Fendi's Slow Burn Over Domain Name. . .

Fendi, the prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion, got burnt when it sought transfer of the domain name "fendiman.com" from the Respondent, a professional fire fighter in the Vienna Fire Department. Fendi owns numerous FENDI trademarks throughout the world and sent the Respondent a cease and desist letter in September 2006, shortly after Respondent's registration of the disputed domain.

In response to Fendi's cease and desist, Respondent claimed that the domain name was registered for private purposes only and was not in use at that time. Although Respondent offered to transfer the domain to Fendi against payment of his lawyer's costs and the costs associated with cancellation of the domain, Fendi did not respond to his offer and, instead, commenced a WIPO proceeding against him.

In response to the WIPO complaint, Respondent contended that the name "FENDIMAN" was not connected to Fendi, that "Fendi" or "Fendiman" was a nickname given to him by his colleagues soon after he started work at the Vienna Fire Department in 1986 and that he has used this nickname on the Internet since April 3, 2001 in various forums. To support his contentions, Respondent submitted 10 statements by his co-workers attesting to the nickname and printouts from Internet websites showing Respondent's use of the name "FENDIMAN" on the Internet.

Arguing against registration in bad faith, Respondent claimed that he had searched the Internet for the name "FENDIMAN" prior to the domain's registration without finding any information on Fendi. In addition, he claimed that he only knew the street "Fendigrasse" in Vienna, which is named after the Austrian painter Mr. Peter Fendi, and that he had never seen any ads from Fendi in Austria.

The Panel did not ever reach Respondent's bad faith argument, finding that Fendi had failed to prove that Respondent had no rights or legitimate interests under the Policy. The Panel noted that it is well-established that a nickname can satisfy the requirement of rights or legitimate interest under the Policy if it can be proven that the Respondent has verifiably used such name over a longer period of time. In the Panel's view, Respondent had provided conclusive evidence that he had been known under the name "FENDIMAN" at least since 1988 and had been actively using such name at least since 2001, thereby denying Fendi's complaint.

Bet that settlement offer didn't look so bad after that decision.
Fendi Adele S.r.l. v. Manfred Fandl, WIPO Case No. D2007-1432