Complainant is Giorgio Armani S.p.A. of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
Respondent is Ye Li of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through 1API Gmbh. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2013. On June 25, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 26, 2013, SIDN transmitted by email to the Center its verification response confirming that 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 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2013. In accordance with the Regulations, article 7.1, the due date for Response was July 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2013.
The Center appointed Paul L. Reeskamp as the panelist in this matter on August 1, 2013. The Panel finds that it was properly constituted. 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
Complainant, Giorgio Armani S.p.A., is a market-leader in the fashion field.
Complainant is, inter alia, owner of the following trademark registrations:
1. international trademark registration for EMPORIO ARMANI (no. 536 698), registered on May 22, 1989, for classes 3, 9, 14, 18 and 25;
2. international trademark registration for EMPORIO ARMANI (no. 782 614), registered on June 6, 2002, for classes 3, 9, 14, 18, 24, 25, 35 and 43;
3. international trademark registration for EMPORIO ARMANI (no. 811 054), registered on September 25, 2003, for classes 16 and 41;
4. international trademark registration for EMPORIO ARMANI (no. 875 886), registered on January 24, 2006, for classes 12 and 26;
5. international trademark registration for ARMANI (no. 502 876), registered on May 1, 1986, for classes 3, 8, 9, 14, 18, 20, 21, 24, 25 and 34;
6. international trademark registration for ARMANI (no. 869 678), registered on June 30, 2005, for class 43;
7. international trademark registration for ARMANI (no. 833 734), registered on July 19, 2004, for classes 3, 8, 11, 12, 14, 16, 18, 20, 21, 24, 25, 27, 32, 36, 39, 41 and 44;
8. Community trademark registration for EMPORIO ARMANI (no. 000505594), registered on March 8, 1999, for classes 3, 9, 14, 18 and 25;
9. Community trademark registration for ARMANI (no. 000504282), registered on March 30, 1999, for classes 3, 9, 14, 18 and 25; and
10. Benelux trademark registration for EMPORIO ARMANI (no. 0432116), registered on April 1, 1988, for classes 3, 9, 14, 18 and 25;
hereinafter referred to as the “Trademarks”.
Respondent is Ye Li, domiciled in Shanghai, China. Respondent registered the Domain Name on January 4, 2013. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on its Trademarks. The Domain Name is confusingly similar to the Trademarks
Complainant notes that the Domain Name incorporates each Trademark in its entirety. The addition of the generic term “watches” does not prevent the risk of confusion between the Domain Name and the Trademarks. The confusion is enhanced by the fact that the term “watches” corresponds to goods for which the Trademarks are, inter alia, registered.
The Domain Name suggests that Complainant and the Domain Name are connected and that the registration and use of the Domain Name is authorized by Complainant. This is enhanced by the infringing content on the website. Respondent has no rights to or legitimate interests in the Domain Name
Respondent has no rights or legitimate interests in the Domain Name. Respondent has not been authorized or licensed to use the Trademarks nor is it known in relation to the Domain Name.
Complainant furthermore alleges that Respondent is not making any fair or noncommercial use of the Domain Name because the Domain Name resolves to a website with a so-called PPC (Pay-Per-Click) display of sponsored links. This type of website does not constitute a bona fide offering of goods or services under article 3.1(a) of the Regulations. Respondent has registered or is using the Domain Name in bad faith
Complainant contends that the worldwide fame of the Trademarks leaves no question of Respondent’s awareness of the Trademarks at the time of registration of the Domain Name. The Domain Name wholly incorporates the Trademarks. Therefore, the choice of the Domain Name cannot result from mere coincidence.
Complainant alleges that the Domain Name has been registered by Respondent with the aim to take advantage of the confusion between the Domain Name and Complainant’s rights to the Trademarks.
Furthermore, Complainant refers to the fact that Respondent has offered the Domain Name for sale to Complainant for an amount in excess of the costs of registration.
The website under the Domain Name contains sponsored links. Internet users are attracted to the website under the Domain Name through the likelihood of confusion of the sponsorship, affiliation and endorsement of the website. Respondent is therefore using the Domain Name to exploit the goodwill of the Trademarks for its own purposes.
The abovementioned circumstances, together with the lack of rights or legitimate interests, lead to the conclusion that Respondent registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
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 panel considers it to be without basis in law or fact.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
(a) The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, or other name by means of article 2.1 sub a (II) of the Regulations;
(b) The respondent has no rights to or legitimate interest in the disputed domain name;
(c) The disputed domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has based its Complaint on the Trademarks and has submitted copies of the trademark registrations from which it follows that it is the holder of the Trademarks. The Panel is satisfied that the invoked international, Community and Benelux trademarks qualify as trademarks protected under Dutch law.
The addition of the generic term “watches” does not prevent the risk of confusion between the Domain Name and the Trademarks. It is furthermore established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other. In this regard, the Panel considers the Domain Name confusingly similar to the invoked Trademarks.
Therefore, the first condition of article 2.1 of the Regulations is met. B. Rights or Legitimate Interests
Pursuant to article 2.1(b) of the Regulations Complainant must demonstrate that Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or legitimate interests, and Respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
As follows from the Complaint, Complainant indicates that Respondent does not have any relevant trademark or trade name rights regarding the term “Armani” or “Emporio Armani”. Respondent is not affiliated to Complainant and has received no consent to use the Trademarks. Respondent uses the Domain Name to offer sponsored links. The Panel furthermore established that the Domain Name is being offered for sale.
Respondent did not dispute this, and the Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any possible other way has a right to or legitimate interest in the Domain Name. The Panel is therefore satisfied that Respondent has no rights to, or legitimate interests in, the Domain Name. C. Registered or Used in Bad Faith
Considering that Complainant’s Community trademarks pre-date the date of the registration of the Domain Name, the apparent status of ARMANI and EMPORIO ARMANI as a trademark and the specificity of the Domain Name registration itself, the Panel concludes that Respondent was aware or at least should have been aware of Complainant and its Trademarks. Taking into account that the website under the Domain Name offers a PPC display of sponsored links, the Domain Name can also be considered as being used for commercial gain, by attracting Internet users to a website or other online location of Respondent through the likelihood of confusion which may arise with Complainant’s Trademarks. Furthermore, Respondent has offered the Domain Name for sale to Complainant for an amount in excess of the costs of registration.
Given the above, the Panel holds that the Domain Name has been registered and is being used in bad faith. The third criterium is therefore also met. 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 Complainant.
Paul L. Reeskamp
Panelist
Date: August 14, 2013
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