Complainant is Giorgio Armani S.p.A. (Swiss Branch) of Mendrisio, Switzerland represented by Studio Rapisardi S.A. of Italy.
Respondent is lv kefeng of the People’s Republic of China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Xin Net Technology Corp.; the disputed domain names and are registered with Xiamen eName Network Technology Corporation Limited dba eName Corp; the disputed domain name is registered with B, Inc.; the disputed domain name is registered with Web Commerce Communications Limited dba WebN. (“Registrars”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 29, 2011, the Center transmitted by email to Registrars a request for registrar verification in connection with the disputed domain names. On April 29, 2011, Web Commerce Communications Limited dba WebN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 3, 2011, B, Inc. and Xin Net Technology Corp. transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details. On May 4, 2011 Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 4, 2011, the Center contacted Complainant regarding administrative deficiencies in the Complaint. Complainant filed an amendment to the Complaint on May 11, 2011.
The Center verified that the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on May 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2011. Respondent did not submit any response. Accordingly, the Center notified of Respondent’s default on June 3, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 8, 2011. 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.
The Complaint was submitted in the English language. The verification responses received from the respective Registrars confirmed that the language of the Registration Agreements for five of the six disputed domain names cited in the Complaint is Chinese, while the language of the Registration Agreement for one of the disputed domain names is English. On May 4, 2011, the Center transmitted an email communication to the parties in the Chinese and English language regarding the language of the proceedings, noting that the language of the administrative proceeding should match the language of the Registration Agreement under paragraph 11 of the Rules. The Center invited Complainant to submit a Chinese translation of the Complaint, present evidence of an agreement between the parties to conduct the proceedings in the English language, or submit a request for English to be the language of the proceedings. The Center also invited Respondent to submit comments to Complainant’s submissions regarding the language of the proceedings. On May 6, 2011, Complainant filed a request for English to be the language of the proceedings because the record shows that all communications between Complainant and Respondent were conducted in the English language. No comments regarding the language of the proceedings were presented by Respondent. Having reviewed the record, the Panel is satisfied that Respondent is able to communicate in the English language and sees no reason to contest Complainant’s request to proceed in this language. 4. Factual Background
Complainant is a manufacturer, designer, and distributor of clothing, accessories, cosmetics, and home interior goods. Complainant owns registrations in multiple jurisdictions for its trademarks ARMANI, GIORGIO ARMANI, EMPORIO ARMANI & Design, ARMANI COLLEZIONI, ARMANI CODE & Design, ARMANI MANIA BLACK CODE (Stylized), A|X ARMANI EXCHANGE (Stylized), and ARMANI JUNIOR.
The disputed domain names were created on the following dates:
was created on October 21, 2009;
was created on November 2, 2009;
was created on November 17, 2009;
was created on November 17, 2009;
was created on March 21, 2010;
was created on March 29, 2010. 5. Parties’ Contentions A. Complainant
Complainant claims to own several hundred trademarks worldwide incorporating ARMANI including registrations for ARMANI, GIOGIO ARMANI, ARMANI COLLEZIONI, ARMANI CODE, ARMANI MANIA BLACK CODE, ARMANI EXCHANGE, ARMANI JUNIOR, and EMPROIO ARMANI. Complainant claims that these trademarks are in use for goods and services in multiple classes including Classes 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, and 35. Complainant has provided copies of numerous articles from magazines and newspapers which feature its trademarks and goods and has cited prior UDRP decisions which recognize the notoriety of its ARMANI trademarks. Complainant claims that each of the disputed domain names can be categorized as identical or confusingly similar to trademarks in which Complainant has rights and alleges that Respondent is not related to Complainant or licensed to use Complainant’s trademarks. Regarding bad faith, Complainant has provided copies of correspondence with Respondent which Complainant claims exhibit attempts by Respondent to sell the disputed domain names to Complainant for inflated prices. According to Complainant, the content of the disputed domain names at one time advertised the domain names for sale. and/or featured links to products of Complainant’s competitors. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established trademark rights in ARMANI, GIOGIO ARMANI, ARMANI COLLEZIONI, ARMANI EXCHANGE, ARMANI JUNIOR, and EMPROIO ARMANI in multiple jurisdictions including China, the jurisdiction cited as Respondent’s country of residence. The disputed domain names and are identical to the ARMANI COLLEZIONI and ARMANI JUNIOR trademarks in which Complainant has rights. Moreover, the disputed domain names and are confusingly similar to the ARMANI EXCHANGE and EMPORIO ARMANI trademarks in that both disputed domain names differ from the trademarks only in their inclusion of a hyphen. Prior UDRP decisions have held that the inclusion of a hyphen in a disputed domain name does not distinguish the domain name from a trademark in which Complainant has established rights. See, e.g., Transcontinental Media Inc v. Infa Dot Net Web Services/Mr. James M. Van Johns, WIPO Case No. D2001-0908 (“The Domain Name differs from the Complainant’s trade mark by merely a hyphen. The Panel has no hesitation in finding that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights”).
The disputed domain name is confusingly similar to the ARMANI trademark in which Complainant has rights. The term “Armani” is the most distinctive portion of the disputed domain name and matches Complainant’s trademark identically. The addition of the terms “black” and “label” do not sufficiently distinguish the disputed domain name from the ARMANI trademark to avoid a finding of confusing similarity. The combination of similar terms and a trademark to form a domain name was held to be confusingly similar to the trademark at issue. See Burberry Limited v. Startelecom, WIPO Case No. D2005-1114 (holding that the incorporation of BLUE LABEL did not distinguish the domain name form the BURBERRY trademark, nothing that “in the eyes of a usual customer this term stands for special kind of products offered by the Complainant, for instance a special product line or products under a special price regime”).
The record confirms that Complainant has established rights ARMANI CODE in over 34 jurisdictions, however there is no evidence that these rights extend to China, the jurisdiction cited as Respondent’s country of residence. Nevertheless, there is little doubt that consumers would find the disputed domain name confusingly similar to the ARMANI trademark in which Complainant has rights given that the prefix of the disputed domain name incorporates this trademark in its entirety. Moreover, Complainant’s well established international presence ensures that its trademarks are known by consumers beyond the jurisdictions corresponding to Complainant’s trademark registrations. It is not a requirement of the Policy that Complainant’s trademark rights be recognized in Respondent’s county of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence”). A simple Internet search query for “Armani Code” reveals results predominantly related to Complainant’s products; it is therefore difficult to imagine a scenario where consumers would not be confused between the ARMANI CODE trademark and the disputed domain name .
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has established rights in its ARMANI family of marks which clearly precede the registration of the disputed domain names. There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term ”armani”. As such, Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant’s ARMANI trademark has been acknowledged by previous UDRP panels as well-known internationally. See, e.g., GA Modefine S.A. v. Nirooshan Jeevarajah,WIPO Case No. D2006-0788 (stating that Complainant’s ARMANI trademarks “are extremely well-known”) and GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi,WIPO Case No. D2007-0834 (stating that “the trademark ARMANI is internationally well-known”). It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that Respondent was unaware of Complainant’s PORSCHE trademark when registering ) and Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of Complainant’s well-known NIKE trademark when registering the domain name). Given the recognized notoriety of the ARMANI trademark, it is doubtful that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain names, each of which incorporates the ARMANI trademark in its entirety.
Respondent’s knowledge of Complainant’s business is clear upon review of the record. Specifically, it was Respondent who contacted Complainant’s representative stating that he/she had registered a domain name incorporating the ARMANI trademark. Further correspondence between Complainant and Respondent led to Respondent to disclose that he/she had registered multiple domain names incorporating the ARMANI trademark and request monetary compensation of EUR 400 in exchange for their transfer. On September 24, 2010, Respondent emailed Complainant requesting fees of EUR 900 for all of the disputed domain names and requested a quick reply noting that that he/she would “ask for a high price” once the disputed domain names were renewed. Respondent’s requests for inflated amounts of consideration in exchange for the disputed domain names and threats to increase the asking price are indicative of attempts to sell the disputed domain names in excess of out-of-pocket costs. Such behavior is cited as bad faith use under the Policy and has been held by prior panels to be evidence of bad faith. See, e.g., Clairol Incorporated v. Jean-Pierre Fux,WIPO Case No. DTV2001-0006, CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243 and Nokia Corporation v. David Wills,WIPO Case No. DWS2001-0004.
Further review of the record indicates that the disputed domain names , , , and have featured links to third party websites offering goods of Complainant’s competitors. Use of the disputed domain names to advertise links to third party website featuring goods which compete with those provided under Complainant’s trademark supports a finding of bad faith use. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , and be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: June 22, 2011
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