The Complainant is Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Hessamaldin Varposjty of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2014. On February 26, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 2, 2014, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. A hard copy of the Complaint was received by the Center on March 13, 2014.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir 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 March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 4, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 14, 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. 4. Factual Background
The Complainant is the owner, amongst others, of the following trademark registrations:
- International Trademark registration No. 437 479 for GIORGIO ARMANI registered on April 20, 1978 and successively renewed, valid until April 20, 2018, to cover goods in classes 3, 14, 18 and 24 (Annex C to the Complaint);
- International Trademark registration No. 502 877 for GIORGIO ARMANI registered on May 1, 1986 and successively renewed, valid until May 1, 2016, to cover goods in classes 8, 9, 20, 21 and 34 (Annex C to the Complaint);
- International Trademark registration No. 522 094 for GIORGIO ARMANI registered on March 17, 1988 and successively renewed, valid until March 17, 2018, to cover goods in classes 3, 14, 18, 24 and 25 (Annex C to the Complaint), and
- International Trademark registration No. 798 515 for GIORGIO ARMANI registered on January 30, 2003, valid until January 30, 2023, to cover goods and services in classes 16, 35, 41, 42, 43, 44 and 45 (Annex C to the Complaint).
The disputed domain name was registered on April 7, 2013. Currently no active website resolves from the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the owner of the well-known trademarks ARMANI and GIORGIO ARMANI which derive from the personal name of the famous fashion designer Giorgio Armani, known all over the world.
The Complainant further asserts that the disputed domain names incorporates entirely its trademark, what could suggest to Internet users the page relating to the disputed domain name would be an official or authorized page of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent, whose name is Hessamaldin Varposjty and whose organization is called Mahagostar, has not been commonly known (as an individual, business or other organization) by the disputed 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 Complainant's trademark in the disputed domain name or in any other manner;
(iii) the Respondent has not acquired any legitimate rights whatsoever in the disputed domain name;
(iv) the Respondent is making no use of the disputed domain name; and
(v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant asserts that the bad faith of the Respondent can also be proved by the fact that it sent an official warning letter to the Respondent, informing of its rights. No reply from the Respondent was received (Annex F to the Complaint). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known GIORGIO ARMANI trademark, duly registered in several countries (Annex C to the Complaint).
The Panel finds that the disputed domain name reproduces the Complainant's trademark in its entirety. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the GIORGIO ARMANI trademark in the disputed domain name, nor is there any sort of affiliation, sponsorship or business relationship between the Complainant and the Respondent.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
Another element to be taken into account is the fact that no active use of the disputed domain name appears to be taking place what makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the famous name and trademark of a fashion designer.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered or Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration or use can be found in view of:
i. circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
ii. the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of the Complainant; or
iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
Past UDRP panels have already dealt with the question of whether the "passive holding" of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that "(…) panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. (…)".
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainant's trademark is well known;
(ii) the disputed domain name corresponds not only to a famous trademark but also to the personal name of a well-known fashion designer;
(iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
(iv) the Respondent did not reply to the Complainant's warning letter (Annex F to the Complaint);
(v) the email addresses and fax numbers provided by the Respondent appear to be false ones, the Center not having been able to contact the Respondent through such, and
(vi) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: April 28, 2014
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