WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA MODEFINE SA v. pumo
Case No. D2006-0619
1. The Parties
The Complainant is GA MODEFINE S.A., Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Lugano, Switzerland.
The Respondent is pumo, with administrative contact: chao, thomas, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2006. On May 19, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On May 19, 2006, Wild West Domains, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May�30,�2006. The Center verified that the Complaint together with the amendment to 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 May�31,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June�20,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June�21,�2006.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on July�4,�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.
After the expiry of the deadline to respond, the Respondent sent a short e-mail asking the Center for a translation of the Complaint into the Chinese language. However, as the language of the Domain Name registration agreement is the English language and as it has not been otherwise agreed by the parties, the proceeding is to be conducted in English, according to paragraph 11 (a) of the Rules, and no translation into Chinese is required.
4. Factual Background
The Complainant has, on behalf of the Armani Group, registered ARMANI and various combinations of ARMANI with other words as a trademark in a large number of countries including the United States of America, Canada, the European Union and Taiwan, Province of China. The Complainant is, inter alia, the registered proprietor of the following trademarks:
ARMANI, U.S. trademarks No. 2.009.673, registered on October�22,�1996, No. 2.142.395, registered on March 10, 1998, No. 2.394.793, registered on October�17,�2000, No. 793.692, registered on October�17,�2002, No. 833.734, registered on July 19, 2004 in classes 3, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 27, 32, 35, 36, 39, 41, 44.
ARMANI, International trademarks No. 502.876, registered on May�1,�1986, No. 655.416, registered on December 8, 1995, No. 833.734, registered on July�19,�2004, in classes 3, 8, 11, 12, 14, 16, 18, 20, 21, 24, 25, 27, 32, 36, 39, 41, 44.
ARMANI, Community trademark No. 504.282, registered on March�30,�1999 in classes 3, 9, 14, 18, 25.
All of these trademarks are widely used by the Complainant in connection with goods of the registered classes.
The Respondent has registered, on July 27, 2005, the Domain Name in dispute. The Domain Name resolves to a website in Chinese language with pornographic content.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph�3(b)(xv) of the Rules.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three requirements specified in paragraph�4(a) of the Policy are satisfied in this case. In particular, the Complainant claims that:
(i) The Domain Name in dispute is confusingly similar to the trademark ARMANI in which the Complainant has rights.
The Complainant claims that the disputed Domain Name reproduces the ARMANI trademark in its entirety.
The Complainant further contends that the addition of the generic term “love” is not sufficient to prevent the risk of confusion with the Complainant’s trademark. On the contrary, the contested Domain Name suggests that it resolves to one of the Complainant’s official websites and that its registration and use is authorized by the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name in dispute.
The Complainant states that the name “pumo” bears no resemblance with the contested Domain Name and none of the Respondent’s websites used to offer products or services in good faith corresponds to the contested Domain Name. He further states that the Respondent is no licensee nor otherwise permitted by the Complainant to use its trademark or to register any domain name containing ARMANI. Furthermore, the Complainant contends that the Respondent has no connection or affiliation with the Complainant.
(iii) The Domain Name in dispute was registered and is being used in bad faith.
The Complainant contends that the Complainant’s trademark is well known all over the world. Thus, the Respondent cannot have been unaware of the trademark at the time of registration of the contested domain name. The well known character of the ARMANI trademark is due to their extensive worldwide use and diffusion by constant presence in relevant newspapers and fashion-magazines all over the world. The Complainant concludes that the choice of the Domain Name by the Respondent could not result from a mere coincidence and reveals the intention of the Respondent to exploit the well known character of the Complainant’s trademark and to take advantage from its unlawful use.
He further states that the Respondent, within the use of the contested Domain Name, offers pornographic contents with prejudice to the image of the Complainant’s products. In this respect, the Complainant cites GA Modefine S.A. v. Namezero.Com, WIPO Case No. D2001-0331, ruling that the use made by third parties of the name and/or trademark of a world wide famous fashion stylist in order to connect to a porn site, “is not asserted to be in good faith and it hardly could be”.
Furthermore, the Complainant contends that the Respondent ignored two written communications addressed to him by the Complainant’s representative on November�16,�2005, and on December�20,�2005, demanding the immediate withdrawal of the registration.
B. Respondent
The Respondent did not reply to the Complainant’s contentions by the date fixed by the Center in accordance with the Rules, paragraph 5(a).
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:
(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 rights or legitimate interests in respect of the Domain main Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The distinctive part of the contested domain is “armani-love”. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as indicating solely the nature of top level domain (see La Soci�t� Nationale des Chemins de Fer Belges v. WIID NET, WIPO Case No.�D2004-0197).
The contested Domain Name is, in its first part, simply repeating the Complainant’s trademark ARMANI. As for the second part of the Domain Name, the Panel agrees with the Complainant’s contention that merely a generic term was added. It is well established that the addition of such to a trademark does not prevent a finding of confusing similarity see for example Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No.�D2005-0377). Further, it has been established in various UDRP decisions that the addition of the generic term “love” does not serve to distinguish the domain name from the trademark (see Hachette Filipacchi Presse v. Shi Cheng, WIPO Case No.�D2005-1240, Revlon Consumer Products Corporation v. Brandy Farris, WIPO Case No.�D2003-0291). The Panel does not see any reason why this should be different in the present case. Generally, the use of the generic term “love” is rather suitable to reinforce the association of the Domain Name with the Complainant’s trademark than to create a clear distinction. The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name. The Respondent has not rebutted this.
Accordingly, the Panel finds that the Complainant has satisfied paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s statement that the Respondent is neither licensee nor otherwise authorized nor affiliated with the Complainant to use a Domain Name that includes the word ARMANI remained uncontested.
The Respondent himself has not provided any evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain name in dispute. The Respondent’s name “pumo” bears no similarity to the desputed Domain Name, nor do the products and services offered on the websites of the Respondent at the Domain Name entitle him to use the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph�4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to Paragraph�4(a)(iii) of the Policy, the Complainant must prove the registration as well as the use in bad faith of the disputed Domain Name.
(1) Registration in bad faith
The Panel is satisfied with the Complainant’s allegations that ARMANI is, due to extensive international press coverage and advertisement, a well known trademark world wide. Independent of this procedure the Panel is aware of the fact that ARMANI is one of the most well-known and reputed fashion brands of the world. Having in view the well-known character of the Complainant’s trademark, it appears most unlikely that, at the time of the Domain registration in July�2005, any trader or person could chose to use or register a domain name wholly incorporating ARMANI without being ware of the Complainant’s rights in the mark. In particular, ARMANI is a trademark that is protected and used also in the country where the Respondent resides.
Therefore, the Panel finds that the Respondent must in all liklihood have been aware of the Complainant’s trademark while registering the Domain Name in dispute. This finding leads to the conclusion that the Respondent has in all liklihood intentionally chosen the domain name to attract, for commercial gain, Internet users to his website and that, therefore, the domain name in dispute has been registered in bad faith.
(2) Use in bad faith
Considering whether the disputed domain name is being used in bad faith, Paragraph 4(b) of the Policy enumerates several factors, without limitation, that if found by the Panel to be present, shall be evidence of the use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:
“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Here, it must particularly be taken into account that the contested Domain Name resolves into a website containing numerous offers of products and material of a pornographic nature. There are numerous UDRP decisions stating that the use made by third parties of a well-established trademark for the purpose of connecting to a porn site is no use in good faith (see GA Modefine S.A. v. Namezero.Com, WIPO Case No.�D2001-0331). In this respect, the ruling has been established that “the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or a meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent” (Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No.�D2000-0079; see also Benetton Group SpA v. Domain for Sale, WIPO Case No.�D2001-1498; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No.�D2004-0962). Besides that, the use of the Domain Name for the Respondent’s website as a pornographic site, whatever the circumstances under which this occurred is generally to be seen as a tarnishment of the Complainant’s trademark and ongoing evidence of bad faith (see Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No.�D2001-1314).
The Panel supports this prevailing opinion and, thus, finds that the Respondent’s use of the contested domain name to resolve into a porn site has the sole purpose to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services on his website.
This finding is strengthened by the fact that the Respondent failed to issue a response to the two cease and desist letters addressed to him on November�16,�2005, and on December 20, 2005, by the Complainant’s representative. The failure to positively respond to a Complainant’s effort to enter into contact provides a strong support for a determination of ‘bad faith’ registration and use (see Encyclopaedia Britannica, Inc. v. John Zuccarini, WIPO Case No.�D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No.�D2000-1633). This results from the assumption that in respect of famous marks the person who registers a confusingly similar domain name should be willing to show at least an intention to make good faith use of the domain name by responding to communications from the registrar (ACCOR v. Tigertail Partners, WIPO Case No.�D2002-0625).
For all the foregoing reasons, the disputed domain name is also being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph�4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Dated: July 18, 2006
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