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and Mediation Center
Dolce International Holdings, Inc. v. Performance Marketing Associates / BF Group LLC – Dolce by the Lakes
Case No. D2006-0678
1. The Parties
The Complainant is Dolce International Holdings, Inc., Montvale, New Jersey, United States of America, represented by Bracewell & Giuliani LLP, United States of America.
The Respondent is Performance Marketing Associates, Las Vegas, Nevada, United States
of America / BF Group LLC - Dolce by the Lakes, Coral Gables, Florida, United
States of America, represented by Greenberg Traurig, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <dolcecondos.com>, is registered with Go Daddy
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2006. Also on May 31, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 6, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was set for June 28, 2006. Subsequently, at the request of Respondent and in accordance with the Rules, paragraph 5(d), the due date for the Response was extended to July 17, 2006. The Response was filed with the Center on July 17, 2006.
The Center appointed Dennis A. Foster as the sole
panelist in this matter on July 31, 2006. 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 owns and operates hotels, conference centers and resort facilities in the United States, Canada and Europe. It has many valid trademark registrations for DOLCE INTERNATIONAL, mainly for hotel management in international class 035 (e.g., United States Reg. No. 2,094,545, September 9, 1997; Canada Reg. No. TMA494,277, May 8, 1998; France Reg. No. 96636228, July 26, 1996; and Japan Reg. No. 4,668,343, May 2, 2003). The Complainant has also registered other marks internationally which contain the word “dolce” along with other generic words such as “Conference Solutions,” “Conference Destinations,” etc.
- The Respondent is listed as the registrant
of the disputed domain name, <dolcecondos.com>, and the record of registration
was created on January 13, 2006. The Respondent is using the disputed domain
name to market condominiums in Las Vegas, Nevada, USA.
5. Parties’ Contentions
- As the owner of hotel, conference center and resort facilities located throughout the United States, Canada and Europe, the Complainant is a global leader in the hospitality industry.
- Since 1993, the Complainant has used the mark, DOLCE INTERNATIONAL, in the United States (which it subsequently registered), and has registered or applied for registration of a family of DOLCE marks for use in its hospitality services.
- The Complainant registered the domain name, <dolce.com>, on May 10, 1996.
- The Respondent registered the disputed domain name, <dolcecondos.com>, for use in its marketing of condominium units in the Respondent’s “Dolce by the Lakes” residential development in the state of Nevada in the United States.
- The disputed domain name is confusingly similar to marks in which the Complainant has rights. The addition of the word “condos” to the “dolce” mark does not reduce confusion, particularly since it is widely known in the hotel industry that there are many condominiums in, say, the Las Vegas, Nevada area which are rented to individuals on a “timeshare” basis and thus compete with hotel rentals. Therefore, Internet users may be led to believe, erroneously, that the Complainant has branched out to the sale of luxury condominiums in Nevada and is affiliated with the Respondent’s “Dolce by the Lakes” project.
- The Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent fails all three tests specified in Paragraph 4(c) of the Policy to establish such rights or interests, in that the Respondent (i) is not known as “dolcecondos,” (ii) is not using the disputed domain name for noncommercial or fair use and (iii) is not engaging in any bona fide offering of goods and services under the name because the Respondent should have been aware of the Complainant’s use of the family of “Dolce” marks to market somewhat similar products.
- The Respondent registered and is using the disputed domain name in bad faith by attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the web site with respect to Complainant’s globally recognized and well known family of DOLCE marks.
- The goods and services to which the Complainant’s trademark registrations apply boil down to the management for others of resort hotels, and none of those marks contain the abbreviation “condos” or relate to real estate development.
- For more than twenty years, the Respondent’s business has been real estate development.
- The Respondent has established common law trademark rights in its mark DOLCE BY THE LAKE and thus registered the disputed domain name, <dolcecondos.com>, in good faith. The common law rights relate to its purchase, renovation and marketing of an old apartment building in Las Vegas in January 2006.
- As evidenced by the numerous (more than 80) United States trademarks (most of which do not belong to the Complainant) using the word “dolce,” the Complainant cannot claim an exclusive right to the term “dolce.” The Complainant has not established any common law rights to the mark “dolce” since all its registered trademarks combine that word with either the words “international” or “conference.”
- The Complainant cannot show confusion with its mark and the words “dolce condos.”
- The Respondent has rights and legitimate interests in the disputed domain name through its demonstrable preparations to use a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Respondent was notified in April 2006, but had been preparing to sell condominiums using the disputed domain name since January 2006, spending in excess of $119,000 in its total marketing effort.
- The Complainant has failed to show that the Respondent
registered and is using the disputed domain name in bad faith. The Respondent
has not created a likelihood of confusion between the disputed domain name and
the Complainant’s mark.
6. Discussion and Findings
Pursuant to Paragraphs 4(a)(i-iii) of the Policy, the Complainant may prevail in this case and gain transfer of the disputed domain name, <dolcecondos.com>, by demonstrating the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no denying that the Complainant possesses valid trademark rights in the mark DOLCE INTERNATIONAL (The Complainant has exhibited many registrations in the United States and abroad at Complaint Annexes E and F). Moreover, the Complainant has also registered rights in several other marks which make use of “Dolce” as the first word. However, none of those trademarks include the word “condominium” or its abbreviation “condo.” As a result, the Panel must conclude that the disputed domain name, <dolcecondos.com>, is not identical to any of the marks in which the Complainant can claim rights.
Certainly, the word “dolce” appears in both the Complainant’s mark and the disputed domain name, creating some similarity. Were “dolce” an uncommon proper name or fanciful word, the similarity might rise to the level of confusion in the minds of consumers trying to determine the source of products or services. However, while it is true that both the Complainant and Respondent are United States companies and “dolce” is not a common English language word, it is a common Italian word, translated literally as “sweet” in English. Furthermore, the Panel must take notice that many people in the United States recognize the word (and its meaning), particularly in the context of “la dolce vita” (“the sweet life”), a phrase which has been popular in the United State for decades (and which, among other things, is the title of a world-famous Italian movie). Thus, “dolce” has gained an English language connotation of “luxurious” or “opulent” and this sense is the equivalent of a descriptive English term.
Perhaps, if the Complainant had presented the Panel with compelling evidence that the Complainant’s use had developed a special secondary meaning relative to its products and the descriptive word “dolce,” the Complainant might prevail on this issue. But the Complainant has failed to do so. Also, the Complainant’s assertion that the Complainant and Respondent are competing in the same sphere of business because condominiums are essentially the same as hotels is not well-received by the Panel, even when considering the possibility that condominiums are sometimes offered as “timeshare” rental units. Although they can be buildings of roughly the same shape and size, hotels and condominiums are different products.
Therefore, just as such large and well-known United States companies as General
Motors Corp. and General Electric Co. cannot claim trademark infringement (or
confusing similarity) with regard to any given two-word domain name beginning
with the generic English word “general,” the Complainant cannot
argue convincingly that there is confusing similarity between any of its trademarks
and the disputed domain name. For support of the Panel’s reasoning, see
Sallie Mae, Inc. v. Michele Dinoia, WIPO
Case No. D2004-0648, which noted that the complainant, who had a valid trademark
as to “Sallie Mae,” had “not…established exclusive rights
to the word ‘Sallie’…in connection with its services;”
and Televisia v. Retevision Interactiva S.A., WIPO
Case No. D2000-0264, where the Panel stated: “By claiming that the
Respondent’s domain names [<eresmas.com>, <eresmas.net> and
<eresmas.org>] are confusingly similar to the Complainant’s trademarks
[“ES MAS”], Complainant claims to have exclusive rights on the word
“MAS” (MORE), which is not acceptable, as this word is highly generic
Accordingly, the Panel rules that the Complainant has failed to carry its burden to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests/ Registered and Used in Bad Faith
Since the Complainant did not prevail with respect to Paragraph 4(a)(i) of
the Policy, the Panel need not consider whether the Respondent has rights or
legitimate interests in the disputed domain name or whether the Respondent registered
and is using the domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Dated: August 14, 2006