The Complainant is GA Modefine S.A. of Mendrisio, Switzerland represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Zhao Ke of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Guangzhou Ming Yang Information Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 22, 2012, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2012, Guangzhou Ming Yang Information Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 26, 2012, the parties were notified of the language of the proceeding following which the Complainant requested that English be adopted as the language of the proceeding while the Respondent requested that Chinese be adopted as the language of the proceeding.
The Center verified that 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 April 2, 2012 . In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 2, 2012. 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 various trade mark registrations incorporating ARMANI, GIORGIO ARMANI and EMPORIO ARMANI (collectively, the “ARMANI Trade Marks”). These include
Jurisdiction Trade mark Trade mark number Registration date
WIPO ARMANI 502876 May 1, 1986
WIPO ARMANI 838290 August 3, 2004
WIPO GIORGIO ARMANI 437479 April 20, 1978
WIPO EMPORIO ARMANI 536698 May 22, 1989
China GIORGIO ARMANI 5954717 August 21, 2010
The ARMANI Trade Marks are used on luxury fashion products and often covered in fashion magazines and newspapers around the world. The Complainant opened a store in Beijing in 1998, in Hong Kong in 2002 and Shanghai in 2004. The fame of the ARMANI Trade Marks has been acknowledged by previous panels (e.g, GA Modefine SA, Giorgio Armani SpA v. Kim Hongtae,WIPO Case No. D2007-0851; GA Modefine SA, Giorgio Armani SpA v. Ahmad Haqqi,WIPO Case No. D2007-0834).
The Complainant is also the registrant of a large number of domain names incorporating for words Armani, Giorgio Armani and Emporio Armani. In particular, the Complainants operate websites under the domain names and which allow consumers to buy their products under the trade marks ARMANI, GIORGIO ARMANI and EMPORIO ARMANI.
The Disputed Domain Name was registered on March 8, 2011. As at March 5, 2012, the Disputed Domain Name resolved to a website which appears to be a parking website. In particular, the parking website linked to Sedo which listed the Disputed Domain Name as being for sale at EUR 6200. At the time of writing this Decision, the Panel noted that the Disputed Domain Name still resolved to a parking website which provided a link to Sedo which offered the Disputed Domain Name for sale.
Not much is known about the Respondent beyond the WhoIs record of the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Name incorporates the trade mark ARMANI in its entirety. The addition of the terms “beauty” and “usa” is not sufficient to prevent the risk of confusion between the ARMANI Trade Marks and the Disputed Domain Name;
b) The Respondent’s name is Zhao Ke and the Respondent is not commonly known by the Disputed Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the ARMANI Trade Marks in a domain name or in any other manner. The use of the Disputed Domain Name is not bona fide; and
c) The Disputed Domain Name was registered and used in bad faith. The Respondent was aware of the ARMANI Trade Marks at the time of registering the Disputed Domain Name. The Respondent’s attempt to sell the Disputed Domain Name at EUR 6200 is in excess of out-of-pocket costs. The links on the landing page resolved from the Disputed Domain Name hosted pay-per-click sponsored links in contravention of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of proceeding
Having reviewed the requests of the parties and the circumstances, the Panel determines that English be adopted as the language of the proceeding. In making this determination, the Panel took into account the following:
a) The Complainant is unfamiliar with the Chinese language;
b) The parking website resolved from the Disputed Domain Name was entirely not in Chinese;
c) The Complaint has already been filed in English. Requiring translation of the same will likely delay proceedings further and increase the burden on the Complainant;
d) The Respondent did not file any response and there is nothing before the Panel to suggest that any attempt was made by the Respondent to do so in any particular language;
e) The Panel is comfortable with both English and Chinese; and
f) In view of the Complaint having been filed in English and the absence of any response having been filed, no apparent benefit will be achieved by insisting that Chinese be adopted as the language of the proceeding. 6.2. Discussion
To succeed in the proceeding, pursuant to paragraph 4(a) of the Policy, the Complainant must show that:
a) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
b) The Respondent did not have any rights or legitimate interests in the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The evidence leaves no doubt that the Complainant owns trade mark rights in the ARMANI Trade Marks. In particular the trade mark ARMANI is incorporated in its entirety in the Disputed Domain Name. As identified by the Complainant, the only difference between the trade mark ARMANI and the Disputed Domain Name is the addition of the suffix “beautyusa” in the latter. The suffix “beautyusa” is an obvious concatenation of the words “beauty” and “usa” which are directly descriptive of the nature of the products of the Complainant and a geographical location which is a major market for products of the Complainant.
The Panel is of the view that the suffix is not capable of distinguishing the Disputed Domain Name from the trade mark ARMANI. The Panel further holds that the Disputed Domain Name is confusingly similar to the trade mark ARMANI. B. Rights or Legitimate Interests
The Complainant has already submitted that it has no relationship with the Respondent and that the Complainant has not licensed or consented to the Respondent’s use of the trade mark ARMANI. There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name or that there is any bona fide basis by which the Respondent could claim any right or legitimate interests. The Panel accordingly concludes that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts on the evidence that the trade mark ARMANI is well-known. It is inconceivable that the Respondent was unaware of the trade mark ARMANI at the time of registering the Disputed Domain Name. It has already been established prima facie that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The evidence demonstrates that the Disputed Domain Name appears to serve no other purpose than to resolve to a parking website which is a front for offering the Disputed Domain Name for sale at a significant price of EUR 6200.
Paragraph 4(b)(i) of the Policy identifies the following situation as bad faith registration and use:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
It is the Panel’s view that the circumstances point to the Respondent having registered the Disputed Domain Name primarily for selling it, whether to the Complainant or someone else. The consideration being offered is patently in excess of the registration and maintenance cost of the Disputed Domain Name since its registration. Therefore, the Panel is of the view that the factual circumstances fall within the situation of bad faith outlined in paragraph 4(b)(i). 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 Name be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: May 30, 2012
Full & Egal Universal Law Academy