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 Qian Li of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain names and are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 26, 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.
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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2013.
The Center appointed Richard Tan as the sole panelist in this matter on March 14, 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 a designer and manufacturer of, inter alia, fashion goods and apparel and owns several trademarks worldwide including ARMANI, ARMANI JEANS, AJ ARMANI JEANS and ARMANI JUNIOR. These trademarks are registered and used for different kinds of goods and services, for different classes as 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 35 with registrations in Europe, United States of America, China and internationally.
The disputed domain names were registered in March 2012. The disputed domain names resolve to a parking page that contains sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that its ARMANI trademarks are well-known all over the world. The fame and notoriety of its ARMANI trademarks are established by their appearance in fashion magazines all over the world and in the major newspapers. The disputed domain names and incorporate entirely the Complainant’s house mark ARMANI and the trademarks ARMANI JEANS and ARMANI JUNIOR. The notoriety and the rights of the Complainant in its trademarks have been confirmed by several previous domain name decisions.
The Complainant has also sent a cease and desist letter to the Respondent on June 24, 2012 and a subsequent reminder on July 3, 2012 but has received no response.
The Complainant contends that the disputed domain names are identical to the Complainant’s trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not been commonly known (as an individual, business or other organization) by the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the marks in a domain name or in any other manner. The Respondent has not acquired any legitimate rights whatsoever (including trade/service mark rights) in the domain name or in any name corresponding to the domain name. The use of the disputed domain names cannot be considered a bona fide offering of goods or services. The website to which the disputed domain names resolve, consists of a parking page that promotes the advantages offered by the generic top level domain (“gTLD”) “.mobi” and in the same home page, different sponsored links exist.
By registering the disputed domain names that are identical to the Complainant’s trademarks ARMANI, ARMANI JEANS and ARMANIJUNIOR, the Respondent clearly intended to profit from its use, diverting Internet users to its websites in order to generate traffic on the web and to generate monetary advantages for it. This does not constitute a bona fide offering of goods or services. The Complainant argues that even a single, trademark-related advertisement on a parking website can be sufficient to establish a lack of a legitimate interest: Boris Johnson v. Belize Domain Whois Service Lt,WIPO Case No. D2010-1954.
The Complainant therefore contends that the Respondent has no rights or legitimate interests in the disputed domain names, especially given the fame of the ARMANI marks.
The Complainant also contends that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainant contends that the worldwide fame and notoriety of the ARMANI marks leaves no question that the Respondent was aware of those marks at the time of the registration of the disputed domain names. In light of the fame of the Complainant’s trademarks, the choice of the disputed domain names by the Respondent could not have been the result of a mere coincidence.
The registration of domain names consisting in a family name and/or trade marks of a worldwide famous fashion 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.
As stated in several previous UDRP decisions, the registration of a domain name, in absence of any rights or legitimate interests, that is confusingly similar to the Complainant’s widely-known trademarks suggests opportunistic bad faith (Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd.,WIPO Case No. D2000-0163; Mastercard International Incorporated v. Total Card Inc.WIPO Case No. D2007-1411 and MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412).
Furthermore, the Respondent is using the disputed domain names to intentionally attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s name and marks as to the sponsorship, affiliation and endorsement of that website by the owner of the trademarks.
The Respondent was also notified of its wrongful use and registration of the disputed domain names but has not replied and has instead maintained the website and the disputed domain names, despite the Complainant’s objections. The Complainant contends that “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc,WIPO Case No. D2002-0787). Such silence, ongoing cybersquatting and dilution are further evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain names:
(i) that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the ARMANI marks. The ARMANI marks have been registered in many countries and regions around the world as noted above.
The evidence adduced by the Complainant demonstrates that the mark has been extensively used by the Complainant for its business around the world. This Panel is satisfied on the evidence that the Complainant has acquired rights in those marks, and that the ARMANI mark has acquired the status of a well-known and famous mark.
The Panel further accepts that the disputed domain names are confusingly similar to the Complainant’s marks.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain names themselves to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. Each of the disputed domain names reproduces the ARMANI JEANS and ARMANI JUNIOR marks in their entirety.
The addition of a gTLD “.mobi” is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.
In this Panel’s view, the test of confusingly similarity for each of the disputed domain names is clearly satisfied. This Panel accordingly finds that the disputed domain names are confusingly similar to the Complainant’s trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant contends that the Respondent registered the disputed domain names long after the Complainant established its rights in the well-known ARMANI mark as well as the ARMANI JEANS and ARMANI JUNIOR marks, which the Respondent would clearly have been aware of at the time of the registration of the disputed domain names in 2012.
The Panel finds that the Respondent is not and has not been commonly known by the disputed domain names, that the Respondent has never been known by the ARMANI name or the aforesaid marks, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and the disputed domain names have been used to mislead and attract customers to its websites for its own commercial gain by the use of a parking page and sponsored links from which the Respondent is likely to receive revenue. The Respondent is not associated or connected in any way with the Complainant. Such a use of or association with the Complainant’s well-known marks for the Respondent’s website to generate revenue is contrary to a bona fide offering of goods or services or the Respondent having a legitimate interest in the disputed domain names.
The Panel accepts the Complainant’s contentions that based on the manner in which the Respondent used the marks in the disputed domain names, without the consent of the Complainant, the Respondent was seeking to create the impression that the Respondent was associated with the Complainant and to mislead consumers into believing that the Respondent and its website was associated with or approved by the Complainant. In so doing the Respondent was clearly seeking to trade on the Complainant’s fame, goodwill and reputation. Such use was not a legitimate noncommercial or fair use of the disputed domain names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and are being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith.
The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The disputed domain names were registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain names, as asserted by the Complainant.
The Respondent did not also reply to the Complainant’s cease and desist letters. The Panel accepts the arguments of the Complainant that such failure to respond is capable of supporting an inference of bad faith when viewed in the context of all the surrounding circumstances.
The Panel finds that the incorporation of the marks in question in their entirety as part of the disputed domain names is an indication of bad faith under the circumstances. The Respondent’s choice of the disputed domain names which incorporated the Complainant’s marks leads to the conclusion that the Respondent was seeking to derive unfair monetary advantage from the Complainant’s reputation by its use of the website in question from which it could obtain revenue.
All of the above matters clearly demonstrate that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyP, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning 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 the Complainant.
Richard Tan
Sole Panelist
Date: March 30, 2013
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