The Complainant is Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Jin Yi of Shengyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HooYoo Information Technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 28, 2013, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On January 29, 2013, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 15, 2013. 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 primarily in the business of fashion and luxury goods. The Complainant owns several trademarks, in particular ARMANI and EMPORIO ARMANI (the Armani trademarks), which are registered and used for different kinds of goods and services, such as watches in class 14, with registrations in Europe, Unites States of America, and China, as well as many international registrations at WIPO.
The Respondent is based in China, and offers watches on the website operating at the disputed domain name.
The disputed domain name was registered on March 20, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the notoriety and diffusion of the Armani trademarks are evidenced by articles which appear throughout the world in fashion magazines and in major newspapers. The Complainant also contends that the notoriety of the Armani trademarks and the rights of the Complainant have been confirmed by several positive decisions rendered by UDRP panels. The Complainant further contends that it is recognized that the Armani trademarks are well-known all over the world.
The Complainant contends that the disputed domain name incorporates entirely the Complainant’s house mark ARMANI and the Complainant’s Armani trademarks ARMANI and EMPORIO ARMANI. The Complainant contends that the disputed domain name is confusingly similar to the Armani trademarks and that the inversion of the words “emporio” and “armani” is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect to the disputed domain name. Specifically, the Complainant contends that (i) the Respondent has no specific right or interest in using the words “armani” or “emporio armani” in its domain name, (ii) the Respondent has no connection or affiliation with the Complainant, and (iii) the Complainant has not licensed or otherwise authorized the Respondent to use the Armani trademarks in the disputed domain name.
The Complainant contends that the disputed domain name was registered and used in bad faith. Specifically, the Complainant contends that (i) due to the worldwide fame of the Armani trademarks, the Respondent knew of the Armani trademarks at the time of the registration of the disputed domain name, and (ii) the Respondent sells, on the website operating at the disputed domain name, watches distinguished by the trademark EMPORIO ARMANI to mislead the consumers into believing that the website is one of the Complainant’s official websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of the Registration Agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice.
On January 28, 2013, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of the proceedings. On January 29, 2013, the Complainant confirmed its request that English be the language of the proceedings. On January 29, 2013, the Center informed the Respondent of the Complainant’s request and invited the Respondent to reply by the specified deadline. In the e-mail of January 28, 2013, the Respondent was further informed that if the Center does not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
The Panel notes that evidence offered by the Complainant shows that the Respondent’s website is in English. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the content of its website in English. The Panel also notes that the disputed domain name contains words in English.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. Discussion of the Merits
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted evidence of ownership of trademark registrations in various jurisdictions for several marks, including EMPORIO ARMANI. The disputed domain name wholly incorporates the trademark EMPORIO ARMANI, albeit with words “emporio” and “armani” inverted, and adding the term “watches” thereafter.
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. The Panel finds that due to the fame of the EMPORIO ARMANI trademark, the inversion of “emporio” and “armani” in the disputed domain name does not make the registered trademark less recognizable within the disputed domain name. The addition of the descriptive term “watches” does little, if anything, to dispel the confusion. On the contrary, the likelihood of confusion is strengthened, particularly since the Complainant sells watches using the trademark EMPORIO ARMANI.
This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s EMPORIO ARMANI trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant contends that no license or authorization of any kind has been given by the Complainant to the Respondent to use the EMPORIO ARMANI or the ARMANI trademarks. The Complainant further contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods because the Respondent is trading on the fame of the Complainant’s trademarks.
The Panel is satisfied under the circumstances that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence that demonstrate rights or legitimate interests in the disputed domain name.
The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. In the absence of any response, the Respondent has failed to satisfy the Panel that there are in fact any rights or legitimate interests in the disputed domain name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the Complainant may demonstrate that the disputed domain name has been registered and used in bad faith by making a showing that the Respondent, in using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the website or location.
The Complainant alleges that due to the fame and goodwill of the Complainant’s trademark, the Respondent intentionally registered the disputed domain name to attract Internet users to the website operating under the disputed domain name and to mislead the consumers into believing that the Respondent’s website is one of the Complainant’s official website. The Complainant further alleges that the Respondent sells on the website watches distinguished by the EMPORIO ARMANI trademark and that the home page of the website reproduced the EMPORIO ARMANI trademark. There is no obvious disclaimer or other clarifying material on the website at the disputed domain name. The Respondent has not submitted any evidence to rebut the Complainant’s claims in the Complaint. In the absence of such evidence, the Panel accepts the Complainant’s contentions that the disputed domain name was registered with knowledge of the Complainant’s Armani trademarks and in bad faith.
This Panel accordingly finds that the Respondent has registered and used the disputed domain name in bad faith. 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.
Kimberley Chen Nobles
Sole Panelist
Date: April 8, 2013
Full & Egal Universal Law Academy