WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine S.A. v. Nirooshan Jeevarajah
Case No. D2006-0788
1. The Parties
The Complainant is GA Modefine S.A. of Mendrisio, Switzerland, represented by Studio RAPISARDI S.A., of Switzerland.
The Respondent is Nirooshan Jeevarajah of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2006. On June 23, 2006 and on July 11, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 11, 2006, Tucows 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 July 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August�13,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2006.
The Center appointed Edward C. Chiasson, Q.C. as the sole panelist in this matter on August 23, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was properly constituted.
4. Factual Background
The following information derives from the Complaint and the material delivered with it.
The Complainant owns several trademarks worldwide as ARMANI (“the ARMANI Trademarks”). The ARMANI trademarks are registered and used for different kinds of goods and services, such as clothes, glasses, perfumes, jewellery, watches, confectionery, pubs, restaurants and hotels in many classes as 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28, 34, 35, 42, 43 with registrations in United States of America, Europe, Canada, many international registrations at and other registrations in many countries including the United Kingdom of Great Britain and Northern Ireland.
The notoriety and diffusion of the ARMANI Trademarks are illustrated by articles that constantly appear throughout the world in fashion magazines and in the most important newspapers.
The notoriety and the rights of the Complainant have been confirmed by several positive decisions rendered by the WIPO UDRP panels.
The Respondent is not known by the subject domain name or the word “armani”, has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the ARMANI Trasdemarks in a domain name or in any other manner.
There is no active Internet site to which the subject domain name resolves.
The Respondent did not reply to the Complainant’s demand letter.
The Respondent did not participate in this proceeding.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the subject domain name is confusingly similar to the ARMANI Trademarks because the addition of “watches” and “.com”, do not distinguish the subject domain name.
The Respondent’s lack of use of the subject domain name and the facts that he is not known by the subject domain name, coupled with the absence of any authorization from the Complainant to use the ARMANI Trademarks, are said to show that the Respondent does not have a legitimate interest in the subject domain name.
The Complainant relies on the notoriety of the ARMANI Trademarks to establish bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The parties rely on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the ARMANI Trademarks. Watches are an item covered by the ARMANI Trademarks and can connote jewelry and luxury associated with the Complainant’s products.
The addition of “.com” to the subject domain name is of no consequence.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not known by the subject domain name or the ARMANI Trademarks and has no authorization from the Complainant to use either. It appears that the Respondent makes no use of the subject domain name.
These facts establish prima facie the absence of a legitimate interest in the subject domain name. Although a respondent is not obliged to participate in a domain name dispute proceeding, if it were not to do so, it would be subject to the normal inferences that flow from the not unreasonable assertions of fact of a complainant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that give rise to the finding often are relevant to the bad faith inquiry.
The Complainant’s ARMANI Trademarks are extremely well known. In this case, the Administrative Panel is entitled to infer that the Respondent was aware of the Complainant’s marks when the subject domain name was registered. The fact that the Respondent does not actively use the subject domain name, does not affect the fact that the registration blocks the Complainant from obtaining and using the subject domain name. It is a passive, bad faith use.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
Based on the information presented to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asked that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: September 6, 2006
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