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 Wang Jihua of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2013. On May 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 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 June 26, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 26, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on August 6, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of several well-known trademarks including ARMANI, AJ ARMANI JEANS and ARMANI JEANS (the “ARMANI Marks”) for different kinds of goods and services in classes such as class 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26 and 35 with registrations in Europe, United States of America, China and many international registrations; inter alia, AJ ARMANI JEANS, the United States trademark registration No. 2742849, registered on July 29, 2003.
(ii) The Disputed Domain Name was registered on April 16, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains entirely the Complainant’s marks ARMANI and ARMANI JEANS. The incorporation of the additional term “it” does not assist to distinguish the Disputed Domain Name from the Complainant’s ARMANI Marks.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s ARMANI Marks. The Respondent has been using the web site to which the Disputed Domain Name resolves to direct Internet users to a parking page in which different sponsored links exist, which does not constitute a bona fide offering of goods or services.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s well-known ARMANI Marks as to the sponsorship, affiliation and endorsement of the Respondent’s web site. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Language of Proceedings
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”.
The language of the Registration Agreement for the Disputed Domain Name is Chinese. The Complainant requested, in its email dated June 26, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Complainant is not familiar with Chinese due to its nationality and the place of its registered office. Second, the language of the administrative proceeding should be English due to the fact that the Respondent has chosen to register the Disputed Domain Name with a “.com” domain name.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The Respondent’s web site at the Disputed Domain Name appears to contain text in the English language (as evidenced by the screen shots provided by the Complainant in Annex F to the Complaint). The Panel is therefore satisfied that the Respondent is familiar with the Complainant’s requested language.
(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given the opportunity to object to the Complainant’s request that English be the language of proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceeding. The Panel finds that the Respondent has been given a fair opportunity to object, and has not done so.
(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of Switzerland, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondent has shown no interest in responding and requiring the Complainant to translate the Complaint into Chinese will cause unnecessary delay to the proceedings.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the proprietor of the ARMANI JEANS trademark.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is generally sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive element to the disputed domain name typically does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the Top-Level Domain (for example, “.com” and “.net”) may be disregarded. (GA Modefine SA v. Yonghui Huang,WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark ARMANI JEANS in its entirety, while adding only a non-distinctive descriptive element of “it” as a suffix to the Disputed Domain Name. The addition of this non-distinctive and descriptive element is insufficient to effectively differentiate the Disputed Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Paragraph 2.6 of WIPO Overview 2.0 summarizes the consensus view of UDRP panels regarding whether parking and landing pages generate rights or legitimate interests in the disputed domain name, whereby: “[…] By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion”.
In the present case, the Complainant has established that it is the owner of various ARMANI Marks. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s ARMANI Marks in the Disputed Domain Name.
The Disputed Domain Name is used for a parking site generating sponsored search results in association with the ARMANI trademark. The Respondent is obviously exploiting the goodwill of the Complainant’s trademark to mislead the consumers to the web site under the Disputed Domain Name for commercial gain.
Furthermore, the Panel notes that the registrant of the Disputed Domain Name is “Wang Jihua”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Name and there is therefore no evidence in the case file to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Name under any conditions of paragraph 4(c) of the Policy.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its ARMANI Marks have been registered in many countries and acquired an international reputation prior to the date the Disputed Domain Name was registered in 2012. The Respondent’s choice to incorporate the identical “armanijeans” element as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith and the subsequent use of the Complainant’s ARMANI trademark in the parking site to which the Disputed Domain Name resolves further shows that the Complainant’s ARMANI JEANS trademark was chosen for the Disputed Domain Name in bad faith. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the Panel notes the fact that the counsel of the Complainant has sent a warning letter (as shown in Annex G to the Complaint) to the Respondent in an attempt to resolve the dispute regarding the Disputed Domain Name, but the Respondent failed to reply. The Panel also notes that the Disputed Domain Name resolves to a parking site with automatic generated sponsored links. One of these links is directly associated with the ARMANI trademark (as shown on the screen shots provided by the Complainant in Annex F to the Complaint). Other links appear to be unrelated to the Complainant. The Respondent obtains commercial revenue by attracting Internet users to click those sponsored links. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: August 15, 2013
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