The Complainant is Giorgio Armani S.p.A. of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Yitao/ Apex Laboratories Limited of Hong Kong, China. 2. The Domain Name and Registrar
The disputed 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 November 29, 2013. On November 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 December 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 15, 2014. 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, since the Registration Agreement in this case is in English. In addition, the Panel notes that prior of the commencement of the proceeding, the Respondent communicated with the Complainant by email in English, making clear its understanding of the English language. 4. Factual Background
The Complainant is the Swiss branch of an Italian company which owns the trademarks ARMANI, ARMANI JEANS and AJ ARMANI JEANS (the “Trademarks”), registered in many countries worldwide, including the USA and China.
The disputed domain name was registered on August 22, 2013.
On November 13, 2013, the Complainant's counsel sent a cease and desist letter by email to the Respondent, and received a reply on the same date stating: ”[…] it's 1000 EUR for A […]”. When offered on November 15, 2013 “no more than € 300”, the Respondent replied by email on the same date, stating: “Thanks for your offer, but it's too low. One thousand euros is a very reasonable price”. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the Trademarks are famous, as recognized by several UDRP panels.
(ii) The Complainant submits that the disputed domain name reproduces the Trademarks in which the Complainant has rights and is confusingly similar to the Trademarks as the disputed domain name contains the Trademarks in their entirety.
(iii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it has never licensed or otherwise authorized the Respondent to use the Trademarks. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name.
(iv) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is using the disputed domain name in connection with a website offering products similar to those offered by the Complainant.
(v) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert Internet users and consumers, for commercial gain.
(vi) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name creates confusion, gives the wrong impression that the disputed domain name originates from or is associated with the Complainant and damages the goodwill of the Trademarks.
(vii) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the deadline set by the Policy and the Rules.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the assertions made in the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three required criteria for the transfer of the disputed domain name have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of Paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the Trademarks with the disputed domain name , it is evident that the latter contains the Trademarks in their entirety.
Besides, it is well-established that the generic Top-Level Domain (gTLD), such as “.org”, does not typically affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
The Panel finds that the disputed domain name, which incorporates the Trademarks in their entirety, is confusingly similar to the Trademarks.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing. The Panel finds that the Complainant has made such showing in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name resolves to a website offering for sale goods similar to those of the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name and has received no license or authorization from the Complainant.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
As noted above, the Respondent failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name, similar to the Trademarks.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; and Pfizer Inc. v. NA,WIPO Case No. D2005-0072.
As recognized inter alia in Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi,WIPO Case No. D2013-0020 and in GA Modefine S.A., Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090, the Panel considers the Trademarks famous. Thus, it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Complainant’s Trademarks. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
As the Complainant points out, the disputed domain name is being used to divert Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, affiliation, or endorsement of the Respondent’s website and the products offered on the website.
In addition, the Panel notes that many UDRP panels have found bad faith use if a respondent’s good faith use is in no way plausible when considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148).
Some UDRP panels have also held that in certain circumstances, the respondents have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See paragraph 2(b) of the Policy; Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
Finally, evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner files a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also, the legal criteria for showing bad faith specify that an offer for sale can be evidence of bad faith, as decided in CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078.
In this case, the Panel determines from the evidence of the settlement discussions that they represent a bad faith effort to extort by the Respondent.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied. 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.
Louis-Bernard Buchman
Sole Panelist
Date: January 29, 2014
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