WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GA Modefine S.A., Giorgio Armani S.p.A. v. Germano Armani Case No. D2008-1793 1. The Parties
The Complainant is GA Modefine S.A., of Mendrisio, Switzerland, and Giorgio Armani S.p.A., of Milan, Italy, represented by Studio Rapisardi S.A., of Switzerland.
The Respondent is Germano Armani, of Parma, Italy. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 21, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name(s). On November 24, 2008, Tucows Inc. (with further clarification on December 10, 2008) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 9, 2008. 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” or “UDRP”), 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 December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on January 21, 2009. 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 is the owner of numerous trademarks containing the name ARMANI, which it uses inter alia in connection with a broad range of fashion-related products. Those marks are famous around the world.
The Complainant has not licensed or otherwise permitted the Respondent to use its marks.
There are no active web sites at the disputed domain names. 5. Parties' Contentions A. Complainant
The Complainant alleges that it owns several trademarks known worldwide, (the ARMANI trademarks), including GIORGIO ARMANI, ARMANI, and ARMANI CASA. Said trademarks are registered worldwide and used for different kinds of goods and services, such as perfumes, jewellery, and furniture, in many classes, including 3, 11, 20, 21, and 24.
According to the Complainant, the notoriety and diffusion of the ARMANI trademarks are demonstrated by the numerous articles which appear throughout the world in fashion magazines and the most important newspapers.
The Complainant states that the disputed domain names incorporate entirely the Complainant's ARMANI and GIORGIO ARMANI marks. The addition of the generic terms “parfums” or “casa” are not sufficient to prevent the risk of confusion between the Complainants' trademarks and the disputed domain names; on the contrary, said generic words are likely to enhance the confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to the Complainant, suggesting the idea that the same link to one of the Complainant's official sites and that their registration and use is authorized by the Complainant.
According to the Complainant, the Respondent, whose name appears from the publicly-available WhoIs data to be Germano Armani, has not been commonly known (as an individual, business or other organization) by the domain name in object; even his contact address is antares@, underlining the relevance of the name of the society he represents over his own.
Further, says the Complainant, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the ARMANI marks in a domain name or in any other manner. The Respondent has not acquired any legitimate rights whatsoever (including trademark or service mark rights) in the disputed domain names or any name corresponding to the disputed domain names.
The Complainant alleges that the disputed domain names were registered one year and half ago, (between the 18th and the 25th June 2007), are not linked to any active websites.
According to the Complainant, the bad faith of the Respondent in the registration of the domain names is proven by the following circumstances.
The worldwide fame of the ARMANI marks leaves no question of the Respondent's awareness of the marks at the time of the registration of the disputed domain names. In light of the aforesaid fame of the Complainant's trademarks, the choice of the disputed domain names by the Respondent could not result from a mere coincidence. And indeed, the Respondent's awareness of the Complainant's activity and rights is suggested by the fact that the Respondent registered domain names just consisting of the Complainant's marks and the generic word “casa” or “parfums”, that clearly relate to some of the Complainant's business activities.
The registration of domain names consisting of the name and/or trademarks of a worldwide famous fashion stylist combined with the word “casa” or “parfums”, which distinguish two of the several fields of activity of the stylist, reveals the intention of the Respondent to exploit the notoriety, the importance and the value of said name and to take advantage of the unlawful use of the trademarks owned by the Complainant, and indicates that at the time of the registration of the domain name the respondent was certainly aware of the fame and notoriety of the ARMANI trademarks.
Furthermore the bad faith of the Respondent is demonstrated by the fact that he previously registered several domain names of famous designers, such as Dolce & Gabbana and Robedikappa, and in front of UDRP panels has always been forced to transfer the domain names to the lawful owner of the corresponding trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The panel will first address the procedural issues related to the fact that the Respondent has defaulted and then analyse the evidence to determine whether the Complainant has proven, in accordance with paragraph 4(a) of the Policy that:
- The disputed domain names are identical or confusingly similar to a trademark in which the complainant has rights, and
- The respondent has no rights or legitimates interests in the disputed domain names, and
- The respondent registered and used the disputed domain names in bad faith.
Since the respondent has defaulted, this panel must first determine what the procedural implications are of a default. Should the complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, paragraph 4(a) of the Policy states:
“In the administrative proceeding, the complainant must prove that each of these three elements are present.”
This Panel therefore holds that it cannot grant the Complainant's request automatically, but that it must instead examine the evidence presented to determine whether or not the Complainant has proven its case as required by the Policy. The Panel may, of course, draw appropriate inferences from the Respondent's default. A. Identical or Confusingly Similar
The Complainant has presented evidence that it owns the rights to the trademark ARMANI and it is obvious that the contested domain names are confusingly similar to the trademark. See for example America Online Inc. v. Yetech Communication Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987. B. Rights or Legitimate Interests
The Complainant has presented evidence and argued convincingly that, given the international reputation of the ARMANI mark, it is hard to understand how the Respondent could have any rights or legitimate interests in the disputed domain names.
The Respondent did not reply, and thus did not contest this argument. Paragraph 14(b) of the Rules, states that “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Clearly, not submitting a Response is a failure to comply with a requirement under the Rules, and the Panel may draw such inference as it considers appropriate. In the present case, the Panel considers it appropriate to accept the factual allegations and evidence presented by the Complainant.
Thus the Panel holds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has rights or legitimate interests in the disputed domain names. The Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Respondent is not actually using the disputed domain names to point to a web site. Thus the question arises of whether mere registration and passive holding of the disputed domain names can constitute use. The answer to this question is of course “yes”; registration of a domain name may constitute use of that domain name.
But the Panel must still determine whether the Respondent has registered and is using the domain name in bad faith. Since there is no direct evidence of what the Respondent intends to do with the domain name, the panel will have to make inferences from the available facts.
A relevant case is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Although there are some differences between the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this Panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant's trademark has a strong reputation and is widely known,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain names,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of the complainant's rights under trademark law, or a violation of paragraph 4(b)(iv) of the Policy.
Reinforcing this last point, the Panel notes that, as the Complainant correctly points out, the Respondent's use of words such as “casa” (the Italian word for house) and “parfums” (the French word for perfumes) in conjunction with the famous trademark ARMANI indicate an intention to mislead Internet users into believing that the disputed domain names offer the Complainant's products or services, which is not the case.
In light of these particular circumstances, this Panel concludes that the Respondent's passive holding of the disputed domain names in this particular case satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain names were registered and are being used in bad faith by the Respondent. 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 names, , , , , and be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: January 27, 2009
Full & Egal Universal Law Academy