WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine SA v. Nonsolomoda NV
Case No. D2001-0308
1. The Parties
The Complainant is GA Modefine SA of 90 Avenue de France, 1004 Lausanne, Switzerland. It is represented by Avvocato Mariacristina Rapisardi of Studio RAPASARDI S.A. of Via Ariosto 6, 6901 Lugano, Switzerland.
The Respondent is Nonsolomoda NV of maho shopping plaza #14, Philipsburgh, Netherlands Antilles 97150.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is <armani-giorgio.com>.
The Registrar is Network Solutions Inc. of 505 Huntmar Park Drive, Herndon, VA 22070, USA ("NSI").
3. Procedural History
On March 2, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center on March 8, 2001. The Center acknowledged receipt on March 7, 2001.
The Center sent a Request for Registrar Verification to NSI on March 9, 2001, by email. NSI responded on March 12, 2001, and confirmed: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the disputed domain name, (3) that the Respondent, Nonsolomoda NV was the current registrant of the disputed domain name, (4) that the Respondent’s contact details were as set out above, (5) that NSI’s 5 Service Agreement was in effect for the disputed domain name, and (6) that the current status of the disputed domain name was "Active".
On March 16, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, as well as to its administrative and technical contacts, by post/courier and email. Copies were also sent to the Complainant by email.
Nothing more was heard from the Respondent, and on April 4, 2001 the Center sent a Notification of Respondent Default by email to the Respondent, to his administrative and technical contacts, and to the Complainant.
On May 1, 2001 the Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of May 14, 2001, to the Respondent via email and to the Complainant via email and post/courier. A copy was also sent to the Panel on the same date by email.
On May 1, 2001, the Center dispatched a Transmission of Case File to the Panel. The Panel received hard copies of this material on May 2, 2001.
4. Factual Background
Activities of the Complainant
The Complaint is a little short on detail, but long on documentation. However the following information about the Complainant can be gleaned from the Complaint, and it remains uncontested.
Giorgio Armani is one of the world’s leading designers of fashion garments, coming from that mecca of high fashion – Milan. Like other designers, he has created a worldwide empire which trades under his personal name, which produces a range of clothing and accessories, and which owns shops where they are sold. Although there is nothing in the Complaint to explain his connection with the Complainant, it can be deduced that there is such a connection from two pieces of evidence – the fact that some of the trade marks were originally registered in the name of a company called Giorgio Armani SpA (but now assigned to the Complainant), and the appearance of the letters ‘G A’ (i.e. Sr. Armani’s initials) as a prefix to the full name of the Complainant.
The Complainants’ trademarks
The Complainant claims to be the proprietor of a number of International, UK, Canadian and US registrations of the trademarks ARMANI, GIORGIO ARMANI, and EMPORIO ARMANI. A quantity of copies of these trademarks was annexed to the Complaint, but an analysis of all this paper shows that some of it consists of duplicate copies, that five UK marks may not have been renewed in 1996, and that some of the marks are apparently still in the names of Giorgio Armani SpA or a Swiss company called Codefine SA with an address that is different from that of the Complainant. Nevertheless it can be established that the Complainant itself does have some registration rights in the trademarks ARMANI, GIORGIO ARMANI and EMPORIO ARMANI in: Canada, International, UK and USA. The International registrations are extended to many countries in the Madrid Agreement or Madrid Protocol, and between them the registrations cover a wide range of goods in numerous classes.
Activities of the Respondent
In the absence of any communication, nothing is known for certain about any activities of the Respondent, but see below for comments on its website.
5. The Parties’ Contentions
The Complainant alleges that the Respondent has registered a domain name which consists of the name of one of the most famous Italian fashion stylists who designs and sells exclusive products to selected customers.
The Complainant contends that the notoriety and diffusion of Sr. Armani’s name and of the Complainant’s trademarks are proved by several articles appearing throughout the world in fashion magazines and important newspapers, copies of which were attached to the Complaint. In addition the Complainant has been successful in defending its name and trademark in two previous Decisions under the Policy, namely D2000-0306 G A Modefine SA v. AES Optics (<armani-sunglasses.com>) and D2000-0305 G A Modefine SA v. Armani international investment (<armaniinternatioinal.net>).
The Respondent’s lack of any lawful rights in respect of the contested domain name is allegedly because it has no stylist with this name and it has not registered or applied for any trademarks similar thereto in any jurisdiction. However no evidence for these assertions is given.
The Complainant argues that the Respondent’s bad faith in the registration of the domain name is proved by two circumstances:
Firstly, the registration of a domain name consisting of the family name of a worldwide famous fashion stylist is an indication that the Respondent intends to exploit the notoriety and importance of the said name and, from the unlawful use of it, to take advantage of the Complainant’s trademark registrations of the name. The Respondent must certainly have been aware of the fame and worldwide relevance of the Armani name and trademarks at the time of the registration of its domain name.
This is confirmed by the fact that, according to the Respondent’s own website (<www.nonsolomodanv.com>), its intention is to sell "Top Italian designers clothing and accessories for men and women". A copy of the single page of this website, which is all that is available as it is still under construction, was annexed to the Complaint.
Secondly, the Respondent has registered as domain names the family names of two other worldwide famous fashion stylists, namely <valentino-garavani.com> and <versace-gianni.com>.
Finally, the Complainant addressed a ‘cease-and-desist’ letter to the Respondent on September 25, 2000 at the address given in paragraph 1 above which was not replied to. A copy of this letter and of the envelope it was sent in were annexed to the Complaint, from which it can be seen that it was sent by registered mail, but it was returned as "non réclamé".
The Respondent did not respond to the Complaint, or to the allegations made therein.
6. Discussion and Findings
Since the Respondent has not submitted a response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with the following paragraph of the Notification of Complaint:
"6. Default. If your Response is not sent by the above date (i.e. February 4, 2000), you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint." Which the Panel will now do.
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Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There is no doubt that the Complainant has registration rights in the trademarks ARMANI, GIORGIO ARMANI and EMPORIO ARMANI. These are not identical to the disputed domain name <armani-giorgio.com> but, in the Panel’s view, they are confusingly similar – especially GIORGIO ARMANI – and so paragraph 4(a)(i) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name.
In connection with this paragraph, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that it has rights to or legitimate interests in respect of the disputed domain names.
By its default, the Respondent has done nothing to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain names. However it can only be assumed from the message on the Respondent’s website that the motive in registering the disputed domain names was the Respondent’s actual or likely knowledge of the names and trademarks GIORGIO ARMANI, ARMANI, and EMPORIO ARMANI, all of which have been widely promoted and are therefore rather well-known.
Paragraph 4(c) of the Policy sets out several ways in which a Respondent can establish rights or legitimate interests in the domain names at issue. The Respondent can, for example, show that before he received any notice of a dispute, he had made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. However on visiting the disputed website, one is immediately transferred to the Respondent’s own website where, as indicated above, as part of the Complainant’s contentions, one is presented with the following messages:
TOP ITALIAN FASHION
DESIGNER CLOTHING AND
TOP ITALIAN FASHION
DESIGNERS CLOTHING AND
ACCESSORIES FOR MEN AND
TOP QUALITY GREAT PRICES
As a consequence, far from making any ‘bona fide’ use of the disputed domain name, the inference to be drawn from this message is that the Respondent has every intention of making a ‘mala fide’ use of the disputed domain name.
In addition, the Respondent has registered the domain names <valentino-garavani.com> and <versace-gianni.com>, which are the names of two other worldwide famous fashion stylists. A visit to both of these sites has exactly the same result, namely a referral to the Respondent’s own website and the appearance of the above message.
The Respondent has produced no evidence that it has been commonly known as armani giorgio (or giorgio armani), and has produced no evidence of legitimate noncommercial or fair use of the disputed domain names since it was first registered.
Since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favour under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith.
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain names in bad faith. The Panel must perforce draw such inferences as it can from this inaction, and from the Complainant’s uncontested allegations. Even so, the burden of proof is on the Complainant.
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel will consider each of them in turn.
4(b)(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Complainant made an approach to the Respondent prior to the Complaint having been filed, to which the Respondent failed to reply, so it cannot be said that any offer to sell the domain names at a profit was made by the Respondent, but the inference that this may have been the Respondent’s hope can perhaps be made from his other activities.
4(b)(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
Again one could perhaps infer that it was the intention of the Respondent to prevent the Complainant from using its name, but there is no evidence thereof.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Virtually nothing is known of the Respondent’s business, other than the message appearing on its inactive website. This in itself indicates that the Respondent intends to set up in competition with the Complainant, and must therefore have known of the Complainant’s name and trademarks ARMANI, GIORGIO ARMANI and EMPORIO ARMANI. If one were to apply the test in the TELSTRA Case No. D2000-0003 Telstra Corporation Ltd. v. Nuclear Marshmallows, and adapt its wording, one could perhaps conclude as follows: "[T]he trademark [ARMANI and GIORGIO ARMANI] is one of the best known trademarks ……, and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact ……[B]y virtue of the widespread use and reputation of the trademark [ARMANI and GIORGIO ARMANI], members of the public …… would believe that the entity owning the domain name [<armani-giorgio.com>] was the Complainant or in some way associated with the Complainant".
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Taking all of the above four points into consideration, the Panel has had little difficulty in concluding that the disputed domain names were registered in bad faith.
However, it should be noted that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith. Since, as has already been said above, the website at the disputed domain name dissolves to another site where an offer is made for the future sale of designer fashion clothing, the Panel believes that this constitutes use.
Furthermore, these proceedings were binding on the Respondent, but it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that he had been duly notified by the Center. In particular, Respondent has not denied that it is using the domain name in bad faith.
The Panel therefore concludes that the Respondent has registered and used the domain name in bad faith.
The Panel decides that the domain name registered by the Respondent is similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name <armani-giorgio.com> be transferred to the Complainant.
David H Tatham
Dated: May 3, 2001