The Complainant is Giorgio Armani S.P.A. of Milan, Italy, represented by Legalitax Studio Legale e Tributario, Italy.
The Respondent is Hosting Ukraine LLC of Kiev, Ukraine / Budko Vladislav Olegovich of Dnepr, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Hosting Ukraine LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 July 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian in regard to the language of the proceedings. The Complainant filed an amended Complaint on July 19, 2018 and requested English to be the language of the proceedings. On July 16, 2018, the Respondent requested Russian to be the language of the proceedings.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process on August 14, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 22, 2018. 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 an Italian luxury fashion house founded by a famous fashion designer Giorgio Armani.
The Complainant owns numerous Armani Trademark registrations around the world, such as International registration of the GIORGIO ARMANI trademark No. 437479, registered on April 20, 1978 and duly renewed, covering goods in classes 03, 14, 18, and 24; the European Union registration for the GIORGIO ARMANI mark No. 015743842, registered on January 6, 2017 in international classes 03, 04, 08, 09, 10, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 41, 42, 43, and 44; International registration of the ARMANI trademark No. 502876, registered on May 1, 1986 and duly renewed, covering goods in classes 03, 08, 09, 14, 18, 20, 21, 24, 25, and 34 and the European Union registration for the ARMANI mark No. 000504282, registered on May 30, 1999 in international classes 03, 09, 14, 18 and 25.
The Respondent registered the Domain Name on May 18, 2018. The Domain Name used to resolve to a website offering for sale Emporio Armani watches. The Respondent also used to have a Facebook page under the name "ArmaniE". Currently, the Domain Name does not resolve to a website and the Facebook page was deleted.
On July 16, 2018, the Respondent sent an email to the Center and to the Complainant requesting that Russian be the language of the administrative proceeding. The email also stated in Russian the following: "I suggest that the Complainant and I discuss questions of the domain name transfer. I will be delighted to hear all of the offers and we will try to resolve the situation together". 5. Parties' Contentions A. Complainant
The Complainant contends that it is one of the most famous fashion and lifestyle companies in the world. The Complainant claims that it was founded in 1975 by Giorgio Armani, a man who has become a worldwide style icon. The Complainant alleges that in addition to clothes, it designs and manufactures every kind of accessories, from spectacles to perfumes, as well as furniture, lighting, rugs, elements of décor. The Complainant states that it also offers interior design and hotel services. The Complainant contends that it has worked in 36 countries and developed a large number of brands, such as "Armani", "Georgio Armani", "Emporio Armani", and "Armani Collezioni" etc. ("Armani Trademarks").
The Complainant alleges that its trademarks are well-known and enjoy a great notoriety, which was confirmed by several previous UDRP panels. The Complainant contends that the Domain Name is confusingly similar to its Armani Trademarks because it incorporates an important part of the GIORGIO ARMANI and of the EMPORIO ARMANI trademarks. The Complainant argues that the addition of the descriptive and generic word "europe" to the part of its trademark in the Domain Name does not dissipate the confusing similarity, especially because the Complainant is a European company, which distributes its products and offers its services in Europe. The Complainant claims that the addition of the word "Europe" to the distinctive term "armani" in the Domain Name creates a presumption of an official website of the Complainant aimed at European customers.
The Complainant claims that the Respondent has not been commonly known as "Armani" and that he is not licensed or authorized by the Complainant to use the Armani Trademark in any manner, including the registration of a domain name. The Complainant contends that there is no evidence of the Respondent using the Domain Name in connection with bona fide activities. The Complainant claims that the Respondent is currently passively holding the Domain Name. The Complainant contends that in the past the Respondent used the Domain Name to direct to a website that offered for sale various models of the EMPORIO ARMANI watches. As a result, the Complainant claims that the Respondent used the goodwill and notoriety of the Complainants trademark to attract visitors to its website for financial gain, which is not a fair commercial use of the trademark or a bona fide offering of goods or services.
The Complainant contends that the worldwide fame of the Armani Trademarks leaves no doubts that at the time of the Domain Name registration the Respondent was aware of the Armani Trademarks. The Complainant claims that the Respondent is using the Domain Name in bad faith because in the past the Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Armani Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Complainant contends that the Respondent's current passive holding of the Domain Name constitutes bad faith because it deprives the Complaint of the right to register and use the Domain Name to the Complainant's detriment. The Complainant argues that the Respondent's actions demonstrate bad faith because the Domain name is so obviously connected to the Complainant's products and the Respondent has no intellectual property rights in such products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Substantive issues 6.1. Language of the proceeding
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."
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Respondent submitted his demand for the Russian to remain the language of the administrative proceeding. In response, the Complainant requested that English be the language of the administrative proceeding because of the following: 1) the Domain Name contains the English-language word "europe"; 2) the use of Russian as the language of the proceedings would be unfair to the Complainant and will cause an unwarranted delay because it would force the Complainant to translate the documents into a language, which is very different from Italian and English, the two languages spoken and understood by the Complainant; 3) English is a widespread language and it is difficult to believe that someone, who like the Respondent, engages into online commerce is not familiar with English. The Complainant points to the Respondent's website connected to the Domain Name and to his Facebook page for the support for this proposition.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. "Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names."1
Some of such scenarios are present in this case. Here, the Respondent registered the Domain Name that incorporated the Complainant's ARMANI trademark along with an English word "europe". In addition, the Respondent used to have a Facebook page under the name "ArmaniE", which displayed text in both English and Russian. Therefore, the Panel finds that it is likely that the Respondent is proficient in English and would not be unfairly prejudiced by use of English as the language for this proceeding. Finally, while the Respondent was aware of the administrative proceeding, he chose not to participate in it and not to submit a response. Asking the Complainant to translate the Complaint and supporting documents into Russian, however, will impose undue financial burden on the Complainant and delay resolution of the dispute.
Therefore, based on the circumstances of the case, the Panel grants the Complainant's request that English be the language of this proceeding. 6.2. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns the Armani Trademarks by virtue of its trademark registrations. Pursuant to section 1.2.1 of the WIPO Overview 3.0, "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case."
The Domain Name consists of the Complainant's ARMANI trademark, the geographical term "europe" and the generic Top-Level Domain ("gTLD") ".com". The Panel finds that the Domain Name is confusingly similar to the Complainant's ARMANI trademark, because it incorporates the mark in its entirety. "Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."2 The addition of the gTLD ".com" is disregarded under the confusing similarity test.3
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's ARMANI trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent4 . Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name5 . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.6
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use or register the Complainant's Armani Trademarks, or to register any domain names incorporating the Armani Trademarks. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use complainant's trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138. In absence of authorization, the Respondent has no rights or legitimate interest in the Domain Name as an authorized user of the Complainant's trademarks.
The Respondent also does not have rights or legitimate interests in the Domain Name as an unauthorized reseller. Based on the evidence on file, the Domain Name used to direct to a website offering for resale EMPORIO ARMANI watches purportedly bought from European outlets. Generally, unauthorized resellers might have legitimate interests in a domain name containing a complainant's trademark if their activities comply with the following cumulative requirements:
"(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark."7
Here, it appears that the website connected to the Domain Name was used for sales of only Emporio Armani watches. However, there was no disclosure of the Respondent's relationship with the Complainant on the website. While the website "www." featured the Respondent company's contact details in Poland, display of the contact information does not satisfy the requirement of accurate disclosure of the Respondent's relationship with the Complainant. Consequently, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name as an unauthorized reseller.
Further, the Respondent is not making a fair use of the Domain Name. It is well-established that "respondent's use of a domain name will not be considered "fair" if it falsely suggests affiliation with the trademark owner".8 "Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner."9 Where a domain name consists of a geographic term and a complainant's trademark, such combination is usually considered as suggesting sponsorship or endorsement by the trademark owner.10 Here, the Respondent's use of the Domain Name is not considered "fair" because the Domain Name comprising the Complainant's ARMANI trademark and a geographic indication "europe" created an impression of affiliation with the Complainant.
Finally, the Respondent's July 16, 2018 email where the Respondent offered to discuss with the Complainant transfer of the Domain Name to the Complainant and the fact that the Respondent removed both the website linked to the Domain Name and the Facebook page under the Domain Name show that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent's lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant's case, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith because it knew of the Complainant's well-known trademarks at the time of the Domain Name registration. The Respondent was clearly aware of the Complainant's widely known Armani trademarks because the Respondent used the Domain Name, which is confusingly similar to the Complainant's well-known ARMANI trademark, to direct to a website, which displayed the Complainant's Emporio Armani trademark and offered for sale the Complainant's Emporio Armani watches.
The Panel also finds that the Respondent is using the Domain Name in bad faith. First, the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian,WIPO Case No. D2009-0113. Second, the Respondent tried to capitalize on the goodwill of the Complainant's trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of either the Respondent or its website. Third, although the Domain Name currently does not resolve to any active website, it is well-established that passive holding of a domain name does not prevent finding of bad faith use11 where "any good faith use to which the [D]omain [N]ame may be put"12 is implausible.
Evidence on file also shows that the Respondent provided false contact information for registration of the Domain Name, which is another indication of bad faith13 . Finally, the Respondent's July 16, 2018 email suggests that the Respondent wanted to sell the Domain Name to the Complainant and sent an invitation to negotiate the deal, which is also indication of bad faith.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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.
Olga Zalomiy
Sole Panelist
Date: September 5, 2018
1 Section 4.5.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
2 Section 1.7, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 Id.
6 Id.
7 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903
8 See, section 2.5.1, WIPO Overview 3.0.
9 Id.
10 Id.
11 Section 3.3, WIPO Overview 3.0.
12 Id.
13 See section 3.6, WIPO Overview 3.0.
Full & Egal Universal Law Academy