WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine S.A. v. Mark O'Flynn
Case No. D2000-1424
1. The Parties
Complainant in this administrative proceeding is GA MODEFINE SA, located at 90, Avenue de France, 1004 Lausanne, Switzerland, represented by Mariacristina Rapisardi with offices at Via Ariosto, 6, Lugano, Switzerland, hereinafter the "Complainant".
Respondent is Mark O'Flynn, with address at Via di Grazioli, 47, 00046 Roma, Italy, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "armaniboutique.com", registered on September 9, 1999, hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on October 19, 2000, by e-mail and on October 23, 2000, the hard copy and exhibits.
On November 3, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On November 9, 2000, NSI transmitted via email to the Center, its Verification Response, confirming that the registrant is the Respondent and that the administrative contact is the Respondent while the technical contact is Giampero Genevose and the billing contact is Luciano Carbonetti. It confirmed also that the NSI 4.0 Agreement was in effect and that the Domain Name registration status is "Active".
On December 7, 2001, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules). On this point, the Center sent on December 8, 2000, a Complainant Deficiency Notification to both the Complainant and the Respondent by e-mail based on the non-compliance paragraph 3(b)(xiii) of the Rules. On December 21, 2000, the Center received by e-mail, and on December 29, 2000, by hard copy, the amendment to the Complaint, choosing the jurisdiction of the Courts of Velletri, Italy in accordance with paragraph 3(b)(xiii) of the Rules.
The Center transmitted on January 5, 2001, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding via post/courrier, facsimile, e-mail in accordance with the contact details provided by the Complainant and the Registrar.
The Center advised that the Response was due by January 24, 2001.
On January 29, 2001, having received no Response from the Respondent, the Center issued to the email address of both parties a Notification of Respondent Default. No reply by Respondent to the Notification of Respondent Default was received.
On February, 5 2001, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received, on February 5, 2000, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on February 13, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was February 27, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
Complainant has rights in the following trademarks:
- GIORGIO ARMANI
- EMPORIO ARMANI
These trademarks are registered in a great number of countries, including Great Britain and Northern Ireland; the United States and Canada; for the goods of classes 3, 8, 9, 14, 18, 20, 21 24, 25, 34, 34.
It can be said that Complainant's trademarks have become through massive advertising, internationally well-known marks.
It appears from Network Solutions’ Verification Response that Respondent is the registrant of the Domain Name. Respondent registered the Domain Name on September 9, 1999.
The website linked to the Domain Name is under construction.
5. Parties Contentions
Complainant contends that the Domain Name is confusingly similar to its trademarks.
Complainant contends that the Respondent's lack of rights and of legitimate interests in respect of the Domain Name is proven by the circumstances that Respondent does not have as its family name "ARMANI" and does not own a boutique or a firm that sells or manufactures articles bearing the trademark "ARMANI".
Complainant contends that Respondent has registered the Domain Name in bad faith because the Respondent was intending to exploit the notoriety of Complainant's trademarks.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The distinctive part of the Complainant's trademark, "ARMANI", constitutes the core element of the Domain Name.
It is indeed obvious that although the Respondent's Domain Name is composed out of the word "armani" and the (descriptive) word "boutique", the first of these terms is incontestably the principal part of the Domain Name.
In this view, the Administrative Panel finds that the Domain Name is confusingly similar to the Complainant's trademarks. Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to apply for any domain name incorporating its trademarks.
It also appears that the Respondent has not registered nor used the name "armani" nor "armaniboutique" nor "boutique armani" as a trademark, nor has he ever been known by this name.
Moreover, by not filing a Response, Respondent has failed to invoke any circumstance, which could indicate the existence of any right or legitimate interest he would have in the Domain Name.
c. Registration and Use in Bad Faith
When registering the Domain Name, Respondent knowingly and purposefully chose a name, which is confusingly similar to Complainant's trademarks. Indeed, the Panel finds that Complainant has brought sufficient evidence that the ARMANI trademark is famous and widely used.
In view of the above-described fame of the Complainant's trademarks, the choice of the Domain Name by Respondent could not result from a mere coincidence.
Respondent could not have been unaware of Complainant's trademarks, and by knowingly choosing a domain name consisting of Complainant's trademark ARMANI followed by the word "boutique", Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
The website related to the Domain Name was under construction in October 2000, and still is while the Administrative Panel is considering this case.
The Respondent was in default to respond in this proceeding, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.
Considering the lack of interest of Respondent in the Domain Name, in the defense of his rights and interests as to the Domain Name and the above facts, the Administrative Panel therefore finds that Complainant has met its burden under section 4(a)(iii) of the Policy and that Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is confusingly similar to Complainant's trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent’s Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name "armaniboutique.com " be transferred to Complainant.
Dated: 27 February 2001