WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GA Modefine S.A. v. Sparco P/L

Case No. D 2000-0419

 

1. The Parties

The Complainant is GA Modefine SA, a Swiss Corporation having registered offices in Avenue de France 90, 1004 Lausanne, represented by Ms. Mariacristina Rapisardi;

The Respondent is Sparco P/L, an Australian entity whose address is 20 Nuwarra Rd., Holsworthy, Sidney;

 

2. The Domain Name and Registrar

The domain name at issue is "ARMANIEXCHANGE.NET" and the corresponding registrar with which the domain name is registered is Network Solutions, Inc. (hereinafter "Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 (USA).

 

3. Procedural History

The complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center") on May 11, 2000. The WIPO Center sent an Acknowledgment of Receipt on May 18, 2000.

On May 18, 2000, WIPO Center requested the Registrar, Network Solutions, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Network Solutions by the Complainant; (2) to confirm that the domain name at issue was registered with Network Solutions; (3) to confirm that the person identified as the respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name; and (6) to indicate the current status of the domain name.

On May 24, 2000, Network Solution replied that: (1) Network Solutions was not in receipt of the Complaint sent to them by the Complainant; (2) Network Solutions was the Registrar of the domain name registration; (3) Sparco P/L was the current registrant of the ARMANIEXCHANGE.NET domain name registration. (4) Registrant: Sparco P/L (ARMANIEXCHANGE3-DOM.NET). 20 Nuwarra Rd., Holsworthy, Sidney, NS 21700, Australia, Administrative Contact, Billling Contact Lucas Geoff (GL4685) sparco@hutchcity.com, Sparco P/L, 20 Nuwarra Rd., Holsworthy, Sidney, NSW 21700, Australia, 61294750166, (FAX) + 61294750166; (5) Network Solutionsí 4.0. Service Agreement was in effect; (6) the domain name registration ARMANIEXCHANGE.NET was in "Active" status.

The policy in effect provides that: "8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site: www.networksolutions.com/legal/dispute-policy.html. Please take the time to familiarize yourself with that policy."

In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules").

The only deficiency appears to be the lack of acknowledgement by the Registrar of a copy of the Complaint. As already stated in my previous decision D2000-0493 of July 7, 2000, Pomellato S.p.A v. Richard Tonetti (to which I remand for reason of brevity) such deficiency does not seem capable per se of invalidating the Complaint, being a minor formality (the WIPO itself calls it "a courtesy copy").

With respect to all other requirements, the Panel finds that the payment was properly made and agrees with the WIPO Centerís assessment concerning the Complaintís compliance with the formal requirements: the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules, on June 13, 2000, but since a response was not filed, on July 24, 2000 the WIPO Center communicated to the Respondent a Notification of Default. On August 2, 2000, the Parties were informed that in accordance with Paragraph 6 (f) of the Policy an Administrative Panel consisting of a single Member had been appointed. The sole Panelist had submitted on August 1, 2000 a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panelís decision was set for August 15, 2000.

In light of the foregoing, the Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

Finally and in accordance to Paragraph 11 of the Policy, since the Parties to the present administrative proceeding have not agreed otherwise, and since the registration agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.

 

4. Factual Background

The Complainant, alleges to own several world wide known trademarks such as GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, ARMANI EXCHANGE. Said trademarks are used for different kinds of goods, such as clothes, glasses, parfumes in many classes as class 3, 8, 9, 14, 18, 20, 21, 24, 25 34, with registration in Europe, United States of America, Australia and many international registrations at the OMPI (WIPO) and other registrations in many countries.

The Complainant has supplied evidence that the trademarks ARMANI and ARMANI EXCHANGE are registered in several countries, as follows:

(1) "ARMANI", International Registration n. 502876 of May 1, 1986, in the Complainant's name in International classes 3, 8, 9, 14, 18, 20, 21, 24, 25, 34, extended to Algeria, Austria, Benelux, Bulgaria, Egypt, Spain, France, Hungary, Liechtenstein, Morocco, Monaco, Mongolia, Portugal, Popular Republic Democratic of Korea; Rumania, Sudan, Czechoslovakia, Tunisia, Soviet Union, Vietnam, Yugoslavia. Subsequent extensions to Albania, Germany, Bosnia Herzegovina, Croatia, Cuba, Macedonia, Liberia, Slovenia.

(2) "AX ARMANI EXCHANGE ", International Registration n. 580752 of January 6, 1992, in the Complainant's name in International classes 9, 14, 18, 25, extended to Germany, Austria, Benelux, China, Cuba, Spain, France, Liechtenstein, Monaco, Poland, Portugal, Popular Republic Democratic of Korea; Russian federation;

(3) "AX ARMANI EXCHANGE " Italian Registration n. 625443 of June 17, 1994 upon filing of July 26, 1991, in the name of Giorgio Armani S.p.A., in International Classes 9, 14, 18 and 25;

(4) "ARMANI" Italian Registration n. 419829 of April 14, 1986 upon filing of November 30, 1983, in the name of Giorgio Armani S.p.A., in International Classes 9, 14, 18, 24 and 25;

(5) "AX ARMANI EXCHANGE " US Registration n. 1756 717 registered on March 9, 1993, in the Complainant's name in International Classes 14, 18 and 25;

(6) "AX ARMANI EXCHANGE " US Registration n. 1797334 registered on October 5, 1993, in the Complainant's name in International Classes 42.

The Complainantís allegations are supported by copies of the trademark registrations and were verified by the Panel. The Respondent did not contest them.

 

5. Partiesí Contentions

A. Complainant

According to the Complaint, since "Sparco P/L certainly knew at the moment of the registration of the Domain Name in issue the importance and the notoriety of all the ARMANI trademarks, the company certainly registered the Domain Name in bad faith to the purpose of taking advantage from an unlawful use of the Modefine world famous trademarks".

B. Respondent

The Respondent did not submit any response.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

1) On the first element, the Complainant has enclosed in support of his claim the trademark registrations listed above.

The Panel finds that ARMANIEXCHANGE.NET is confusingly similar with the Complainantís trademarks ARMANI and AX ARMANI EXCHANGE.

Although neither trademark is absolutely identical with the domain name at issue, nonetheless the domain name entirely includes the former (ARMANI) and save for the AX part is identical to latter. There is little doubt in the Panel's mind that a domain name such as ARMANIECHANGE is fully capable of raising a likelihood of confusion with either trademark AX ARMANIEXCHANGE or ARMAI tout court.

As already noted, the addition of the generic top-level domain (gTLD) "NET after the name ARMANIEXCHANGE is not relevant, since use of a gTLD is required, necessary and functional to indicate use of a name in Internet and for the average Internet user it would not confer any further distinctiveness to any name.

Thus, the Panel is satisfied that the first condition has been met.

2) The Panel finds that the Complainant did not meet its burden of proof regarding the circumstance that Respondent has neither rights nor legitimate interests in respect of the domain name.

According to the Complaint, since "Sparco P/L certainly knew at the moment of the registration of the Domain Name in issue the importance and the notoriety of all the ARMANI trademarks, the company certainly registered the Domain Name in bad faith to the purpose of taking advantage from an unlawful use of the Modefine world famous trademarks".

The Panel finds that in the absence of any supporting evidence it is not sufficient to simply state that the Respondent "certainly knew" that Complainant's trademarks enjoy "notoriety" and thus Respondent "certainly registered" the Domain Name in bad faith, in order to prove that the Respondent has no rights nor legitimate interests in respect of the domain name.

It is true that the Respondent failed to reply at the Complaint, and such failure has been used by this Panel, in accordance with the powers conferred to the Panel by Rule 14 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") to draw certain inferences.

However, the Panel needs not to distinguish the present case from the previous case D2000-0493 ("D493") where indeed it was already stated that "the Panel finds that simply stating the reasons is not normally sufficient to meet the Complainantís burden of proof" (see at ß6.2).

In the present case the Panel finds no support whatsoever in the Complaint for the Complainant's allegations that the Respondent did not have rights or legitimate interests in respect of the domain name but the unsubstantiated statement that "Respondent certainly knew".

Furthermore the Panel cannot assume that Complainant's trademarks are indeed renown solely upon the Complainantís word since it is necessary that the Complainant proffer evidence in such a sense (see Case D 2000-0532, Unione Calcio Sampdoria SpA v. Titan Hancocks) and therefore the Panel cannot base its finding on such a self-serving statement, even because the Complainant failed to offer any evidence that its trademarks are indeed registered in Australia, the place were the Respondent is.

On the contrary, in case D493 the Complaint had indicated facts and circumstances (for instance that "the Respondent has never been known by the domain name and since registration did not make use of the domain name" and evidence of renown such as a story on CNN), which could be easily verified and/or negated. As a matter of fact the Panel found that "facts and circumstances regarding the Respondentís reasons and justifications for the domain name registration are usually known and easily available to the Respondent itself" and thus the Respondent's failure to reply deprived the Panel of the possibility to evaluate evidence and circumstances in a way different from that expressed by the Complainant.

In the present case, where no facts and no evidence have been submitted, the Panel finds it impossible to draw any inference from the Respondentís default.

The Panel is well aware of the powers granted to it by Rule 12 of the Rules. Under such rule: "In addition to the complaint and the response the Panel may request, in its sole discretion, further statement or documents from either the Parties".

However, the Panel finds that Rule 12 must be read in co-ordination with Rule 10, which, as stated in its previous decision D493, requires that "the Panel must treat the Parties to the proceedings with equality and give them a fair opportunity to present, respectively, their own case. This principle imposes a burden not only on the Panel but also on both Parties, who must collaborate and aid the Panel in its decision-making process"(emphasis added).

This principle cannot be held solely applicable to the Respondent who certainly bears the risk of the inferences drawn by the Panel from his/her default. It is applicable, mutatis mutandis to the Complainant who has ample time and guidance (see Paragraph 3 (b) (ix) of the Rules, Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy, hereinafter the "Policy", and ßV of the Model Complaint prepared by the WIPO -which was used by the Complainant in drafting the present case Complaint ) to include in the Complaint all the circumstances required for the Panel to take a fair and legitimate decision.

It appears from the foregoing that to make use of the powers of Rule 12 of the Rules to overcome such noticeable failures to properly plead the case would result in an inadmissible interference in the adversarial procedure and would irreparably harm the trust in the independence and impartiality to which all Panelist are bound to adhere.

The Panel is convinced that Rule 12 should be sparingly used and only when there is a contested, or controversial, or not entirely clear issue of fact or of law. But in the present case no facts, no circumstances are indicated.

The Panel finds that its view is not isolated (see Decision D2000-0596, STING.COM, Interim Order at ß7: "although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corp. v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it cannot rule on the record submittedÖ..). In the present case, where basic elements have not been alleged at all, such considerations confirm that this Panel shall not use Rule 12.

It must finally be noted that while nothing neither in the Policy, nor in the Rules prevents the Complainant from submitting, for the same facts and circumstances, a new Complaint, the Panel considers that comity and fairness would deny a Panel from reversing a previous decision on the merits issued by a brother or sister Panel.

However, when the Panel has rejected a Complaint for failure to plead the case and thus without a specific finding on the elements under Paragraph 4(a)(ii) and (iii) of the Policy, the Complainant should have the chance to file another Complaint where these elements are properly alleged and discussed. Such conclusion seems fair and appropriate in light of the fact that the Respondent, having being served a new and complete Complaint, is given the full possibility to reply on facts and circumstances previously not indicated.

3) Since according to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements must be present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith, but the Complainant has already failed to show the occurrence of the element under 2), the Panel needs not to investigate the occurrence of the third element.

 

7. Decision

In light of the foregoing, the Panel finds that although Respondentís disputed domain name ARMANIEXCHANGE.NET is confusingly similar to Complainantís trademarks, the Complainant failed to show that Respondent has no legitimate rights or interests in the disputed domain name. Therefore, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Uniform Rules, the Panel denies the request that the Registrar, Network Solutions, Inc, be required either to transfer to the Complainant or to cancel, the domain name "ARMANIEXCHANGE.NET".

 


 

Fabio Angelini
Panelist

Dated: August 13, 2000