Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The complainant is Fendi Adele Srl, a well-known fashion company with business offices in via Cornelia 498, Rome, Italy. The respondent is Mitchell Kass Designs, 415 West 23^rd St., Suite 5F, New York, NY, USA.

The contested domain name is <areafendi.com>, registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA, USA.

The complaint was sent on December 14, 2000. WIPO acknowledged receipt of the complaint on December 18.

WIPO verified the domain name registrar on December 19.

WIPO notified the complainant of a formal deficiency in its complaint on December 21.

An amended complaint was sent on January 4, 2001.

WIPO verified the formal validity of the complaint on January 11 (including payment of fees), and on the same date notified the respondent of the complaint.

The response was received on January 17.

WIPO notified the respondent of a formal deficiency in its response on January 18.

An amended response was received on January 22.

The sole panelist was contacted by WIPO on February 9. On the same date, he signed and sent to WIPO the Statement of Acceptance and Declaration of Impartiality.

The panel was appointed, and the parties informed of its appointment, on February 12.

Fendi started its business in 1925. At present, the company and its related companies are doing business in more than 117 countries around the world.

The trademark FENDI has been registered in Italy since 1976.

The trademark AREAFENDI is also registered in Italy and a show room with this name opened in Milan, Italy in October 1998.

The trademark FENDI has been registered in the USA since 1983 and in the UK since 1982. The complainant and its related companies are also owners of over 600 other trademarks for FENDI in the rest of the world.

The respondent registered the domain name <areafendi.com> in February 1999. There is no active web site at that address.

The respondent has also registered the domain name <guccirush.com>, for which there is also no active web site.

A. Complainant

Complainant contends that the domain name <areafendi.com> is identical to its trademark AREAFENDI and confusingly similar to its trademark FENDI; that the respondent has no legitimate rights or interests in the contested domain name; and that the respondent registered and used the contested domain name in bad faith.

B. Respondent

Respondent’s contentions are:

"I have a great love of fashion and saw the need to enhance the fashion community by offering sites that would educate fashion students and people of interest in different designers and design firms. … [areafendi.com] will be (as will be Gucci) a mini museum paying homage to these wonderful design firms. … I will never sell anything within this site. … I do not want to use the Fendi name for profit, just education. This is my passion."

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

1. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2. that the respondent has no legitimate interests in respect of the domain name; and,

3. that the domain name has been registered and used in bad faith.

Similarity between the trademark and the domain name

The complainant has presented evidence that it owns the rights to the trademarks FENDI and AREAFENDI and it is obvious that the contested domain name <areafendi.com> is identical or confusingly similar to the trademarks.

Lack of rights or legitimate interests in the contested domain name

The complainant has presented evidence and argued convincingly that, given the international reputation of the FENDI trademark and the Fendi company, it is hard to understand how the respondent could have any rights or legitimate interests in the contested domain name.

The respondent argues that it plans to use the contested domain name to create a non-profit educational web site, "a mini-museum paying homage to these wonderful design firms" (in the respondent’s own words).

According to the ICANN Policy, the respondent can demonstrate that it has legitimate rights, in particular and without limitation:

(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 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.

In this particular case, the respondent does not allege to intend to use the domain name in connection a bona fide offering of goods or services; nor has the respondent been commonly known by the domain name.

With respect to (iii) above, while the respondent alleges (and the panel has no reason to doubt) that it has no intent to make a commercial gain, it is hard to understand how the intended use of the contested domain name can be a legitimate noncommercial use, because of the risk of consumer confusion. Indeed, FENDI is such a well-known trademark that most consumers would automatically assume that the domain name <areafendi.com> was associated with the Fendi company.

Trademark laws allow trademark owners to control strictly the use of their mark. Thus, if respondent wishes to set up a "mini-museum" in honor of Fendi, he must, in accordance with trademark laws, ask Fendi’s permission to use its trademarks FENDI and AREAFENDI to promote that "mini-museum". And the Fendi company could request some degree of oversight on the contents of the "mini-museum" in exchange for its permission to use its trademarks.

The respondent’s plans for the contested domain name are clearly in violation of trademark laws, because the Fendi company has not given the relevant permissions. A use of a domain name that is contrary to the law cannot be held to be a legitimate use or a legitimate interest.

Therefore this panel holds that the complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the respondent has rights or legitimate interests in the contested domain name, and it holds that the respondent does not have any such rights.

Bad faith registration and use of the contested domain name

The respondent is not actually using the contested domain name to point to a web site. Thus the question arises of whether mere registration of the domain name constitutes use. The answer to this question is of course "yes": mere registration of a domain name constitutes use of that domain name.

But the panel must still determine whether the respondent has registered and is using the domain name in bad faith. While the panel is willing to make allowances for the respondent’s apparent naivete concerning trademark law and its interaction with domain names, the panel must nevertheless determine the question of bad faith on the basis of the ICANN Policy and generally accepted legal principles.

The seminal decision regarding this issue is WIPO Case No. D2000-0003, regarding <telstra.org>. Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)

In particular, this panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:

(i) the complainant’s trademark has a strong reputation and is widely known;

(ii) the respondent’s plans to use the domain name are, unfortunately for him, in violation of trademark law, and thus cannot be considered to be "good faith" use.

In light of these particular circumstances, this panel concludes that the respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by the respondent.

This panel concludes that the complainant has proven that the contested domain name is confusingly similar to its trademarks FENDI and AREAFENDI, that the respondent has no rights or legitimate interests in the contested domain name, and that the respondent has registered and used the contested domain name in bad faith.

The panel therefore orders the contested domain name <areafendi.com> to be transferred to the complainant, Fendi Adele Srl.

Richard Hill
Sole Panelist