The Complainant is Sandro Andy of Paris, France, represented by Tmark Conseils, France.
The Respondent is Alessandro Balzarin of Frankentahl, Germany, represented by RES MEDIA Kanzlei für IT- und Medienrecht, Germany.
2. The Domain Name and Registrar
The disputed domain name <sandro.com> (“the Disputed Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 8, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On the same date, Network Solutions, LLC 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” or “UDRP”), 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 March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Response was filed with the Center on March 30, 2010.
The Center appointed Jacques de Werra as the sole panelist in this matter on April 7, 2010. 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 a French company in the fashion industry which operates a website at <www.sandro-paris.com> featuring Complainant's fashion articles for men and women which are sold in France and other countries.
The Complainant is the owner of a French word trademark SANDRO (registration number 1 669 006) covering goods in classes 3, 18, 24 and 25 which was filed on June 4, 1991 and renewed in 2001 (“the Trademark”).
The Disputed Domain Name was registered on March 14, 1997.
5. Parties' Contentions
A. Complainant
The Complainant first claims that the Disputed Domain Name is identical to the Trademark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, based on Complainant's Internet and trademark searches, the Respondent is not making any use and has not made any preparation to use the Disputed Domain Name in connection with a bona fide offering of goods and services, the Respondent is not known by the Disputed Domain Name and he is further not making a legitimate noncommercial use of the Disputed Domain Name.
The Complainant also claims that the Respondent registered and uses the Disputed Domain Name in bad faith because the Respondent registered the Disputed Domain Name after the application date of the Trademark and because the Trademark is well-known throughout the world given that clothes are sold under the Trademark in many countries (including France, Benelux, Germany, Italy, United Kingdom, South Korea and Lebanon) and is also cited in famous fashion magazines. The Complainant further alleges that the website attached to the Disputed Domain Name only consists of the picture of a sunflower. On this basis, the Complainant claims that the Disputed Domain Name was registered and is used in order to prevent the Complainant from reflecting its well-known trademark in a corresponding domain name and for the purpose of disrupting the business of the Complainant.
B. Respondent
The Respondent first indicates that the Disputed Domain Name was registered by the Respondent in 1997 for private purposes only and was built out of the nickname of the Respondent “Sandro”, which is a common abbreviation of the personal name “Alessandro” (whereby the Respondent refers to the example of the famous artist Alessandro di Mariano di Vanni Filipepi, who was known as “Sandro Botticelli”).
The Respondent is a photographer who uses the Disputed Domain Name to provide contact details and works for customers and interested people and to use different email addresses (e.g. “[email protected]”, “[email protected]” and “[email protected]”). The Respondent conducts his activities under the name “Sandro” as established by numerous pictures published in German newspapers (such as the “BILD-Zeitung”, which is the most famous German daily newspaper). For this reason, the Disputed Domain Name has not been registered and is not used in bad faith according to paragraph 4 (a)(iii) of the Policy.
The Respondent did not know the existence of the Complainant's Trademark before these proceedings. Any trademark registrations in France must not be recognized by the Respondent. According to the OHMI trademark registration online database (CTM online), the Complainant has fileda European Community Trademark (CTM) registration for the word SANDRO on December 21, 2009. However, this CTM has not been registered yet. In addition, goods and services of the Complainant are totally unheard-of in Germany and the Respondent notes that the website of the Complainant (“www.sandro-paris.com”) is only available in French and in English language, not in German and that no trademark owned by the Complainant with the word SANDRO could be identified in Germany.
The Respondent claims by reference to previous UDRP decisions that a nickname constitutes a right and a legitimate interest to register and use the eponymous domain name.
The Respondent further alleges that no likelihood of confusion between the Trademark and the fair – private – use of the Disputed Domain Name can be ascertained because no trademark claims can be raised against a private user. In addition, even if the Respondent would have used the Disputed Domain Name for commercial purposes, there would be no likelihood of confusion because the Trademark of the Complainant is protected only for goods in classes 3 (for cosmetics), 18 (for leather products), 24 (for fabrics) and 25 (for clothing), whereby it is indisputable that the Respondent has never used the term “Sandro” in connection with these goods. This might be the reason why the Complainant never sent a warning letter to the Respondent, knowing that there will be no likelihood of success and that the Complainant has speculated on the possibility that the Respondent would not respond to the Complaint.
The Respondent also claims that the Complainant performs a certain form of Reverse Domain Name Hijackingon the ground that the Complaint includes facts that demonstrate no likelihood of success so the Respondent shall be entitled to a finding of Reverse Domain Name Hijacking. This would be particularly true in this case because the Complainant is represented by counsel.
As far as the specific substantive factors under the Policy are concerned, the Respondent first claims that the Complainant has not established the existence of a trademark because any records from trademark databases in the French language cannot be considered in these proceedings, since the language of proceedings is English (Rules, paragraph 11(a) and (b)). In addition, the company name of the Complainant consists of the two terms “Sandro” and “Andy” so that the Disputed Domain Name would not be confusingly similar to any service mark in which the Complainant could have rights. Finally, the Respondent challenges that the Complainant is entitled to derive rights from the Trademark, because the Trademark was registered by a person named “Evelyne Chetrite” and because no corresponding assignment of rights has been proven by the Complainant so that Complainant is notthe registered owner of the Trademark.
The Respondent further claims that he enjoys legal protection for his use of the Disputed Domain Name under German law (i.e. under name rights which are protected under section 12 of the German Civil Code), whereby the Respondent uses the name “Sandro” as a nickname built out of his first name “Alessandro” since he was a child and uses such name as a professional photographer so that the Respondent has rights and legitimate interests in respect of the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.
The Respondent alleges in this respect that it is not a sufficient argument for the Complainant to claim that the Respondent would have no rights or legitimate interests in respect of the Disputed Domain Name on the basis of mere Internet searches because the name of the Respondent exists without being registered in any database. He also claims to be well and commonly known as “Sandro” as a photographer, as shown by the fact that he shot pictures for famous newspapers in Germany. Thus, the Respondent is making a legitimate noncommercial respectively fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Trademark. The Respondent as an individual and artist (photographer) is thus commonly known by the name “Sandro” and the Disputed Domain Name, even if the Respondent has not acquired any trademark or service mark rights. The Respondent further states that he uses several email-addresses built out of the Disputed Domain Name (such as “[email protected]”) so that the Respondent is dependent on these communication details, which are well-known by all friends and business partners of the Respondent.
The Respondent finally alleges that the Disputed Domain Name has neither been registered nor has been used in bad faith by the Respondent because the Respondent has chosen in 1997, when the Internet was developing, in order to appear with his nickname “Sandro”. Subsequently, the Respondent has been commonly known under the alias “Sandro” as a photographer. Any similar trademark was never known by the Respondent, especially as the Complainant has no trademark rights in Germany, so that the Respondent never used the Disputed Domain Name in bad faith. In this respect, it is of no significance whether the French trademark application for the Trademark has been filed in France before the Disputed Domain Name was registered. In addition, the Respondent disputes that the Trademark is well-known throughout the world, particularly because there is no single record concerning the Complainant or the Trademark when searching for the search keyword “sandro” via Google in German websites. Consequently, there is obviously no considerable brand awareness regarding the Trademark in Germany, whereby citations in fashion magazines do not change these circumstances.
The Disputed Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or any other person, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Disputed Domain Name. The Disputed Domain Name was furthermore not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. In addition, the Complainant and the Respondent are not competitors and the Disputed Domain Name was not registered by the Respondent to disrupt the Complainant's business. The Respondent did not even know the existence of neither the Complainant itself nor of any fashion labels or trademarks of the Complainant before these proceedings.
As a conclusion, the Disputed Domain Name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent's web site 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 web site or location or of a product or service on the Respondent's web site or location.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for a complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the Trademark and rejects the following arguments which have been raised by the Respondent against such finding:
The Respondent first claims in this respect that the Complainant has not established the existence of a trademark because any records from trademark databases in French language cannot be considered in these proceedings, since the language of the proceedings is English (pursuant to paragraph 11(a) and (b) of the Rules). The Panel notes in this respect that it “may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding” (pursuant to paragraph 11(b) of the Rules). In this case, the Panel does not decide so because under the UDRP it is sufficient for the Complainant to prove it has trademark rights in the relevant jurisdiction, regardless of what language the trademark registration is made in. Here it is evident to the Panel that the Respondent additionally likely could at least prima facie decipher the French trademark registration noting that the Respondent is concerned by the fact that the Respondent challenges that the Complainant is entitled to derive its own rights out of the Trademark, because the Trademark was registered by a person named “Evelyne Chetrite” which shows that the Respondent was moreover likely able to understand these documents in French (the Respondent does not claim that he did not understand these documents).
The Respondent also raises the argument that the Complainant would not be entitled to derive its own rights out of the Trademark, because the Trademark was registered by a person named “Evelyne Chetrite” and because no corresponding assignment of rights has been proven by the Complainant so that Complainant is notthe registered owner of the Trademark. Contrary to the Respondent's claim, the documents filed by the Complainant do indeed evidence the transfer of the Trademark to the Complainant from its previous owner so that the Complainant has established that it owns the Trademark.
The Panel is also satisfied by comparing the Disputed Domain Name with the Trademark that the Disputed Domain Name replicates the Trademark and is thus identical to the Trademark. The Respondent alleges in this respect that the company name of the Complainant consists of the two terms “Sandro” and “Andy”, so the Disputed Domain Name would not be confusingly similar to any service mark in which the Complainant could have rights. This argument is of no relevance because the comparison for the purpose of paragraph 4(a)(i) of the Policy must be made between the Trademark and the Disputed Domain Name which are identical, irrespective of the alleged lack of risk of confusion with the company name of the Complainant which is of no relevance under the Policy.
As a result, based on the rights of the Complainant in the Trademark and on the identity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or a legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, based on Complainant's Internet and trademark searches, the Respondent is not making any use and has not made any preparation to use the Disputed Domain Name in connection with a bona fide offering of goods and services, the Respondent is not commonly known by the Disputed Domain Name and he is further not making a legitimate noncommercial use of the Disputed Domain Name. This is particularly so because the website associated with the Disputed Domain Name is only showing a picture of a sunflower and because the Respondent is not the owner of any trademark or other sign corresponding to the Disputed Domain Name.
Given that these statements constitute in the view of the Panel a prima facie showing by the Complainant, this shifts the burden to the Respondent to come forward with evidence of any rights or legitimate interests in the Disputed Domain Name.
The Respondent has established in this respect that the Disputed Domain Name corresponds to the nickname of his first name “Alessandro” and that he uses such nickname as his name for conducting his activities as a professional photographer in Germany, whereby pictures of his have been published under the name “Sandro” in German newspapers and have been submitted in these proceedings.
On this basis, the Panel is satisfied that the Respondent has established the conditions under paragraph 4(c)(i) and (ii) of the Policy by showing that he uses a name corresponding to the Disputed Domain Name (i.e. “Sandro”) in connection with a bona fide offering of goods or services (i.e. as a photographer) and that he has been commonly known by his nickname (as reflected in the Disputed Domain Name), even if it has acquired no trademark or service mark rights corresponding to such nickname. From this perspective, the Panel can distinguish this case from those in which the respondents merely alleged that they were commonly known by the relevant domain names without bringing any evidence for that purpose. See Banco Espirito Santo S.A. v. Bancovic,
WIPO Case No. D2004-0890 (holding that “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”). In this respect, it is of no relevance that the Respondent does not actively use the Disputed Domain Name beyond the showing of a picture of a sunflower given that this is not a required condition under paragraph 4(c)(i) and (ii) of the Policy.
The Panel consequently finds that the Respondent has established that he has rights and legitimate interests in the Disputed Domain Name so that the second requirement of paragraph 4(a) of the Policy is not met.
Even though the analysis of the third condition relating to the registration and use of the Disputed Domain Name in bad faith would not be required for deciding on the Complaint (because the rejection of the second condition already means that the Complaint should be denied), the Panel finds it necessary to address it in view of the arguments raised by the parties and because of the claim of Reverse Domain Name Hijacking which has been raised by the Respondent (and which shall be addressed under 7 below).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
In this case, the Complainant claims that the Respondent registered and uses the Disputed Domain Name in bad faith because the Respondent registered the Disputed Domain Name after the application date in France of the Trademark (which occurred on June 4, 1991) and because the Trademark is well-known throughout the world given that clothes are sold under the Trademark in many countries (including France, Benelux, Germany, Italy, United Kingdom, South Korea and Lebanon) and is also cited in famous fashion magazines. The Complainant further notes that the website attached to the Disputed Domain Name only consists of the picture of a sunflower and claims that the Disputed Domain Name was registered and is used in order to prevent the Complainant from reflecting its well-know Trademark in a corresponding domain name and for the purpose of disrupting the business of the Complainant.
The Respondent essentially alleges by contrast that the Disputed Domain Name has neither been registered nor has been used in bad faith by him because he registered in it in 1997, in the early years of the Internet, in order to reflect his nickname “Sandro” and because he was not aware either of the Trademark or of the Complainant's activities, particularly because the Complainant has no trademark rights in Germany and is not known in Germany.
In view of the circumstances of this case, the Panel thinks it appropriate to emphasize that the goal of the Policy is to resolve disputes concerning allegations of abusive domain name registration and use. SeeMilwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. See Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187.
In this light, the Panel cannot find that the registration and use of the Disputed Domain Name by the Respondent constitutes a case of abusive registration of a domain name under the Policy, specifically under the 4(a)(iii) of the Policy relating to the registration and use of a domain name in bad faith.
The Panel holds in this respect that no evidence has been brought by the Complainant from which it would have been demonstrated or from which it could be inferred that the Respondent knew or had reasons to know about the Complainant's Trademark at the time when he registered the Disputed Domain Name in 1997. Rather, the Panel notes that the term which constitutes the Disputed Domain Name corresponds to a first name (be there a first name as such or a nickname - for Alessandro -), that the Respondent had a legitimate reason for choosing that term as his domain name in 1997 given that it corresponded to the nickname of his first name, and that the Complainant has not established that the Trademark was well-known and famous trademark globally or at least in Germany which is where the Respondent was based in 1997 and subsequently. It thus cannot be admitted that the Respondent registered the Disputed Domain Name in 1997 with a bad faith motive as concerns Complainant's Trademark. On this basis, the Panel is ready to hold that, given that bad faith cannot be admitted in circumstances in which the Respondent was unaware of the Complainant's Trademark, no registration in bad faith of the Disputed Domain Name can be reproached to the Respondent. See Atlantic, Société Française de Développement Thermique v. Dowd, Kevin,
WIPO Case No. D2007-1063 and National Trust for Historic Preservation v. Preston,
WIPO Case No. D2005-0424.
From this perspective, given that the conditions of registration and use in bad faith under paragraph 4(a)(iii) are cumulative (see Guildline Instruments Limited v. Anthony Anderson,
WIPO Case No. D2006-0157) and that the registration of the Disputed Domain Name was not made in bad faith by the Respondent in 1997, the Panel holds that the condition of registration and use in bad faith under paragraph 4(a)(iii) of the Policy cannot be met in this case.
For these reasons, the Panel finds that the Complainant has not satisfied the third requirement of paragraph 4(a) of the Policy.
7. Reverse domain name hijacking
The Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1. Although the Complainant has not succeeded in this proceeding, the Panel finds that the Complainant has not committed RDNH, whereby the Panel fully adopts the approach exposed in Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc.,
WIPO Case No. D2009-1244 (which refers to other decisions).
A finding of RDNH is appropriate “if Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” Futureworld Consultancy (pty) Ltd. v. Online Advice,
WIPO Case No. D2003-0297; AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Enspire Technologies (PVT) Ltd.,
WIPO Case No. D2008-1471. That standard is not met in this case.
The Panel notes that the Respondent has not sought to register “Sandro” as a trademark and does not actively use that term on the home page of the Disputed Domain Name on which no activities are mentioned. Furthermore, there is no evidence that the Respondent had previously disclosed to the Complainant the materials he submitted as part of these proceedings. Thus, prior to filing the Complaint, the Complainant had likely no actual knowledge of the Respondent's use of the “Sandro” term in connection with his services as a photographer.
Once all the evidence was submitted, the Panel determined that the Complainant did not succeed in its complaint under paragraph 4 of the Policy, but the Panel holds that the Complainant's conduct in filing the Complaint was not so abusive as to constitute RDNH because the Complainant owns a trademark registration for the Trademark, because the Respondent had no trademark registration, and because the Respondent did not appear to be making any legitimate use of the “Sandro” term on the home page of his website or otherwise.
The Panel also notes that the circumstances of this case clearly diverge from those of Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598, in which a finding of RDNH was made by the majority of the panel (in that case the complainant filed for trademark protection four years after the registration of the domain name in dispute), so that this case has been invoked to no avail by the Respondent.
In sum, though the Complainant ultimately did not prevail, the Panel concludes that it did not bring the Complaint in bad faith (even though the Panel notes that the Complainant has probably assessed too generously the brand recognition of the Trademark in other countries, particularly in Germany, bearing in mind that the Disputed Domain Name was registered in 1997 at which time no evidence was brought by the Complainant about its international or even national activities). Accordingly, the Panel denies Respondent's request that the Panel find the Complainant guilty of RDNH.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Jacques de Werra Sole Panelist
Dated: April 21, 2010
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