Dolce & Gabbana recently took action against the registrant of dandg.com under the Uniform Domain Name Dispute Resolution Policy claiming that the registration infringed its registered trademarks in the term “D&G”.
If the domain name in question had contained the full “Dolce & Gabbana” name, the prospects for the registrant would have been minimal. However, the registrant managed to convince the panel that it had legitimate business plans to open a marketing company under the name and produced evidence of this in the form of a logo, stationery and social media marketing through Facebook and Twitter as well as supporting statements from 3 potential customers. If the UDRP provided more opportunity for scrutiny of evidence the registrant might have been unsuccessful.
Usually, an approach to the brand owner by the registrant soliciting an offer to buy the name is fatal to the registrant as it evinces bad faith. However, in this case it was not as it was not necessary for the panel to consider the “bad faith” issue in any detail.
As a result of this, Dolce & Gabbana failed to satisfy the UDRP panel that the respondent, Independent Digital Artists had no legitimate interests or rights in the name.
There are some key lessons that come out of this decision for both brand owners and registrants of domain names which might be associated with such brands.
- Do not approach the brand owner seeking to sell the domain name – this is usually taken as indicative of bad faith and often fatal.
- In cases where a brand owner wishes to challenge evidence of legitimate usage by the registrant, court proceedings may be a better option than UDRP
- If you do register a brand name of this type, your chances of retaining it are far higher if you have a legitimate business plan that does not enter the brand owner’s sector of activity
- Trademark registration is a key element of brand protection but not always sufficient to succeed in domain name proceedings.
For further information on domain name law, please click here or contact Simon Halberstam at simon.halberstam@smab.co.uk or on 020 3206 2781.