WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine SA v. Castle Rock Planning
Case No. D2001-0309
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 Castle Rock Planning of 102,2-5-11 Honjou-Higashi, Kita-ku, Osaka, Japan.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is <giorgio-armani.net>.
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, Castle Rock Planning 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 22, 2001, in response to a query from the Center, NSI confirmed that the language of the Agreement was English.
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.
On the same day, March 16, 2001 a short email reply was received from the Respondent, to which the Center responded on March 21, 2001.
Another and longer email was received from the Respondent on April 3, 2001. 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. An email reply from the Respondent indicated that it had been received.
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.
The Center dispatched a Transmission of Case File to the Panel on May 1, 2001. 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 is 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 for five UK marks there are no renewal certificates, and therefore no proof that they were 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 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.
If the Complainant owns any registrations for its trademarks in Japan, no evidence thereof has been submitted.
Activities of the Respondent
From the Respondent’s three emails one learns that he is Japanese, that he only has very little English, and that he is "not cybersquatter". There is very little else.
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 the registration of a domain name consisting of the family name of a worldwide famous fashion stylist which 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 that 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 his domain name. None of this is excluded by the fact that the Respondent’s website is not active.
The Respondent responded to the Complaint in three emails, which are set out below, verbatim.
March 16, 2001
Thanks for email. I can not speak English. Please teach me in Japanese. Domain name (giorgio-armani) is my Dog’s name. Dog’s name is a private name.
April 3, 2001
I’m sorry I can’t respond to you sooner. I can’t speak English. Is Domain Name problem? I thought "Giorgio-Armani.net" "GIORGIO ARMANI" is different. My Dog’s name. I don’t use registered Trade Mark "GIORGIO ARMANI". I use name for non-commercial use. But If it is problem, I must change my Domain Name. I’m not "cyber squatter". As for me, it has not tried even one time probably will sell Domain Name. I do not like the needless dispute. I don’t have Bad Faith. I want canceling accusation. Please check my site http://www.giorgio-armani. net. I have cancelled the release of the web site. Cost is required for domain acquisition. I want considering this. Please let me advice. I being to poor English, apologize the fact that you applied annoyance. Especially when it becomes legal terminology, to be difficult, in addition because translation and attorney cost cannot be applied, I would like you to explain with Japanese. I look forward to receiving your response.
April 4, 2001
Thanks for email. I can’t see "22resdefault(0309).doc" Could you see my mail (April 04, 2001 4.49 AM Japan Time)?
[The above email is then repeated]
Despite these communications, the Center issued a Notification of Respondent Default.
6. Discussion and Findings
The Respondent has not responded to the specific allegations of the Complainant. The writer of the emails claims not to speak English, but he clearly has some understanding of that language and, as confirmed by NSI, the Respondent was prepared to enter into NSI’s Registration Agreement even though it was written in English. His frequent (and correct) use of apostrophes, and his use of some terms (e.g. ‘legal terminology’) is surprisingly sophisticated for a non-English speaker. It is also worth remarking that the Respondent’s name consist of 3 English words, written in Latin characters not Katakana. He also displays a working knowledge of the domain name dispute system and what might be required to defeat a claim under the Policy.
In the three communications from the Respondent, the author appears to make the following points:
- The disputed domain name <giorgio-armani.net> is different from the Complainant’s registered trademark GIORGIO ARMANI.
- giorgio-armani.net is the name of his dog.
- He uses the domain name for non-commercial use.
- He is not a cybersquatter.
- He is not acting in bad faith.
- He has now cancelled the disputed website.
- Registering the domain name has cost money.
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. One of these is identical to the disputed domain name <giorgio-armani.net> and, in the Panel’s view, the others are confusingly similar. The Respondent says that his name is not identical to the Complainant’s registered trademark, but it is by now well established under the Policy that, when comparing names for similarity the suffixes .com. .net and .org can be ignored. As a consequence, the Panel finds that 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 he has rights to or legitimate interests in respect of the disputed domain name. In the opinion of the Panel, the Respondent’s disjointed replies do not provide that evidence. Clearly the claim that <giorgio.armani.net> is the name of the Respondent’s dog is ridiculous, and his reference to ‘sell’ and ‘cost’ are misleading. On the one hand he claims that he has never tried to sell the domain name, while on the other hand he appears to want to be reimbursed for his cost in registering it.
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 name in connection with a bona fide offering of goods or services. However the Respondent claims to have cancelled it, and certainly it is currently ‘inactive’.
Before it was cancelled, the Respondent might possibly have used it for non-commercial purposes, but here again the evidence is confusing. On the one hand the Respondent claims not to be using the registered trademark GIORGIO ARMANI, while on the other hand he claims that "I use name for non-commercial use". Is this because it is allegedly the name of his dog? There is no evidence, but the fact that the disputed domain name was cancelled after receipt of the Complaint is an indication perhaps of a guilty conscience.
The Respondent has produced no other evidence that could reasonably support an inference in its favour under paragraph 4(c) of the Policy, and the Panel consequently 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.
The Respondent claims not to have acted in bad faith, and the burden of proof in this respect 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 no approach to the Respondent prior to the Complaint having been filed, so it cannot be said that any offer to sell the domain name at a profit was made by the Respondent, but the inference from the Respondent’s April 3 email is that he may have been hoping to do so.
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
The situation in this case is that a Japanese citizen, with an English sounding business name, has registered as a domain name words which are identical to the name of a famous Italian designer. It beggars belief that this was done innocently, and the clear inference is that it was done to prevent the Complainant from using its name in the .net Top Level Domain.
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."
There is nothing to suggest that the Respondent is in competition with the Complainant, but again the inference can be drawn from his activities that disruption or enticement was very much in his mind when he registered the disputed domain name.
By registering the identical name of a famous designer, whose name is known throughout the world, one can only conclude that the Respondent must 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 language, one could perhaps conclude that: "[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 [<giorgio-armani.net>] was the Complainant or in some way associated with the Complainant".
* * * *
Taking all of the above four points into consideration, the Panel concludes that the disputed domain name was 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 and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The Telstra case, referred to above, was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The question that must always be asked in these circumstances is: what are those ‘certain circumstances’?
Telstra is perhaps the most cited of all UDRP decisions to be handed down to date, it and its rationale have been followed by numerous subsequent Panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behavior" (see paragraph 7.11).
These proceedings were binding on the Respondent. Nevertheless he failed to present a full response, and although he pleads a poor understanding of English, and an inability to download certain documents, the Panel is not convinced, and 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 <giorgio-armani.net> be transferred to the Complainant.
David H Tatham
Dated: May 3, 2001