ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant is Productions Orlando, 10, rue Damrémont, Paris (FRANCE) 75018
Respondent (according to the WHOIS search result) is Business Center, brad palco 1 com, brad palco 1 com, (HONG KONG) brad palco.
The domain name at issue is dalida.com [hereinafter referred to as the Domain Name].
2. Procedural History
The electronic version of the Complaint form was received by eResolution on January 12, 2001. The Complaint form was drafted in French.
Upon receiving the Complaint, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Core, the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
On January 15, 2001, an email was sent to the Registrar by eResolution Clerk's Office to obtain the billing contact and a copy of the Registration Agreement. The requested information was received January 26, 2001. Because the Registration Agreement was drafted in English, the Clerk's Office asked the Respondent by email on January 29, 2001 if he/she agrees to have the administrative proceeding in French. The Respondent did not answer.
On February 2, 2001, the Clerk's Office requested that the Complainant provides a Complaint form drafted in English. It was received on February 11, 2001. The hardcopy of the Complaint Form and Annexes were received on February 12, 2001. Payment was received on January 19, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on February 12, 2001. This date is the official commencement date of the administrative proceeding.
Only the email to the email@example.com was returned 'undeliverable'.
The Respondent did not submit a Response neither via eResolution's website nor a signed version.
On March 5, 2001, the Clerk's Office contacted a first panelist, and requested that he acts as panelist in this case. He did not answered to the invitation.
On March 8, 2001, the Clerk's Office contacted Mr. Jacques A. Léger, and requested that he acts as panelist in this case.
On March 8, 2001, Mr. Jacques A. Léger, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On March 8, 2001, the Clerk's Office forwarded a user name and a password to Mr. Jacques A. Léger, allowing him to access the file through eResolution's Automated Docket Management System.
On March 8, 2001, the parties were notified that Mr. Jacques A. Léger had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 22, 2001.
3. Factual Background
The Domain Name was registered or renewed on August 9, 2000.
4. Parties' Contentions
Complainant alleges that it has filed a registration request for the trademark "dalida"with the INPI (French Patent & Trademark Office) on 10 november 2000 in classes 3,9,14,16,18,25,28,30,32,34,35,38,41 and 42 under registration number 00-3063836, as shown by Annex 2 to the complaint.
Complainant alleges that it is using the trademark in association with the exploitation of the catalogue of Dalida, a French performing artist of international renown, including sound and video recordings performed by Dalida and all merchandising products connected to the artist, as shown by the Complainant's objects documented in Annex 4 to the complaint.
Complainant alleges that is has rights in the "Dalida"pseudonym because Mr Bruno GIGLIOTTI, also known as ORLANDO, who was the brother of Yolanda GIGLIOTTI, also known as DALIDA [hereinafter "Dalida"] is the Managing Director of the Complainant. Complainant explains that when Dalida died on May 3, 1987, Bruno GIGLIOTTI was designated as universal legatee, as shown by the notarised statement included as Annex 3 to the complaint. In this respect, Complainant alleges that Bruno GIGLIOTTI is the sole holder of rights to exploit the pseudonym "Dalida", which constituted an element of the personality of the Artist. Complainant alleges that such element is protected by French case-law on the basis of articles 9 and 1382 of the French Civil Code.
Complainant alleges that the Domain Name dalida.com and the trademark "Dalida" have an identical root and that only the generic ".com"is added to Complainant's trademark, which is not sufficient to distinguish the Domain Name or to confer a specific identity on it with respect to the trademark, but causes, according to the Complainant, an inevitable confusion. To support its contentions, Complainant cites the following decision: Isabelle Adjani (WIPO case n°D2000-0867) and Madonna Ciccone (WIPO case n°2000-0847).
Complainant alleges that nothing shows that the Respondent may have any right or a legitimate interest in the Domain Name and that, conversely, Complainant has title to the management of the entire Dalida catalogue and to the use of the pseudonym of the Artist in the framework of the exploitation of her catalogue.
Complainant alleges that:
- Dalida was an Artist of international renown, that she was the recipient of many awards and distinctions throughout her long career, from 1956 to 1987;
- she performed a multitude of songs, a great number of which became popular successes ("Bambino", "Gondolier", "Come prima", "Il venait d'avoir 18 ans", "Gigi l'amoroso", "j'attendrai", "Salma ya salama", etc);
- she recorded in seven languages and appeared at the top of record sales charts throughout the world; that she sold more than 100 million records;
- she gave numerous concerts at the greatest world venues, including the Carnegie Hall in New-York in December 1978 and the Schrine Auditorium in Los Angeles on 24 and 25 October 1986;
- she played in feature-lengh cinematographic films;
- she remained very popular in Europe, in the Middle East, and in particular in France, where she lived until her death in Paris and where she is recognised as one of the personalities who has most marked the French from 1968 to the present day
To support these contentions, Complainant submitted various documents in relation with Dalida's career as Annexes 6, 7 and 8 to the Complaint.
Complainant alleges that the Respondent has appropriated the "Dalida" pseudonym with the clear intention of profiting from the renown of this pseudonym and the positive image that it evokes as Dalida represented a certain feminine ideal for over 30 years, and to attract the public brought together by the name Dalida onto the pornographic site which the Respondent operates under this domain name. Complainant included an official report of court bailiff and screenshots of dalida.jpg in Annexes 5 and 9 to the Complaint).
Complainant alleges that the bad faith of the Respondent arises also from the vague and incomprehensible declarations made to the Registrar, contrary to the ICANN recommendations, in order to conceal his true identity and in order to escape from possible lawsuits (see WHOIS database, appendix 1).
5. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred or cancelled. It is incumbent on the Complainant to show on the balance of probabilities:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent have no rights or legitimate interest in the Domain Name;
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
i) Identical or Confusingly Similar
The only direct evidence that Complainant provided to show that it has trademark rights in the name " Dalida " is the filing of a trademark registration request dated November 10, 2000, as shown at Annex 2 to the Complaint. The Panel concludes that this document is not sufficient per se to find that Complainant is the owner of a registered trademark for the word "Dalida". However, as long as the Complainant can show that it acquired common law rights in the name Dalida as a trademark, Complainant will have met the first requirement of section 4(a)(i) of the ICANN Policy.
It is the Panel's opinion that Annex 3 to the Complainant provides sufficient evidence to establish , for the purpose of the present dispute, that Bruno Gigiliotti was designated by Dalida as her universal legatee and that Annex 4 to the Complaint provides sufficient evidence to establish that Complainant was constituted by Bruno Gigliotti on December 30, 1996, in order to manage the entire catalog of Dalida, including her album catalog. From those facts, the Panel concludes that Complainant has satisfactorily demonstrated that it has common law trademark rights in the name "Dalida".
Finally, given that the spelling of the second-level part of the Domain Name is identical to the spelling of Complainant's trademark, the Panel finds that the Domain Name is identical to Complainant's trademark.
ii) No Rights or Legitimate Interests
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests by Respondent in a domain name: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
Complainant alleged that nothing shows that the Respondent may have any right or legitimate interest in the Domain Name.
The Panel agrees with Complainant's contention, especially considering the fact that the use of the Domain Name as an address to direct internet users toward a pornographic web site, for commercial gains, cannot be held as a non-commercial or fair use of the Domain Name. Furthermore, no evidence was provided that would lead the Panel to conclude that Respondent has commonly been known over time by the Domain Name.
Of course, there is nothing inherently wrong as such in the fact of registering and using a domain name to direct internet users to a pornographic web site, for commercial gains, as long as it constitutes a bona fide offering of goods and services. However, the Panel is not convinced that such was the case in the present dispute, as it is discussed below.
iii) Bad Faith
Pursuant to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith.
With respect to Respondent's bad faith at the time of the registration, Complainant alleged that the declarations made to the Registrar, and the corresponding information that appear on the WHOIS record for the Domain Name are vague and incomprehensible. Complainant further alleged that this was made to conceal Respondent's true identity and in order to escape from possible lawsuits.
It is the Panel opinion that the WHOIS record for the Domain Name, as submitted by Complainant as Annex 1 to its Complaint, clearly shows that the available information to identify or to contact the registrant of the Domain Name cannot serve these purposes. In fact, Respondent used limited combinaisons of words like "brad afrts com" and " brad palco1 com" in all the fields as the name, address and fax number of the Administrative and Technical Contacts for the Domain Name.
Section 2 of the ICANN Policy provides that by applying to register a domain name, a registrant represents and warrants to the Registrar that the statements that he has made in its Registration Agreement are complete and accurate. In this case, the Panel finds that Respondent has not satisfactorily done so.
That being said, in absence of any evidence to either support or rebutt the allegation with respect to the purpose for which this information is incomplete or inaccurate, the Panel cannot directly determine the true reason or motive with any reasonnable degree of certainty. However, given the absence of Response from the Respondent, that, in this case, might have been caused by the Respondent himself given the inaccuracy of his domain name's WHOIS record, the Panel may draw any inference considered appropriate in the circumstances, by virtue of section 14(b) of the ICANN Rules.
Taking into account the fact the Panel is of the opinion that Complainant sucessfully established that the Domain Name is used to direct internet user to a pornographic web site that offers products and services on that topic, the Panel finds appropriate in this case to draw a negative inference of bad faith at the time of registration on the part of the Respondent from the inaccuracy of the domain name's WHOIS record, as well as from the absence of explanation by Respondent to rebutt the allegations and evidence submitted by Complainant.
The Panel is also of the opinion that the use of a famous female singer's distinctive pseudonym, in which the Complainant has shown trademark rights, to attract internet users to a pornographic site for commercial gain amounts to circumstances indicating that Respondent is using the Domain Name in bad faith, in absence of any evidence that Respondent has rights or legitimate interest in the Domain Name.
For the foregoing reasons, the Panel concludes that:
- the Domain Name registered by the Respondent is identical to the trademark to which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Domain Name;
- the Domain Name has been registered and is has been used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name dalida.com be transferred to the Complainant.
MONTREAL, April 2, 2001
(s) Jacques A. Léger