WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine S.A. , Giorgio Armani S.p.A. v. Kim Hongtae
Case No. D2007-0851
1. The Parties
The Complainants are i) GA Modefine S.A. of Mendrisio, Switzerland; and ii) Giorgio Armani S.p.A of Milano, Italy, both represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Kim Hongtae of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with Asadal, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2007. On June 13, 2007, the Center transmitted by email to Asadal, Inc. a request for registrar verification in connection with the domain name at issue. On July 12, 2007, Asadal, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and also informing that the language of the registration agreement was Korean. In response to the Center’s notification of the language of proceedings, the Complainant on July 17, 2007, submitted a request along with related evidence that English should be the language of proceedings. 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 both in Korean and English, and the proceedings commenced on July 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties of the Respondent’s default on August 8, 2007.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on August 17, 2007. 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 Complainants are primarily in the business of fashion and luxury goods. The Complainants own rights for various trademarks in many countries, including the following trademarks: GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, AHR ARMANI HOTELS & RESORTS.
The Respondent appears to be an individual, and registered the disputed domain name on February 16, 2006.
5. Parties’ Contentions
A. Complainants
The Complainants contend that the disputed domain name is identical or confusingly similar to marks in which the Complainants have rights. More specifically, the Complainants assert that they hold trademark registrations in many countries for GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, and AHR ARMANI HOTELS & RESORTS. The disputed domain name entirely incorporates the GIORGIO ARMANI trademark, and has simply added the term “hotel”.
The Complainants also contend that the Respondent has no rights or legitimate interest in the disputed domain name. More specifically, the Respondent has not used the disputed domain name, and the Respondent is not commonly known by the domain name in question.
Finally, the Complainants contend that the disputed domain name was registered and is being used in bad faith. More specifically, the Complainant asserts that the domain name was registered and acquired primarily as an attempt to sell, rent or otherwise transfer the domain name to the Complainants for valuable consideration well in excess of the Respondent’s out-of-pocket costs directly related to the domain name. In fact, Complainants assert that there was an attempt to sell the disputed domain name to them. Further, the Respondent cannot deny that he knew of the Complainants’ trademark rights in light of the fame of the Complainants’ trademarks.
B. Respondent
The Respondent did not submit any formal reply to the Complainant’s contentions. However, the Respondent sent an e-mail to the Center on July 3, 2007 (before the proceedings commenced).
In his email, the Respondent contends that the Complainants are not involved in the hotel business, nor is there any entity called “Armani hotel”. The Respondent also contends that the marks “Armani hotel” and “giorgioarmanihotel” are not registered as trademarks in Korea. Finally, the Respondent asserts that he was in the process of preparing an online business after the registration of the disputed domain name, but no commercial gain has yet been obtained.
6. Discussion and Findings
Preliminary Issue: Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of proceedings shall be the language of the registration agreement, unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise. The default language of the proceedings is Korean, but the Complainant submitted a request and supporting evidence contending that the proceedings may proceed in English, to which the Respondent communicated an objection. Taking into account all arguments made, the Center issued a notice stating that it would accept (i) the Complaint filed in English, and (ii) a Response in either Korean or English. The Parties were further advised that the ultimate decision regarding the language of the proceedings would be determined at the discretion of the Panel. The notice provided by the Center to the Parties was presented both in English and in Korean to accommodate the situation and the Parties.
Under the circumstances and with the present record, this Panel determines that the proceedings may be conducted in English. Not only has the Respondent failed to file a formal Response, there is also evidence of English language exchange of communications between the Parties, in which the Respondent clearly demonstrated competency in English.
A. Identical or Confusingly Similar
The Complainants have submitted evidence of owning trademark registrations in various jurisdictions, including the Republic of Korea, for several marks, including GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, and AHR ARMANI HOTELS & RESORTS. The disputed domain name wholly incorporates the trademark GIORGIO ARMANI and simply adds the term “hotel” thereafter. “The addition of such a descriptive or generic term to an existing trademark does little, if anything, to dispel confusion.” Taylor Made Golf Company, Inc. d/b/a Taylormade adidas Golf v. Kang Doeck-Ho, WIPO Case No. D2005-1262. In fact, the likelihood of confusion may even be said to be strengthen, particularly since the Complainants are also involved in hotel services and have trademark registrations protecting their marks for such services.
For the reasons given above, the Panel finds that the Complainants have established this element and concludes that the subject domain name is confusingly similar to the Complainants’ registered trademark.
B. Rights or Legitimate Interests
The Complainant has made the required allegations that the Respondent has no rights or legitimate interests in the subject domain name, and the Respondent has not presented any evidence or compelling argument by way of a rebuttal or an explanation on this point. Under the specific circumstances of this case, the Panel finds it reasonable to conclude that the Complainants have made a prima facie showing of this element.
Accordingly, the Panel finds that the Complainant has established this element, and concludes that the Respondent has no rights or legitimate interests in the subject domain name.
C. Registered and Used in Bad Faith
Under the facts of this case, the Panel finds that there is sufficient evidence of bad faith. The domain name wholly incorporates the Complainants’ trademark GIORGIO ARMANI, which is famous and confirmed as such by previous UDRP panels. GA Modefine S.A. v. AES OPTICS, WIPO Case No. D2000-0306; GA Modefine S.A., Giorgio Armani S.p.A. v. Jung Dong Kwon, WIPO Case No. D2004-1103; GA Modefine S.A. v. N, WIPO Case No. D2001-0331; GA Modefine S.A. v. Nonsolomoda NV, WIPO Case No. D2001-0308. It is difficult to imagine that the Respondent, innocently and without knowledge of the Complainants’ trademarks, divined this unique combination of letters, which just happens to correspond identically to the Complainants’ trademark and the name of the founder. Not only is this improbable, the circumstances warrant the inference that the Respondent was in fact aware of the GIORGIO ARMANI trademark, and he registered the disputed domain name for some improper commercial/monetary purpose.
In view of the above, and the lack of a denial of bad faith by the Respondent, the Panel readily finds that the final element has been established.
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 Complainants.
Ik-Hyun Seo
Sole Panelist
Dated: September 7, 2007
Full & Egal Universal Law Academy