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 ICS INC. / PrivacyP of Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland, and Nobby Beach, Queensland, Australia, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2013. On January 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 31, 2013.
The Center verified that the Complaint together with the 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2013.
The Center appointed Michel Vivant as the sole panelist in this matter on March 8, 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 owns several trademarks as ARMANI, EMPORIO ARMANI or GIORGIO ARMANI, registered and used for different kinds of goods and services, such as perfumes, jewelry or furniture, in different locations such as Europe, United States of America or Canada. The registrations of those trademarks are all prior to that of the Domain Name.
The Domain Name has been registered on March 1, 2012 through a “privacy service” (PrivacyP) which allows masking registrations. Nevertheless, the Registrant has been identified later by the Registrar as ICS INC. of Grand Cayman.
In consequence, the Complainant filed a Complaint before the Center, requesting the Panel to issue a decision that the Domain Name be transferred to it. 5. Parties’ Contentions A. Complainant
The Complainant put forward the following arguments.
1) The Domain Name is confusingly similar to the well-known trademarks of ARMANI, the Domain Name incorporating entirely the mark ARMANI with the simple addition of the generic word “parfume”.
2) The Respondent has no rights or legitimate interests in respect of the Domain Name as far as the Respondent, unknown by the Complainant, has no link with it and the use of the Domain Name is clearly intended to divert Internet users.
3) The Domain Name was registered and used in bad faith as far as the choice of it “could not result from a mere coincidence” but, as regards well-known trademarks, registration and use intent to exploit the notoriety of those trademarks. The Complainant adds the fact that “(the) Respondent has attempted to obfuscate his identity by utilizing a privacy service”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The trademarks of the Complainant are all built on the name “Armani”: ARMANI, EMPORIO ARMANI or GIORGIO ARMANI. The Domain Name incorporates entirely this name “Armani” and just adds the term “parfume”.
If this term “parfume” is not exactly a generic term as the Complainant says because it is a mix of the English “perfume” and the French “parfum”, it is obvious that it is understood by all the potential consumers as evoking the perfume and so relates to the Complainant’s activity. Such a Domain Name leads evidently consumers to believe wrongly that the Respondent has a link with the Complainant.
Consequently the Domain Name must be considered as confusingly similar to the trademarks, according to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
It is difficult to imagine rights or legitimate interests in such a case where the Respondent adopted a policy of registration through a “privacy service”, used the Domain Name as a pay-per-click website and is finally defaulting. No link can be established between the Complainant and its trademarks and the “shadow registrant”. No right can be recognized to the Respondent
So, considering the use of the name “Armani” by the Respondent intending to divert Internet users (see below), the Panel finds that the previous observations are sufficient to establish that the Respondent has no rights or legitimate interests using the Domain Name, according the Policy, paragraph 4(a)(ii) and the Rules, paragraph 3(b)(ix). C. Registered and Used in Bad Faith
If the Respondent adopted as the Domain Name without rights or legitimate interests a name which is nothing else than the (partial) re-using of well-known trademarks, the only credible reason is to try to exploit the notoriety of those trademarks. As the Complainant says, the choice “could not result from a mere coincidence”.
Several previous UDRP decisions gave the same analysis (for instance Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 which says that “ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). This reason leads by itself to the same conclusion in this case.
Moreover, the website, to which the Domain Name directs, seems containing different links to other websites on which several trademarks of the Complainant’s competitors are displayed, which is clearly all but a bona fide offering.
Last, the choice of a privacy registration in the circumstances of this case is not a sign of good faith.
So the double requirement of registration and use of the Domain Name in bad faith (Policy, paragraph 4(a)(iii); Rules, paragraph 3(b)(ix)) is undoubtedly fulfilled. 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 Domain Name be transferred to the Complainant.
Michel Vivant
Sole Panelist
Date: March 21, 2013
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