Domain name - Domain Name Dispute Resolution Policy - Trademarks - Servicemarks - Perfectly identical - Confusing similarity - Rights or legitimate interests - Prior proprietorship rights - Likelihood of confusion - Detrimental to distinctive character or repute of trademark - Bona fide offering of goods - bad faith use - bad faith registration.

Complainant is the owner of several registered trademarks for the mark ‘DOMINA’ in Europe and has acquired a solid reputation in the field of erotic press and electronic communications.  Respondent registered the domain name ‘domina.net’ and uses it for the purpose of e-commerce and in the sale of articles of clothing.  Unable to use the said domain name to promote its products, Complainant has been forced to open a website under the name ‘domina.fr’.

Held, Domain Name not Transferred to Complainant.

It is clear that the domain name ‘domina.net’ is identical with the trademark DOMINA. 

Regarding the question whether the Respondent has any legitimate interest in the domain name at issue it is important to establish whether Complainant has any prior proprietory rights that may prevent the registration and use of the domain name in the territory of the Respondent.  Complainant has not proven that the domain name has a reputation in Germany and that the registration and use of the domain name by the Respondent without due cause takes unfair advantage, or is detrimental to the distinctive charachter or the repute of the trademark. The trademark registration ‘DOMINA’ is used by Complainant to promote the communication of erotic materials whereas the activities related to Respondent`s website are in the selling of articles of clothing.  Hence, Complainant has failed to establish likelihood of confusion in consumers’ mind.

The mere fact that the words are identical does not by itself prove that the domain name has been registered and used in bad faith.  Evidence shows that Respondent had registered the domain name ‘domina.net’ and used it in connexion with the bona fide offering of goods and services before receiving notice from the Complainant. Thus, there is no bad faith use or registration of the name.

Policies referred to :
Uniform Domain Name Dispute Resolution Policy

Statutes referred to :
French Trademark Law

Gulliksson, Panelist:-
 

Procedural History
A Complaint was submitted by facsimile to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 7, 2000, by courier on April 10, 2000, and by e-mail on April 14, 2000. 
On April 12, 2000, a Request for Registrar Verification was transmitted to the Registrar, NSI, requesting it to: 
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
(2) confirm that the domain name at issue is registered with NSI;
(3) confirm that the Respondent is the current registrant of the domain name(s);
(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);
(6) indicate the current status of the domain name(s).
On April 13, 2000, NSI confirmed by e-mail that NSI was in receipt of the Complaint sent to NSI by the Complainant, the domain name "domina.net> was registered with NSI and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.
The policy in effect at the time of the original registration of the domain name at issue was Network Solutions 4.0 Service Agreement. 
Network Solutions Domain Name Registration Agreement in effect provides in pertinent part: 
"NETWORK SOLUTIONS, INC.
DOMAIN NAME REGISTRATION AGREEMENT

A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI’’s domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI’’s Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.
B. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be bound by NSI’’s current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."
C. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant’’s maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant’’s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.
D. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.
E. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.
Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]"
Effective January 1, 2000 NSI adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"). There is no evidence that the Respondents ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Manager on April 14, 2000. The Panel has independently determined and agrees with the assessement of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant 

No formal deficiencies having been recorded by the WIPO Center, on April 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of May 7, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’’s WHOIS ´s confirmation, as well as to "[email protected]"; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by express courier to all available postal addresses. 
On May 9, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default. On May 15, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr Jonas Gulliksson.
Due to an error in the postal service the WIPO Center, on May 23, 2000, re-sent the Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 11, 2000, by which the Respondent could file a Response to the Complaint.
On June 11, 2000, the Respondent transmitted its Response to the WIPO Center by fax. Due to the fact that the Respondent had filed a request to the German Patent Office concerning the trademark "domina" the Respondent was granted an extension of the time limit until July 11, 2000 to complete its Response. Such completion of the Response was however not made by the Respondent.
On July 11, 2000, the Respondent transmitted a fax message to the WIPO Center. In the fax message the Respondent states that it will start legal actions in order to cancel the Complainant’’s trademark DOMINA in Germany. Therefore, the Administrative Panel has no competence to decide in the current domain dispute.
The Panel has decided that the legal proceedings mentioned by the Respondent is not in respect of the domain name dispute subject to the Complaint. Therefore, the Panel has proceeded to a decision.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

Factual Background
4.1 The Complainant and its Registered Trademarks 

The complaint is based on the following trademark registrations:

1) French trademark registration n°° 1 423 829 DOMINA filed on August 20, 1987, registered on August 20, 1987, renewed on August 7, 1997, in classes 16 and 38, covering amongst others " communications services, telematic and videocommunication services, information broadcasting services, transmission of computer databases, radiobroadcasting, message sending, computer databases broadcasting and transmission, electronic mail "

2) French trademark registration n°° 1 487 164 DOMINA filed on September 7, 1988, registered on September 7, 1988, renewed on August 31, 1998, in class 41, covering amongst others " edition of books, entertainment, shows, radio and television entertainment, production of films "
 

3) US trademark registration n°° 1 611 565 DOMINA filed on May 5, 1989, registered on August 28, 1990, in class 38, covering " telephone communication services, telecommunications services, television broadcasting services, radio broadcasting and radio communication services, telex services "

4) International Registration n°° 537 236 DOMINA filed on April 6, 1989, renewed on April 6, 1999, covering Germany, Benelux, Spain and Swiss, in classes 16, 38 and 41, covering amongst others " communication services, videocommunication and telematic services, computer databases broadcasting and transmission, entertainment "

A copy of the publication and renewal certificates for these trademarks was attached as Annex C to the Complaint.

The complainant is also the owner of the French telematic code 36 15 DOMINA as well as the domina.fr domain name (enclosed, also in Annex C to the Complaint.)

Parties’ Contentions
A. Complainant
The contested domain name is perfectly identical to the Complainant’’s trademarks:

DOMINA = DOMINA

Moreover, an inquiry in Germany reveals that it does not exist any company under the name Sound & Vision, current owner of the domina.net domain name, neither does a trademark DOMINA exist in the name of such a company; consequently, the Respondent company Sound & Vision, has no rights or legitimate interests in respect of the "domina.net" domain name.

Many of the Complainant’’s DOMINA trademarks appear in advertisements in various magazines sold in many European countries; moreover the Complainant’’s activities are shown on the French telematic’’s code 3615 DOMINA, which is accessible worldwide by Intelmatic and on the domina.fr domain name; a copy of the first page of two DOMINA magazines as well as a copy of the home page of the Complainant’’s telematic code 3615 DOMINA dated January 22, 1998, and of the home page of the Complainant’’s "domina.fr" domain name (see Annex D to the Complaint).

The Complainant is specialized in on-line services dealing mainly with erotic material via, for example, the telephone, internet and Minitel; the Complainant uses major photographers for its creations. 
As a result of such investments, the trademark DOMINA is today a well-known name in the erotic press and electronic communications, an area in which the Complainant has acquired a solid reputation.

By registering and using on the Internet the "domina.net" domain name, the Respondent indoubtably has, and is counterfeiting a brand to the detriment of the complainant.

The damage suffered by the Complainant as a result of these actions is considerable.

This may confuse internet users who are seeking to connect to the Complainant’’s website via the "domina.net" domain name and will necessarily be directed to the 
Respondent’’s website, whose design, creation and services have considerably damaged the brand owned by the complainant.

The "domina.net" domain name is vital to the Complainant since the latter has already registered it as a brand name in a large number of countries in which it is making widescale use of the same.

Since the "domina.net" is not available, the Complainant has been forced to open a site under the adress "domina.fr", a site whose audience is much lower than that available under a generic Top Level Domain.

The registration and use of the "domina.net" domain name constitute brand counterfeiting in the sense of articles L.716.1, L.713.2 and L.713.3 of the French Trademak Law, a copy of which is enclosed as well as a translation in English (see Annex (E) to the Complaint).

The activity developed on the website "www.domina.net" is the subject of the activity developed by the Complainant in his magazines, telematic code and website, but with a stress on the pornographic and cheap side, which contributes to depreciate the Complainant’’s creations.

The Respondent, that is Sound & Vision, a company which does not legally exist, has registered and is using the "domina.net" domain name in bad faith, seeking to take profit of the complainant’’s notoriety on the denomination DOMINA in the erotic field; a copy of some electronic pages concerning the website "www.domina.net" are attached to the Complaint (see Annex (F)).

The Complainant has sent to the Respondent on November 16, 1999, and July 12, 1999, a cease and desist letter (a copy of which is enclosed in Annex (G) to the Complaint) in order to prohibit the Respondent from continuing his action and to transfer the "domina.net" domain name. The Respondent has never replied.
Furthermore, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name "domina.net" shall be transferred to Complainant. 
B. Respondent
In its response, the Respondent has stated the following.
The domain name "domina.net" has been in use since the registration for the purpose of e-commerce. It is in this case not a matter of domain-grabbing but instead a matter of reverse domain hijacking. 
As determined in a decision by a court in the US regarding the domain name "vw.net" a holder of a domain name does not automatically has to have all TLDs at his disposal. Further, is it questionable whether a Complainant shall not first lodge a claim to the domain name "domina.com" which is higher in rank, which the Complainant is not a holder of, before the Complainant lodges claim to the domain name "domina.net".
Further the Respondent has questioned if the Complainant is the holder of the trademark DOMINA in Germany.

Lastly the Respondent has stated that if the Complainant is the holder of the trademark DOMINA in Germany the Respondent will commence a lawsuit against the Complainant and claim that the registration is terminated.

Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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,
(ii) that the Respondent has no legitimate interests in respects of the domain name; and,
(iii) the domain name has been registered and used in bad faith. 
Identity or confusingly similarity to a trademark or service mark in which the Complainant has rights
The domain name "domina.net" is identical with the trademark DOMINA. From the evidence submitted with the Complaint in the form of a certificate of the registration of the trademark DOMINA in Germany it is established that the Complainant is the holder of the DOMINA trademark registration in Germany.
The Respondent has in its Response asserted that a Complainant must lodge a claim to the domain name "domina.com", which the Respondent asserts is higher in rank than the top level domain .net, before a Complainant can lodge claim to the domain name "domina.net". According to the Policy there is no such requirements. 
The requirement of paragraph 4(a)(i) of the Policy has therefore been met. 
Rights or Legitimate Interests and Bad faith
Regarding the question whether the Respondent has any legitimate interest in the domain name at issue it is important to establish whether Complainant has any prior proprietory rights that may prevent the registration and use of the domain name in the territory of the Respondent.
The Complainant has alleged that the activities developed on the website www.domina.net is covered by the Complainant’’s activities in his magazines, telematic code and website. This cannot be seen from the written evidence on file, i.e. the printout of the Respondent’’s web site or by the material filed by the Complainant. Nor has the Respondent admitted any such activities.
The Respondent has stated that his activities are related to e-commerce and from the printout of its website, submitted by the Complainant, it can be seen that Respondent is selling articles of clothing. This service belongs to international class 35 of the International Trademark Classification and may also belong to class 25 which covers articles of clothing.

The Complainant’’s trademark registrations do not cover these classes of goods and services. Consequently, there is no likelihood of confusion in the trademark sense. Furthermore, the Complainant has not proven that the domain name has a reputation in Germany and that the registration and use of the domain name by the Respondent without due cause takes unfair advantage, or is detrimental to the distinctive charachter or the repute of the trademark (cf. Trademark Directive, 89/104/EEC, Article 5.2), which provision grants protection outside the scope of a trademark owners own use of his mark.
The mere registration and use of "domina.net" by a German Respondent does not by itself prove that the Respondent may not have a legitimate interest in the domain name in the fields of his business activities. The mere fact that the words are identical does not by itself prove that the domain name has been registered and used in bad faith.
The Respondent has alleged that the domain name "domina.net" has been in use since the registration on January 13, 1999, for the purpose of e-commerce. 
The Complainant has stated that cease and desist letters were sent to the Respondent on July 12, 1999, and on November 16, 1999. Consequently, it appears that before notice of the dispute the Respondent had used the domain name at issue in connection with offering of goods. For the reasons mentioned above it can not be excluded and it is not evidenced that such use has not been bona fide.
In the circumstances, the Panel finds that the evidences filed by the Complainant has not proven that the requirements of paragraph 4(a)(ii) and (iii) of the Policy have been fulfilled.

Decision
In view of the above, Complainant’’s request that the domain name "domina.net" be transferred from Respondent to Complainant is denied.