WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GA Modefine S.A. v. Thomas Casey Case No. D2009-0826 1. The Parties
The Complainant is GA Modefine S.A., Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Thomas Casey, Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2009, regarding four domain names. On June 22, 2009, the Center transmitted by email to GoD, Inc. and Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On June 22, 2009, GoD, Inc., and Wild West Domains, Inc, transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 2009 providing all registrant and contact information disclosed by the Registrars, and inviting the Complainant to amend its Complaint. The Complainant filed an amended Complaint on July 17, 2009 and opted to withdraw three of the disputed domain names. The Center verified that the Complaint together with the amended 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 August 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2009.
The Center appointed Hariram Jayaram as the sole panelist in this matter on September 29, 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 in the business of fashion and luxury goods. It owns rights in several trade marks around the world, such as ARMANI and GIORGIO ARMANI.
The Respondent is the registrant of the disputed domain name which was initially registered on June 20, 2008. 5. Parties' Contentions A. Complainant
The trade marks on which the Complaint is based are ARMANI, GIORGIO ARMANI, EMPORIO ARMANI+EAGLE DEVICE. The said trade marks are registered inter alia in Europe, the United States of America and Canada and used for goods and services falling under classes 3, 11, 20, 21 and 24. Several articles published worldwide in fashion magazines and newspapers mention the said trade marks and they are well-known all over the world.
The disputed domain name incorporates entirely the Complainant's house marks ARMANI and GIORGIO ARMANI and the generic word “designs”. The addition of the generic word “designs” is not sufficient to prevent the risk of confusion between the Complainant's trade marks and the disputed domain name. The said word is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant. It may be understood that the disputed domain name leads to one of the Complainant's official sites and its registration and use are authorized by the Complainant. The word “designs” used in connection with the name and trade mark GIORGIO ARMANI may be seen to emphasize that certain products or services have been designed, created and conceived by Giorgio Armani. The fact that the disputed domain name consists entirely or in part of the Complainant's trade marks, renders the disputed domain name identical or confusingly similar to the said trade marks.
The lack of rights of the Respondent in respect of the disputed domain name is submitted to be shown by the following circumstances: (a) the Respondent has not been commonly known (as an individual, business or other organization) by the disputed domain name, (b) the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the said trade marks in a domain name or in any other manner, and (c) the Respondent has not acquired any legitimate rights (including trade/service mark rights) in the disputed domain name or any name corresponding to it.
Bad faith registration and use of the disputed domain name is submitted to be shown by the fact that the said trade marks are famous and this leaves no question as to the Respondent's awareness of the same at the time of registration of the disputed domain name. The choice of the disputed domain name by the Respondent could not be the result of a mere coincidence. The Respondent's awareness of the Complainant's activity and rights is indicated by the fact that the Respondent registered a domain name merely consisting of the Complainant's trade marks and the generic word “designs” which clearly relates to the Complainant's business activity. The Respondent's awareness of the Complainant's rights and activity can be inferred from the use of the domain name as the website with the domain name discloses text such as : “Giorgio Armani Designs Clothing and Accessories”; as the words “Find the best deals on Giorgio Armani Goods, Gear, Clothing and Accessories” are used as Meta Description; and as the words “Giorgio, Armani, Designs, Fashion, Goods, Gear, Clothing, Accessories, clothes, teen, men, women, sports, athletics, shorts” are used as Meta Keywords. There is also use of the Complainant's “Emporio Armani + eagle device” on the top of the Respondent's web page where Armani products are offered on sale. Despite being contacted by GA Modefine S.A. on the illegality of the registration of the disputed domain name, by way of a letter to Domains by Proxy Inc., the Respondent has not replied and is continuing to use the Complainant's trade marks in the disputed domain name and the website. By registering the disputed domain name the Respondent has attempted to capitalize on the well-known trade marks of the Complainant. The aforesaid circumstances together with the lack of rights or legitimate interests of the Respondent in the disputed domain name is said to lead to the conclusion that the Respondent registered and is using the disputed domain name in bad faith. The registration of the disputed domain name consisting of the name and trade marks of a world famous fashion stylist combined with the word “designs” which emphasizes the activity of the stylist, reveals the intention of the Respondent to exploit the notoriety, importance and value of the said name and to take advantage, by unlawful use, of the trade marks owned by the Complainant. 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 each of the following three elements to obtain an order for the domain name to be cancelled or transferred to it:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
The Panel has to rely entirely on the Complainant's statements and documents to come to a decision because of the failure on the part of the Respondent to file a response. A. Identical or Confusingly Similar
The disputed domain name is different from one of the Complainant's widely known trade marks GIORGIO ARMANI in only two respects: the words “giorgio” and “armani” are combined to form one word and there is the addition of the generic word “designs” in the disputed domain name. In GA Modefine SA v Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195, the panel held that:
“The domain names and incorporate…entirely Complainant's trade marks EMPORIO ARMANI and GIORGIO ARMANI respectively…The addition of the generic terms “parfums” and “cosmetics”…cannot be deemed sufficient to prevent the risk of unfounded identity between the contested domain names and Complainant's trade marks.”
The Panel agrees with the above decision and concludes that addition of the generic word “designs” in the disputed domain name will not prevent the disputed domain name from being confusingly similar to the Complainant's trade mark GIORGIO ARMANI.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made allegations against the Respondent as to his lack of rights and legitimate interests. The latter known as Thomas Casey is not commonly known by the disputed domain name. The Respondent has no connection or affiliation with the Complainant. The Complainant has not given any license or consent, express or implied, to the Respondent as to the use of any of the Complainant's trade marks in a domain name.
These allegations remain unrebutted and, in the circumstances of this case, the Panel is left with no alternative but to conclude that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has several registrations of its trade marks bearing the words “giorgio” and/or “armani” in many countries, including the United States of America where the Respondent is located. The Complainant's trade marks being widely known trade marks, the Respondent must be deemed to have known of their registration and their use in the fashion industry prior to the registration of the disputed domain name. The website corresponding to the disputed domain name, be it the title, description or keywords, all make reference to “Giorgio Armani” in respect of designs, clothing and goods. This is an obvious attempt to capitalize on the Complainant's trade marks and, as alleged by the Complainant, to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. These factors coupled with the lack of rights and legitimate interests in the disputed domain name, as aforesaid, lead to the conclusion that the Respondent's registration and use of the disputed domain name is in bad faith.
The Panel finds that the Complainant has satisfied the requirements of 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.
Hariram Jayaram
Sole Panelist
Dated: October 2, 2009
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