The Complainants are Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio, Giorgio Armani S.p.A. of Milan, Italy, represented by Studio Rapisardi S.A., Switzerland.
The Respondents are InternetCont Ltd., Manuela Miracula of Mahe, Seychelles. 2. The Domain Name and Registrar
The disputed domain names and are registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2014. On July 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
On July 18, 2014, the Center transmitted an email to the Complainant regarding the Respondent's identity and consolidation. The Center informed to the Complainant that the registrants of the disputed domain names were two different entities (one being "InternetCont Ltd" and the other "Manuela Miracul"). Therefore the Center requested that the Complainant: a) filed a separate Complaint for each of the disputed domain names; or b) provided a brief amendment to the Complaint adding the names of both registrants. The Center indicated that for the consolidation to take place, the Complainant needed to provide at least some arguments and supporting material that indicated a connection or relationship between the disputed domain name holders.
On July 28, 2014, the Complainant submitted its consolidation request by email to the Center. The Complainant stated that the WhoIs database showed that the Registrants of the disputed domain names had the same registrant organization, the same address and the same telephone number.
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 Respondents of the Complaint, and the proceedings commenced on July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 20, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 29, 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.
Considering that the Respondents share the same address, telephone number and the same registrant organization, this Panel determines that both Respondents are related. Therefore the Panel will consolidate the Complaint on the disputed domain names and . 4. Factual Background
The Complainants are part of a fashion group and own a portfolio of several brands, among which are the following: Registration No. Trademark Country/Region Registration Date
437 479
GIORGIO ARMANI
Algeria, Armenia, Austria, Benelux, Belarus, Bosnia, Croatia, Egypt, Spain, Russia, France, Hungary, Kazakhstan, Liechtenstein, Morocco, Moldavia, Germany, Monaco, Montenegro, Portugal, South Corea, Czech Republic, Rumania, Serbia, Slovaquia, Slovenia, Switzerland, Ukraine.
April 20,1978
502 877
GIORGIO ARMANI
Algeria, Armenia, Austria, Benelux, Belarus, Bosnia, Croatia, Cuba, Egypt, Spain, Russia, France, Hungary, Kazakhstan, Liechtenstein, Morocco, Moldavia, Germany, Monaco, Montenegro, Portugal, South Corea, Czech Republic, Rumania, Serbia, Slovaquia, Slovenia, Switzerland, Ukraine, Kenya, Kirghizistan, Lesotho, Liberia, Mongolia, Usbekistan, Poland, Sierra Leone, Sudan, Swaziland, Vietnam
May 1, 1986
1 074 648
ARMANI HOTELS & RESORTS (stylized)
Algeria, Armenia, Austria, Benelux, Belarus, Bosnia, Croatia, Cuba, Egypt, Spain, Russia, France, Hungary, Kazakhstan, Liechtenstein, Morocco, Moldavia, Germany, Monaco, Montenegro, Portugal, South Corea, Czech Republic, Rumania, Serbia, Slovaquia, Slovenia, Switzerland, Ukraine, Kenya, Kirghizistan, Lesotho, Liberia, Mongolia, Usbekistan, Poland, Sierra Leone, Sudan, Swaziland, Vietnam, Mozambique, Namibia, Syria, Arab Republic.
March 16, 2011
870 687
ARMANI HOTELS & RESORTS (stylized)
Algeria, Armenia, Austria, Benelux, Belarus, Bosnia, Croatia, Cuba, Egypt, Spain, Russia, France, Hungary, Kazakhstan, Liechtenstein, Morocco, Moldavia, Germany, Monaco, Montenegro, Portugal, South Corea, Czech Republic, Rumania, Serbia, Slovaquia, Slovenia, Switzerland, Ukraine, Kenya, Kirghizistan, Lesotho, Liberia, Mongolia, Usbekistan, Poland, Sierra Leone, Sudan, Swaziland, Vietnam, Mozambique, Namibia, Syria, Arab Republic, China, Iran,
June 5, 2005
1203547
ARMANI HOTELS
Italy
March 3, 2006
1203546
ARMANI HOTEL
Italy
March 3, 2006
The disputed domain name was registered on November 13, 2013.
The disputed domain name was registered on June 11, 2011. 5. Parties' Contentions A. Complainants
The Complainants argue the following: (i) Confusing similarity
That previous UDRP panel decisions have determined the notoriety of the Complainants' ARMANI trademarks, and have recognized the Complainants' rights over them.
That both of the disputed domain names incorporate in their entirety the Complainants' ARMANI and ARMANI HOTEL trademarks, and that the disputed domain names are very similar to the Complainants' ARMANI HOTELS trademark.
That the idea suggested by the disputed domain names is that such domain names will lead to the Complainants' official sites and/or that the registration and use of these domain names was (and is) authorized by the Complainants.
That the disputed domain names incorporate the trademark ARMANI and the generic word "hotel", being that said generic word is related to products and services for which the Complainants' trademarks are registered and used.
That in the case of , the confusion is enhanced by the fact that the disputed domain name resolves to a web site containing an image of the Armani Hotel Milano.
That since the disputed domain names comprise the Complainants' trademarks in their entirety, confusing similarity has been proven among said trademarks and the disputed domain names. (ii) Rights or legitimate interests
That the Respondents have not been commonly known as or .
That the Respondents have no connection to or affiliation with the Complainants and have not received any license or consent, express or implied, to use the ARMANI trademarks in any manner.
That the Respondents have not acquired any legitimate rights in the disputed domain names or any corresponding domain names.
That there are no links or evidence that would suggest that the Respondents have been using the term "armanihotel" in a manner that would give said Respondents any legitimate right to said term.
That the mere registration of the disputed domain names does not (in itself) give the Respondents rights or legitimate interests in the disputed domain names.
That the Respondents were using the Complainants' trademarks on the websites to which the disputed domain names have resolved, in order to attract the consuming public to said web sites, which is an unauthorized use of the ARMANI trademarks. That the Respondents are not an official Armani outsourcing factory or retailer, which is why they have no rights over the disputed domain names.
That it was the fame of the Complainants' trademarks what motivated the Respondents to register the disputed domain names. (iii) Bad faith registration and bad faith use
That the worldwide fame of the ARMANI trademarks leaves no question of the Respondents' awareness thereof, at the time of registration of the disputed domain names.
That the choice of the disputed domain names by the Respondents could not result from a mere coincidence.
That the Respondents could not have registered the disputed domain names without knowing that, by doing so, they were infringing on the Complainants' trademarks.
That the Respondents were officially informed of Complainants' rights after having received cease and desist letters requesting the transfer of the disputed domain names. B. Respondent
The Respondents did not reply to the Complainants' contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
As the Respondent has failed to submit a Response to the Complainants' contentions, the Panel may choose to accept as true all of the Complainants' reasonable allegations (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
Previous UDRP panels have found that the trademark ARMANI is well known (see, among others, GA MODEFINE SA., Giorgio Armani S.P.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834; GA MODEFINE SA., Giorigio Armani S.P.A. v. kim Hongtae, WIPO Case No. D2007-0851; Giorgio Armani S.P.A. Milan Swiss Branch Mendrisio v. emporio Armani watches, WIPO Case No. D2012-0928; GA MODEFINE SA. v. Watchstore/Pau Ouzounian, WIPO Case No. D2006-0613; GA MODEFINE SA. v. Nirooshan Jeevarajah, WIPO Case No. D2006-0788; Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Brian Mullen, WIPO Case No. D2011-0529; Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Mage Enterprises Inc. WIPO Case No. D2011-1172; GA MODEFINE SA. v. AES OPTICS, WIPO Case No. D2000-0306). This Panel agrees.
The Complainants are the owner of several trademark registrations for ARMANI and for ARMANI HOTELS. This trademark is well known due to its global presence and consumer recognition.
The disputed domain names and are confusingly similar to the Complainants' trademark ARMANI, and identical to the trademark ARMANI HOTEL because they wholly incorporate both of Complainants' trademarks.
The addition of the terms "London" and "Milano" at the end of the disputed domain names do not eliminate or diminish the confusing similarity between the disputed domain names and the Complainants' trademarks. In this case the dominance of the mark ARMANI is clear.
The geographic terms "Milano"" and "London" are more likely to increase confusion, rather than decrease it. The addition of said geographic term additions to the trademark ARMANI HOTEL, which makes reference to the hotel services provided by the Complainants, will make that Internet users who come across the disputed domain names, may believe that the disputed domain names are related with the Complainants and its marks.
The addition of the generic Top-Level Domain (gTLD) ".com" is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the gTLD ".com", because it has no legal significance. (See Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541). The deletion of the space between the terms ARMANI and HOTEL in the disputed domain names is also immaterial.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainants' trademark. The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents have no affiliation with the Complainants, and they have not been granted with any license or authorization to use the ARMANI, and/or ARMANI HOTEL trademarks in the disputed domain names.
Since the names of the Respondents are InternetCont Ltd. and Manuela Miracul, it is reasonable to conclude that the Respondents have not been commonly known by the disputed domain names and/or .
The evidence provided by the Complainants suggests that the conduct displayed by the Respondents in relation to the disputed domain names generates the impression that the disputed domain names are linked to official web sites of, or sites authorized by the Complainants. According to the evidence on the record, each of the disputed domain names resolved to a web site containing the following phrases: a) "Armani Hotel Milan E-mail […]@" (inside the site to which the disputed domain name resolves); and b) "Armani Hotel London E-mail […]@" (inside the site to which the disputed domain name resolves) providing the users with contact info that could misdirect consumers by making them believe that they are contacting an official employee or point of contact of the Complainants. This leads the Panel to believe that the Respondents are using the disputed domain names in order to divert consumers for commercial gain, which cannot be characterized as a legitimate use (see T v. Daniel Deamone,WIPO Case No. D2001-1066)
The evidence contained in the file does not show any trace or existence of disclaimers posted by the Respondents, clarifying that the Respondent and their websites are not affiliated, sponsored, licensed and/or owned by the Complainants. On the contrary, said evidence shows that the disputed domain name has resolved to a site that actually reproduces an image of the Armani Hotel Milano; the disputed domain name has resolved to a site with an image of a tea set, which could be conceptually misleading as to the relationship between the disputed domain name and the ARMANI HOTEL LONDON.
The Complainants assert that it has not authorized the Respondents to register the disputed domain names, which in addition to the existence of the Complainants' trademarks, shows the absence of good faith in the Respondents' conduct (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431).
Respondents are (and were) not entitled to register a domain name incorporating the company name and trademarks of the Complainants, inducing confusion among the Internet users and consumers (see Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondents have any rights or legitimate interests in respect of the disputed domain names. Mere registration of the domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
Therefore, the Respondents have no rights to, or legitimate interests in the disputed domain names. The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.
The conduct of the Respondents constitutes a risk of deception and confusion among consumers. The Respondents knew or should have known about the existence of the trademarks ARMANI and ARMANI HOTEL, and thus they knew or should have known that by registering the disputed domain names, they would create confusion among Internet users searching for the Complainants' websites and hotels.
Since the Respondents have linked the disputed domain names and the sites to which they resolve to specific e-mail addresses apparently related to said Respondents ([…]@ and […]@), the Panel finds that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to said e-mail addresses and websites, by creating a likelihood of confusion with the Complainants' famous trademarks (see, e.g. , Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
In analogous cases, previous panels have stated that, when a complainant's trademarks are widely known (such as the ARMANI trademark) and when there is absence of evidence or even absence of an assertion by the respondent to the contrary, knowledge of the complainant's rights in the trademark can be imputed to the respondent at the time of the registration of the domain name. In this regard, it has been found that when knowledge of the trademark associated to the disputed domain name (and the sites to which they resolve) is combined with the fact that the Respondents have no rights or legitimate interests in the disputed domain names, it can be concluded that the disputed domain names were registered and are being used by the Respondents in bad faith (see Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437).
The fact that the web sites to which the disputed domain names resolved give the impression of being "official websites" or at least websites that are endorsed by, or affiliated with the Complainants, and since there is no disclaimer or other information to the contrary (i.e. information that could explain that the Respondents are not associated to the Complainants), shows that the Respondents (by registering and using the disputed domain names ) have created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain names in dispute, with the purpose of attracting Internet users to their web sites and e-mail addresses on those websites for commercial gain (seeProduits Berger v. Romana Go,WIPO Case No. DPH2005-0001).
The third element of the Policy has been met. 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 Complainants.
Kiyoshi Tsuru
Sole Panelist
Date: September 14, 2014
Full & Egal Universal Law Academy