.
Finally, the Respondent asserts that web-based searches for the Complainant’s name, products, or services, do not produce any “hits” for either Miss Anna Dior’s services, or for the Domain Name (for example, Google and Yahoo! searches on “Dior” and “Christian Dior”, do not call up the website).
5. Parties’ Contentions
A. Complainant
The Complainant contends:
(i) The Domain Name is nearly identical to its DIOR mark, and is very similar to its CHRISTIAN DIOR mark.
(ii) “Anna” is a very common name, and “dior” is the distinctive part of the Domain Name. Also, the first two letters of the Domain Name correspond with the last two letters in “Christian”. Consumers will think ANNA DIOR is a new trade mark of the Complainant.
(iii) The Respondent has no trade mark or other intellectual property rights in ANNA DIOR or in DIOR, and has not been granted any license or authorization to use those terms or to register the Domain Name.
(iv) The Respondent is not commonly known by the Domain Name.
(v) The Complainant is famous all over the world, and the Respondent must have known of the Complainant and its DIOR and CHRISTIAN DIOR marks when the Domain Name was registered.
(vi) The website is an erotic website, in which “Miss Anna Dior” proposes “sessions” and offers for sale personal items such as her stockings, panties, socks, and pantyhose.
(vii) The Respondent wants to use the notoriety of the Complainant and its well-known DIOR marks, and has acted in bad faith in registering and using the Domain Name.
B. Respondent
The Respondent contends:
(i) The Respondent does not challenge the fact that the Complainant possesses registered trade marks in connection with the sale of certain products, including perfumes, leather bags, clothing, and related matters. But the Complainant’s trade mark does not extend to any of the services offered at the website, and nor does the Complainant have any intention of providing such competing services. Thus, this proceeding is an effort by the Complainant to prevent the use of the Respondent’s common law trade marks, Anna Dior and <annadior.com> even though the Respondent’s use does not infringe the Complainant’s trade mark and the Complainant has no intention of using the Domain Name; it merely wishes to prevent the Respondent from making use of its common law mark.
(ii) The Respondent’s use of the common law trade mark Anna Dior long precedes the Respondent’s use of the Domain Name. The Respondent has never intended to infringe on any other person’s trade marks.
(iii) There is no evidence that the Respondent’s use of the Domain Name has created or fostered any confusion, dilution of value, or other infringement of the Complainant’s trade marks.
(iv) The only way to find the website online is to purposely search for either the services uniquely provided by the Respondent, or to search specifically for the name “Anna Dior” (not “Christian Dior”). Searches for “Dior” or “Christian Dior” on Yahoo! or Google do not call up the website within the first 6,000 hits.
(v) There is very little likelihood of confusion between the website and the Complainant’s website (or between the Domain Name and any trade mark of the Complainant). The parties are in different businesses, using different names, in different but overlapping geographical areas. The parties’ respective domain names and trade marks can and do peacefully co-exist, without confusion.
(vi) The Respondent has not been guilty of attempting to prevent the Complainant from using its own trade marks to the fullest extent permitted by law.
(vii) The Respondent has not attempted to “piggy-back” on the Complainant’s goodwill in its trade marks.
(viii) The Respondent (as an individual, business, or other organization) has been or is commonly known by the Domain Name. Indeed, the Respondent is exclusively professionally known by the common law trade mark Anna Dior. Abandoning that trade mark would be expensive, time consuming, and impose a significant burden upon the Respondent.
(ix) The Respondent’s use of both the common law mark and the Domain Name is intended for both commercial and informational purposes, and to spread information about the BDSM lifestyle. There is no intention to mislead or divert consumers from any websites owned or used by the Complainant, or to tarnish or dilute any trade marks or service marks of the Complainant.
(x) The Domain Name has not been registered or used in bad faith. It was registered and is being used in connection with providing non-competing products and services in a manner that creates no likelihood of brand confusion.
(xiv) The Domain Name was not registered for any of the bad faith purposes described at paragraph 4(b) of the Policy.
6. Discussion and Findings
A. General Principles Under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant succeeds on this part of the Complaint.
The Domain Name wholly incorporates the Complainant’s DIOR mark, and numerous Panels have found that the fact that a domain name wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Policy. See, for example Nokia Group v Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member Panel decision The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v. Mark Schnorenberg/ Quintessentially Concierge, WIPO Case No. D2006-1643.
The Panel accepts the Complainant’s submission that “dior” is the distinctive part of the Domain Name. The name “Anna” is a reasonably common given name (in a number of languages), whereas the name “Dior” is instantly recognized around the world as a reference to the Complainant or its products. Adding “anna” is quite insufficient to dispel the likelihood of confusion resulting from the incorporation of the Complainant’s DIOR mark in the Domain Name. Furthermore, the likelihood of confusion is, if anything, increased for Internet users who are familiar with the Complainant’s products marketed under its MISS DIOR mark – someone called “Anna Dior” might well be referred to (in a formal context), as “Miss Dior”.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
“[A] complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Panel has found that the Domain Name is confusingly similar to the Complainant’s well-known DIOR and MISS DIOR marks, and that the Respondent has not been licensed or authorized to use those marks, whether in the Domain Name or otherwise. In those circumstances, the evidential onus shifts to the Respondent, to produce credible evidence that the Respondent enjoys some right or legitimate interest in the Domain Name.
A sensible starting point is to consider whether the Respondent has a right or legitimate interest under paragraph 4(c)(ii) of the Policy. That paragraph applies where a respondent (whether as an individual, business or other organization) has been “commonly known” by the at-issue domain name, even if the Respondent has acquired no trade mark or service mark rights in the relevant name.
In the case of Sanderling Pty Ltd, trading as Thimblelady v. Roxanne International,
WIPO Case No. D2007–0385, this Panel said: “The Panel is mindful of the need to take care when considering claims by respondents that they have “been commonly known” by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant’s complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v. Bancovic,
WIPO Case No. D2004-0890, where the Panel said:
“Since a “legitimate interest” is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has “been commonly known” by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch,
WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname “Red Bull” since childhood because Respondent did not provide any evidence to support contention. See also, e.g, DIMC Inc, & The Sherwin-Williams Company v. Quang Phan,
WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.’“
Applying that approach in this case, the Panel notes the following:
It is the domain-name holder (referred to in Paragraph 4(c) of the Policy as “you”) who is entitled to invoke the “commonly known by” defence, and who therefore must be the person or entity who has been commonly known by the at-issue domain name. In this case, the domain-name holder (the Respondent), is “Paul Farley”, and it seems improbable (although not impossible) that Paul Farley himself would be commonly known as “Anna Dior”. The question is more likely to be whether Mr. Farley is running a business which has become commonly known as “Anna Dior”.
There is certainly evidence that the provider of the BDSM services featured on the website, operates under the names “Miss Anna Dior” and “Mistress Anna”, but there is no evidence that the registrant/Respondent Paul Farley is known by that name, nor that any organization or business run by Mr. Farley is “commonly known by” the name “Anna Dior”. No copies of letterhead, or invoices addressed to a business or organization called “Anna Dior” have been produced, and it appears that the “commonly known by” claim applies only to the individual woman who is featured on the website. She is not the Respondent, and even if she were, there is no sufficient proof that she is known professionally by the simple name “Anna Dior”. (Having regard to this woman’s particular profession, it may well be that the term “Miss” or “Mistress” would form an essential part of her professional “nom de plume”.)
In addition, the Panel notes that the website refers to “my other website” at “www.missannadc.com” and that the email contact addresses on the website are [email protected] and [email protected]. The expression “dior” is not used in any of these addresses or locations.
In summary, there is insufficient proof that Mr. Farley (or any business or organization operated by him), has been commonly known by the Domain Name. The argument based on paragraph 4(c)(ii) of the Policy therefore fails.
Likewise, there is insufficient evidence to show that the Respondent has common law trade mark or service mark rights in the expression “Anna Dior”. That claim was not supported by any evidence showing that the Respondent has used that expression in trade at all, let alone sufficiently for the expression to have become distinctive of any services provided by the Respondent. Normally such evidence would be expected to cover such matters as the amount spent advertising or otherwise promoting the claimed mark, evidence of consumers linking the claimed mark to the claimed source (in this case claimed to be the Respondent), evidence of any unsolicited media coverage of the service provided under the claimed mark, sales success, and the length and exclusivity of use of the claimed mark – see Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,
WIPO Case No. D2001-0784, followed in Maritime-Ontario Freightlines Limited v. Magic Domain,
WIPO Case No. D2007-0202, and in ProCPR, LLC v. Name Administration Inc. (BVI),
WIPO Case No. D2007-0823. In this case there is nothing more than an unsupported assertion in the Response that the Respondent enjoys common law rights in an “Anna Dior” mark, with unexplained, contrasting claims that the Respondent has been using that mark for “more than eight years”, and that the first use of the claimed mark in commerce was in approximately 1995.
The website is clearly commercial in nature, and there is no question of the Respondent having made a legitimate non-commercial use of the Domain Name.
Nor has the Respondent succeeded in persuading the Panel that he has been making a fair use of the Domain Name, or that he has been using the Domain Name in connection with a bona fide offering of goods or services. Indeed, the Panel is satisfied that the Respondent has registered and used the Domain Name in bad faith, for the reasons which are set out in Section 6D of this decision. Bad faith registration and use could never qualify as a “fair” use, or a use “in connection with a bona fide offering of goods or services”, so the Respondent cannot claim any right or legitimate interest under either subparagraph 4(c)(i) or subparagraph 4(c)(ii) of the Policy.
No other basis for a “right or legitimate interest” finding has been suggested by the Respondent, so the Complainant must succeed on this part of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location
The Panel also finds this part of the Complaint proved. The Panel has come to that view for the following reasons:
1. The Domain Name contains the Complainant’s DIOR mark in its entirety, and the Domain Name is confusingly similar to that mark and the Complainant’s MISS DIOR mark.
2. The Complainant has not authorized the Respondent to use its DIOR mark, whether in the Domain Name or otherwise.
3. On the evidence submitted, the Respondent cannot claim any common law trade mark rights in the expression “Anna Dior”, and nor can he claim that the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name,
4. The Respondent was quite clearly aware of the Complainant’s DIOR mark when the Domain Name was registered. The website itself contains reference to the Complainant’s Christian Dior perfume, and the mark has been well-known around the world for many years. Having regard to that worldwide repute, the Panel also finds that it is more likely than not that the Respondent and the woman featured on the website were also aware of the MISS DIOR mark when the Domain Name was registered.
5. Numerous Panels deciding cases under the Policy have held that pornographic content on a respondent’s website may constitute a significant indicator of bad faith. As the Panel noted in Caesars World, Inc v. Alaiksei Yahorau,
WIPO Case No. D2004-0513: “Prior decisions have consistently articulated support for this position, based on the concept of tarnishment” (this Panel’s emphasis). Previous cases to that effect were cited in the Caesars World Inc case – ABB Asea Brown Boveri Ltd. v. Quicknet,
WIPO Case No. D2003-0215 (“the use of ABB as part of a Domain Name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith”); America Online v. Viper,
WIPO Case No. D2000-1198 (“the fact that the site operated by Respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith”); MatchNet plc v. MAC Trading,
WIPO Case No. D2000-0205 (“the Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark”); America Online, Inc. v. East Coast Exotics, WIPO Case D2001-0661, citing Coral Trademark Limited v. Eastern Net Inc,
WIPO Case No. D2000-1295 (“the posting of pornographic contents on a website under a domain name that corresponds to a third party’s mark is a bad faith use of the Domain Name”).
In The Perfect Potion v. Domain Administrator,
WIPO Case No. D2004-0743, the Panel conducted a review of decisions covering cases where the domain names in issue were linked to pornographic sites, to see if panels were taking the view that linking a domain name (which is identical or confusingly similar to a complainant’s mark) to a pornographic website, is in itself sufficient to support a finding of bad faith, irrespective of the Respondent’s motivation. The Panel in The Perfect Potion concluded:
“Having conducted the review, the Panel is satisfied that the vast majority of decisions in this area are consistent in calling for evidence of a deliberate intention on the part of the respondent to ride on the back of the Complainant’s goodwill/trade mark, and that on this point the linking of the domain name to a pornographic site is no different to the use of the domain name in connection with any other service offering. That is not to say, of course, that, depending upon the circumstances and the particular domain name in question, such a linkage may not be evidence of bad faith (see, for example, Caledonia Motor Group Limited v. Amizon,
WIPO Case No. D2001-0860).”
Later in The Perfect Potion, the Panel noted that “the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy, and can only support a finding of bad faith for the purposes of paragraph 4(b)(iv) of the Policy if it is shown to the satisfaction of the Panel that the Respondent had the Complainant or its trade mark in mind when selecting the domain name for that purpose”.
In The Perfect Potion, the Panel noted that there was no evidence to suggest that the Respondent had ever heard of the Complainant or its trade mark when the Respondent adopted the Domain Name for its website. Of course, that is not the position here, where the Panel has found that the Respondent was aware of the Complainant and its marks.
The Panel respectfully agrees with and adopts the view of the experienced panelist in The Perfect Potion, that, to establish bad faith registration and use in a case where an at-issue domain name has been linked to a pornographic website, there must still be an element of “targeting” the Complainant or its mark, or at very least the Respondent must have had the complainant or its trade mark in mind when selecting the domain name (to adopt the wording of the Panel in The Perfect Potion).
6. A question might be thought to arise as to whether the website in this case can be regarded as “pornographic”. In the Panel’s view, it does not matter whether or not that precise word is an appropriate descriptor of the website – if the nature of the website is such that linkage with a complainant’s mark could reasonably be supposed to tarnish that mark (in the same way that numerous panels have held that pornographic websites do), the result should be the same. The Panel has no doubt that the website in this case is of a kind that would tarnish the Complainant’s marks if it were confusingly linked to those marks. The website is an “adult” website, restricted to persons over the age of 21. Through the website, Mistress Anna proposes BDSM sessions, and offers for sale her new, and used, underwear. On any view of it, the “tarnishment” capacity of such a website must be no less than that of a website which might be described as an “orthodox” pornographic website.
7. The critical issue identified by the Panel in The Perfect Potion remains – did the Respondent have the Complainant or its marks in mind when the Domain Name was registered, so as to effectively “target” those marks?
In answering that question, the Panel reminds itself that “Dior” is not part of the Respondent’s name, nor (apparently) part of Miss Anna’s real name. (“Anna Dior” is claimed to be no more than a “nom de plume.”) Nor is there any evidence of the Respondent or the woman featured on the website actually having used “Anna Dior” as a “nom de plume.” (The website refers variously to “Miss Anna Dior”, and “Mistress Anna”, the Yahoo! email addresses refer only to “missanna”, and the reference on the website to “my other website” is a reference to the site at “www.missannadc.com” (the “dc” presumably being a reference to Washington D.C., being one of the locations where Miss/Mistress Anna provides her services)). From the little information the Respondent has chosen to provide, the woman featured on the website appears to be more commonly known as “Miss Anna”, or possibly “Mistress Anna”.
Against that background, the obvious question, which the Respondent has not addressed at all in the Response, is why the Respondent and the woman featured on the website chose to use the word “Dior” as part of the Domain Name (and within the expression “Miss Anna Dior” as that expression appears on the website). That question was clearly crying out for an answer – it is at the heart of the whole case – but the Respondent has elected to remain silent on it. The Panel thinks it reasonable to infer from that silence that an honest answer to the question would not have been favourable to the Respondent’s case.
There is no suggestion anywhere in the evidence that the word “Dior” would have meaning to the great majority of Internet users, other than as a reference to the Complainant’s DIOR mark. In the absence of any explanation for the choice of that name by the Respondent, the Panel can only infer that the Respondent and/or Mistress Anna chose to use that mark in the Domain Name with the knowledge that a significant number of Internet users seeing the Domain Name would be likely to associate it with the Complainant’s DIOR mark. If the Respondent appreciated that likelihood and proceeded in the face of it, it is reasonable to infer that the Respondent intended Internet users to make that association. It follows that the Respondent not only “had the Complainant’s DIOR mark in mind” when the Domain Name was registered, but also that the Respondent “targeted” the Complainant’s DIOR mark in the sense discussed in cases such as The Perfect Potion.
8. In the Response, the Respondent has pointed to the fact that the Complainant and Mistress Anna operate in different markets, and that there is no evidence of actual or likely confusion. The Respondent also says that search engine searches run on the expression “Dior” will not turn up references to the website. Those submissions miss the point. The essence of bad faith in cases such as this lies in the capacity of the confusingly similar domain name to tarnish the relevant mark. The Panel inclines to the view that that may be established without any evidence of likely confusion, but even if a likelihood of confusion were necessary to find a conclusion of bad faith, it seems to the Panel that Internet users who come across the Domain Name for the first time, will be drawn to the use of the word “Dior” in the Domain Name, and the use of that expression will bring to their minds the Complainant or its marks. If such persons are only “caused to wonder” whether the Domain Name has some association with the Complainant, that would be sufficient to constitute what is commonly referred to as “initial interest confusion”, and in the Panel’s view, that would be enough.
9. In addition to the matters discussed above, there are a number of unsatisfactory features about the Response which, if considered on their own, would not provide proof of bad faith registration and use. But when they are considered with all the other matters referred to in this list, they add to the overall impression of bad faith. Those matters are:
(i) The Response is unclear on how long the Respondent claims to have been using “Anna Dior” as a service mark. There is reference in the Response to a claimed first use in commerce in approximately January 1995, but elsewhere in the Response the claim appears to be that the service mark has been used “for more than 8 years”. The apparent discrepancy has not been explained.
(ii) The Response is completely silent on the role of the Respondent, Paul Farley. He has no apparent connection with the website, but he is the Domain Name registrant, and the (unsigned) Response appears over the names “Anna Dior and Paul Farley”.
(iii) The Respondent has failed to provide a signed copy of the Response, notwithstanding that the Center drew to his attention the requirements of the Rules calling for respondents to submit signed, hard copies.
10 For completeness, the Panel notes that it is not necessary for the Respondent’s conduct to fall precisely within any of the examples of bad faith registration and use which are set out at paragraph 4(b) of the Policy. Those are only examples, and do not limit the circumstances which might constitute bad faith registration and use. In this case, the confusing similarity between the Domain Name and the Complainant’s marks, the “pornography-equivalent” nature of the website, with its “tarnishing” capacity, and the Panel’s finding that the Respondent has indeed targeted the Complainant’s marks, are in combination sufficient for the Panel to conclude that the Domain Name was registered, and has been used, in bad faith.
The Complainant having proved all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <annadior.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: February 8, 2008
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