WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Giorgio Armani S.p.A., Swiss Branch Mendrisio v. Remco Dalhuizen Case No. DNL2009-0069 1. The Parties
The Complainant is Giorgio Armani S.p.A. of Milan, Italy, Swiss Branch Mendrisio, of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Remco Dalhuizen of Son, the Netherlands. 2. The Domain Name
The disputed domain name (the “Domain Name”) is registered with SIDN. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2009 by e-mail and on December 22, 2009 and January 11, 2010 in hard copy. On December 18, 2009, the Center transmitted by email to SIDN a request for registry verification in connection with the Domain Name. On December 21, 2009, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2010. In accordance with the Regulations, article 7.1, the due date for Response was February 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 3, 2010.
After having received the payment of the fees, the Center appointed Willem J.H. Leppink as the panelist in this matter on February 10, 2010. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is the holder of many ARMANI trade marks in many countries worldwide, including the Benelux trade mark AX ARMANI EXCHANGE (No. 513856), registered since 1992.
The Domain Name was registered on April 17, 2009. The Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the ARMANI trade marks are well-known all over the world. Furthermore, the Complainant argues that the Domain Name incorporates entirely Complainant's trade marks ARMANI, GIORGIO ARMANI, A|X ARMANI EXCHANGE and AX ARMANI EXCHANGE. This identity is likely to enhance the confusion and to lead customers to believe that the Domain Name is linked to, affiliated with or connected to the Complainant, suggesting the idea that the Domain Name leads to one of Complainant's official websites and that the registration and use of the Domain Name are authorized by the Complainant. The Complainant refers to GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No.
D2005-0090, where the disputed domain name was . In this case the panel stated that “the use of said domain name gives the impression that the site is one of [c]omplainants' official sites and that its registration and use is authorized by the [c]omplainants” and the panel decided that the transfer of the domain name was to be ordered.
Furthermore, the Complainant contends that the lack of rights or legitimate interests of the Respondent in respect of the Domain Name is indicated by a number of circumstances: (i) the Respondent has not been commonly known (as an individual, business or other organization) by the Domain Name, (ii) the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the ARMANI trade marks in a domain name or in any other manner, (iii) the Respondent has not acquired any rights whatsoever in the Domain Name or any name corresponding to the Domain Name, and (iv) there is no website, by means of which the Respondent offers or is prepared to offer products and/or services in good faith, that corresponds to the Domain Name.
Lastly, the Complainant states that the registration of the Domain Name in bad faith by the Respondent is proven by the following circumstances. The worldwide fame of the ARMANI trade marks leaves no question as to the Respondent's awareness of those trade marks at the time of the registration of the Domain Name. In light of the aforesaid fame of the trade marks of the Complainant, the choice of the Respondent of the Domain Name could not result from a mere coincidence. Furthermore, the Complainant argues that certainly by registering the Domain Name the Respondent attempted to sell, rent or otherwise transfer the Domain Name registration to the Complainant for valuable consideration obviously in excess of the out-of-pocket costs directly related to the Domain Name or in any case to obtain some personal advantage from the value of these famous trade marks. Moreover, the Complainant had warned the Respondent on the illegal nature of his registration of the Domain Name, but the Respondent has never replied.
The Complainant states that the aforesaid circumstances together with the lack of rights or legitimate interests of the Respondent in the Domain Name and the absence of an active website to which the Domain Name resolves, lead to the conclusion that the Respondent registered and is using the Domain Name in bad faith. In fact, the registration of the Domain Name consisting of the name and or trade marks of the Complainant reveals the intention of the Respondent to exploit the notoriety, the importance and the value of said name and to take advantage from the unlawful use of the trade marks of the Complainant provided that at the time of the registration of the Domain Name the Respondent was certainly aware of the fame and worldwide relevance of the trade marks of the Complainant. Complainant mentions also that the fact that the Domain Name does not resolve to an active website has been considered as an indication of use in bad faith in several previous WIPO decisions. (For example GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, supra: “as several decisions of UDRP Panels have ruled, the [p]anel considers that the lack of any link from the domain name to an “active” website together with other indications of bad faith, as present in this case, made it possible to conclude that [r]espondent is using the disputed domain name in bad faith.”). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of Proceedings
The Complainant is neither residing nor registered in the Netherlands, for which reasons English is the language of the proceeding pursuant to article 17.2 of the Regulations. Grounds of the Complaint
Article 10.3 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the panelist considers it to be without basis in law or fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
a) that the Domain Name is identical or confusingly similar to:
I. a trade mark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie') of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b) that the Respondent has no rights to or legitimate interests in the Domain Name; and
c) that the Domain Name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds a Benelux trade mark AX ARMANI EXCHANGE. Therefore, the Panelist finds that the Complainant has rights in the AX ARMANI EXCHANGE trade mark protected under Dutch law.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the AX ARMANI EXCHANGE trade mark in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. Therefore it should be assessed whether the Domain Name is confusingly similar to the AX ARMANI EXCHANGE trade mark. Although the element AX is not without relevance, it is not the most dominant part of the trade mark. As the Domain Name includes both the element ARMANI and the element EXCHANGE, the Panelist finds that the Domain Name is confusingly similar to Complainant's trade mark.
The Panelist finds that the Complainant has complied with article 2.1 sub a of the Regulations. B. Rights or Legitimate Interests
According to article 2.1 sub b of the Regulations, the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, and the Respondent fails to rebut that showing by for example providing evidence of one of the three circumstances mentioned in article 3.1 of the Regulations (e.g. Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The Complainant has contended that it has not licensed or otherwise authorized the Respondent to use its AX ARMANI EXCHANGE trade mark, the Respondent did not dispute the Complainant's claim to that effect and the Respondent has failed to reply to the contentions of the Complainant. The Panelist could not establish any indications that the Respondent, (article 3.1 sub a) before having any notice of the dispute, made demonstrable preparations to use the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods and services, (article 3.1 sub b) is commonly known by the Domain Name, or (article 3.1 sub c) is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish or otherwise damage the relevant AX ARMANI EXCHANGE trade mark.
For these reasons, the Panelist finds that the Complainant has satisfied article 2.1 sub b of the Regulations. C. Registered or Used in Bad Faith
Article 2.1 sub c of the Regulations requires the Complainant to demonstrate that the Domain Name has been registered or is being used in bad faith.
The Complainant has stated that the ARMANI trademarks, including AX ARMANI EXCHANGE, are famous and well-known trademarks. Furthermore, the reputation of the ARMANI trademarks, including AX ARMANI EXCHANGE has been confirmed in various UDRP decisions (e.g. GA Modefine S.A., Giorgio Armani S.p.A. v. Germano Armani, WIPO Case No. D2008-1793, GA MODEFINE S.A., Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834). The Panelist finds that the Complainant has established that the ARMANI trade marks, including AX ARMANI EXCHANGE, have acquired a high reputation and should be considered as well-known trade marks. Consequently, the Panelist agrees with the Complainant that there is no doubt that the Respondent was aware of the well-known trade mark of the Complainant when registering the Domain Name.
As mentioned above, the Domain Name does not resolve to any active website. This situation qualifies as a situation of passive holding by the Respondent. This passive holding combined with the Complainant having a well-known trade mark and the Respondent not submitting a Response leads, in the view of this Panelist, to the conclusion that the Domain Name was used and registered in bad faith. The Complainant has therefore satisfied article 2.1 sub c of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainant.
Willem J.H. Leppink
Sole Panelist
Dated: February 23, 2010
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