WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

G. A. Modefine S.A. v. A.R. Mani

Case No. D2001-0537

 

1. The Parties

The Complainant is G. A. Modefine S.A. of 90, Avenue de France Ė CH-1004 Lausanne, Switzerland. The Respondent is Mr A. R. Mani of 205-1139 Barclay Street, Vancouver, British Columbia V6E 1G8, Canada.

 

2. The Domain Name and Registrar

The domain name in issue is <armani.com> ("the domain name"). The Registrar is Network Solutions.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on April 12, 2001 and in hardcopy on April 19, 2001.

On April 20, 2001, Network Solutions transmitted via e-mail its verification response confirming that the Respondent is the registrant of the domain name.

On April 23, 2001, the Center notified the Respondent that a complaint had been filed against him.

On May 11, 2001, the Center received an e-mail from the Respondent seeking an extension to the deadline for the Response (which had been set at May 12, 2001) to May 18, 2001. On May 11, 2001, the Center granted that extension. The Response was received by the Center by e-mail on May 18, 2001, and in hard copy on May 22, 2001.

On May 22, 2001, the Center received an e-mail from the Complainant's Attorneys requesting an opportunity to file a Response to the Respondent's Reply. On May 23, 2001, the Center received by e-mail from the Respondent's Attorneys a letter objecting to the Complainant filing further material and requesting an opportunity to reply to any material filed in the event that the appointed Panel acceded to the Complainantís request.

On June 26, 2001, the Center notified the parties that this Panel had been appointed. The scheduled date for the Panel to render its decision was July 9, 2001.

On June 26, 2001, the Panel requested, pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") that the Complainant file a further statement within seven days confirming whether or not it accepted that the Respondentís full name is Anand Ramnath Mani and requesting that, if and insofar as the Complainant disputed this, that the Complainant set out all facts and matters relied upon. The Panel allowed the Respondent to file a statement in response to any further statement filed by the Complainant within a further seven days.

On June 29, 2001, the Center received by e-mail from the Complainantís Attorneys a Brief of Reply to the Respondentís Response.

On July 4, 2001, the Center received an e-mail from the Respondentís Attorneys requesting a right of further reply, in particular, advising the Center that the Respondent had requested a copy of his baptismal certificate.

On July 5, 2001, the Panel responded to the Respondentís Attorneyís e-mail dated July 4, 2001, allowing the Respondent a further seven days to file a reply to the Complainantís Brief of Reply. The Panel informed the parties that it would be likely to consider further evidence as to the Respondentís baptismal name relevant. The revised scheduled date for the Panel to render its decision is July 20, 2001.

On July 10, 2001, the Center received by e-mail from the Respondentís Attorneys the Respondentís Reply. The hard copy was received by the Center on July 12, 2001.

A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.

The Complainant is represented by Avvocata Mariacristina Rapisardi of Studio Rapisardi S.A., Via Ariosto, 6-6901 Lugano-CH. The Respondent is represented by Robert J Lesperance of Lesperance Mendez Mancuzo, 419-900 Howe Street, Vancouver, British Columbia, Canada V6Z 2M4.

 

4. Factual Background

The Complainant is the registered proprietor of the trademarks "ARMANI" "GIORGIO ARMANI" "EMPORIO ARMANI" registered in a large number of countries including the United Kingdom, the United States of America and Canada.

The Respondent is a graphic artist and technical illustrator. His full name is Anand Ramnath Mani (see further below). According to the Respondentís evidence he has been trading under the name "A.R.Mani" since 1981. The evidence filed in this respect includes a copy of the Respondentís business card (stated first to have been used in 1982), an advertising flyer (stated first to have been published and used in 1990), evidence that the Respondent was using the e-mail address armani@breez.wimsey.com from August 1992 and various documents and correspondence addressed to the Respondent as "A.R.Mani" or "Anand R. Mani".

The Respondent filed evidence to show that his full name is Anand Ramnath Mani. This consists of pages from the Vancouver Telephone directory indicating the Respondent as "Mani, Anand R" (1988) and "Mani, A R" (1993) and a certified copy of his Finnish Baptismal Certificate which states that Anand Ramnath Mani was born in Helsinki, Finland, on June 24, 1954. The Vancouver telephone directory pages show that the surname "Mani" is not that uncommon, with some 20 or so entries.

The Respondent registered the domain name on February 20, 1995 (although he has provided some evidence to show that he took steps to register the domain name in 1994).

Whilst the Respondent does not have a website at the domain name address, he uses the e-mail addresses info@armani.com, me@armani.com and arm@armani.com. The Respondent has provided copies of a number of e-mails sent to or by him at these addresses.

The Respondent has provided formal declarations from himself and from a third party attesting to the above matters.

The Respondent was first contacted by US lawyers representing the Complainant (or Mr. Giorgio Armani) in 1995, or thereabouts. By letter dated May 22, 1997, the Complainantís US Attorneys offered the Respondent Canadian $1,250 for the domain name. On August 15, 1997 the Respondent made a counter-offer of $1,935 USD and also requested that the Complainant not oppose his registration of the domain name <amani.com>. By letter dated September 29, 1997, the Complainantís US Attorneys rejected the Respondentís counter-offer. This background has become apparent in the papers filed by the Respondent and to some extent in the Brief of Reply, but is not mentioned in the Complaint.

The Attorneys representing the Complainant in this Complaint sent a letter to the Respondent dated January 23, 2001, which states that the Complainant "has recently come to know that you registered the domain name Ďarmani.comí " and invited the Respondent to "consider the possibility of settling the matter in a friendly way". The Respondent sent an e-mail in response to this letter which amongst other matters, stated that the Respondent had spoken with employees of the Complainant over the years, that he had offered to share the domain, that he had been told that the Complainant would not object if he registered <armani.ca> but that this offer was later retracted and that he offered to give up the domain name and register <amani.com> but that this offer was also unacceptable to the Complainant.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions (which are lengthy) are summarized below.

The domain name is identical to the Complainantís trade marks.

The Respondent does not have any legitimate interest in the domain name as the domain name "does not correspond neither to the name, nor to the surname of the respondent; nevertheless to its name or surname [sic]". Nor is it an acronym of his initials.

It is not relevant that the Respondentís complete name may be Anand Ramnath Mani.

The Respondent could have registered a domain name which would easily distinguish himself from the "ARMANI" mark, for example "anandrmani" or "a-r-mani".

No evidence has been provided by the Respondent to show use of the domain name before notice of the dispute as no website has been constructed and no activities are being carried out under the domain name. The Respondent has not proved that he is using the domain name as an e-mail address nor that he uses the name "Armani" in connection with his activities.

No prohibitive value should be attached to the documents filed by the Respondent to show that he is commonly known by the domain name in the light of the strength of the reputation attaching to the ARMANI trade mark.

The confusion caused by the Respondent allows him to exploit the notoriety of the Complainantís marks because "every day, all over the world, people which are looking for the site of the famous stylist, finds, with surprise, the site of Mr. Anand Mani in Vancouver".

As far as bad faith is concerned, the Respondent refused the sum of Canadian $1,250 and asked for $1,935 USD and that the Complainant not oppose his registration of the domain name <amani.com>.

The Respondent is not using the domain name, has provided no evidence of an effective use of the domain name. Given that the ARMANI mark is famous world-wide, the Respondent must be taken to have known before formal notice of the Complaint that his registration of the domain name was infringing the Complainantís rights.

Even if the domain name is used only as an e-mail address, it is being "intentionally used to exploit the notoriety and importance of the complaint and to take advantage from the unlawful use of the GA Modefineís trademarks [sic]". Moreover the fact that the domain name is not currently being used as a website "does not guarantee that in the future the respondent will not unlawfully use it worsening the situation on interference with Modefineís trademarks already effected through registration of the domain name at stake [sic]".

B. Respondent

The Respondentís contentions are summarized below.

The Respondentís full name is Anand Ramnath Mani. His Finnish birth certificate could not be located but this would likely have confirmed his parents names but not his own. Third party evidence was provided confirming that this was likely to be the case. The certified copy of the Respondentís baptismal certificate and his Canadian Citizenship certificate show that his full name is as pleaded.

The domain name is not confusingly similar to the Complainantís trademark. A detailed analysis of the Canadian case law on confusion in the trademark context is set out in the Response. In short, there is no risk of confusion because of the divergence between the goods sold by the Complainant and the services offered by the Respondent, and between their respective trade channels.

The Complainant has not filed any evidence to support its allegation of confusion.

The Respondent has a legitimate interest in respect of the domain name by virtue of the use of the name "A.R. Mani" in connection with his graphic design/illustrator business as early as 1981. Moreover the domain name was registered in February 1995, which predates the date the Complainant notified the Respondent that it disputed its ownership of the domain name.

Insofar as the Complainant suggests that the Respondent is required to show that he has used the domain name in order to establish a legitimate interest, the Complainant is incorrect. Rather, the Respondent has only to show that he used the domain name or a name corresponding to the domain name.

There is no evidence that the Respondent intended to use the domain name for commercial gain by diverting consumers or tarnishing the Complainantís marks.

The Complainantís assertion that the Respondent could have registered the domain name "anandrmani" or "a-r-mani" rather than <armani.com> is irrelevant.

There is no evidence to show that the Respondent registered his domain name with the intent to offer, sell, transfer or lease it to the Complainant. The Complainant approached the Respondent to purchase the domain name and not the other way around. It was only on the basis of the threat of legal action that the Respondent considered negotiating with the Complainant to assign the domain name.

 

6. Discussion and Findings

The Panel has reviewed the Complaint, the Response, the Complainantís Brief of Reply and the Respondentís Reply, together with documents exhibited and annexed thereto. In the light of this material, the Panel finds as set out below.

It is beyond dispute that the Complainant has trademark rights in the "ARMANI" name. The domain name is identical to the "ARMANI" trademark. The Complainant is therefore within paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Panel accepts that the name ĎArmanií is a very widely recognized name, registered world-wide in respect of various classes of luxury goods. Given the identical correspondence between the domain name and this trademark, the Respondentís detailed analysis of the test for determining confusion between trademarks under Canadian law is not relevant to these proceedings.

This is, of course, not the only criterion that the Complainant has to satisfy. It also needs to show that the Respondent has no legitimate interest in the domain name and that the domain name has been registered by him in bad faith.

What has emerged in the evidence that has been filed is that the Complainant accepts that Anand Ramnath Mani is the Respondentís real name. The original Complaint was unclear in this regard (the original Complaint is surprisingly brief and contains a number of inconsistencies, including as to whether or not a website and e-mail addresses were being used by the Respondent). Matters have been clarified following the various procedural steps described above. Detailed evidence has been filed by the Respondent (see above) and this matter is not in dispute. This is therefore not a case of the type sometimes encountered, where an opportunistic registrant adopts a name which is intended to give a spurious air of legitimacy to an otherwise questionable registration.

One only has to identify this as being the situation to expose the difficulty which the Complainant then faces. The Complainantís case that the Respondent has no legitimate interest rests in essence on suggesting that the Respondent should not have registered a name which is a mixture of his own initials and surname but should instead have registered his own full name or some other variant of it. The Panel rejects that submission. It is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names. So far as the Panel understands the Complainantís submission at all, it seems to be predicated on the fact that by doing so the Respondent is likely to cause confusion with the Complainantís mark Ė that wrongly imports into the test for legitimate interest an element of confusion or bad faith.

So far as bad faith itself is concerned, the Complainant initially relied upon the Respondentís registration itself as bad faith. Following the Respondentís evidence, the Complainant has also sought to rely upon the Respondentís offer to sell the name for $1,935 USD. This was made as long ago as 1997. The failure by the Complainant to refer to this initially is surprising. The statement made by the Complainantís Attorneys in their Brief of Reply that they only traced the 1997 correspondence in June 2001, does not explain this omission (not least because the Respondent mentioned the history of the dispute in his e-mail to the Complainantís Attorneys sent in response to their letter to him dated January 23, 2001). The sum is no doubt more than the registration costs of the name. The Panel does not however find that it constitutes bad faith. It is a relatively modest sum, far removed from the sort of amounts which were typically sought (especially in 1997) by "cybersquatters". The evidence establishes that a legitimate business was in existence and presumably if the domain name were changed, costs such as changing stationery and the like would be involved. The figure suggested by the Respondent in his counter-offer seems entirely reasonable. It is a matter for the Complainant as to why it did not accept that offer. Its apparent belief that simply because it is the undisputed owner of a world famous name it can use the ICANN procedure to dispossess summarily a third party of what is a combination of his initials and surname, which on the evidence he has used in a bona fide manner since the early 1990s, is simply wrong. The Panel also finds that the Respondentís willingness as part of his 1997 counter-offer to register the domain name <amani.com> is further evidence of his lack of bad faith.

The Panel finds the failure of the Complainant in its Complaint to set out any of the clearly lengthy background to this dispute is surprising. The Complainant or entities associated with it have been pursuing the Respondent since 1995, through various representatives. The Panel is left with a strong sense that the reason these actions have led nowhere is because they come up against the same issue as has been identified in these proceedings, namely, the Respondentís legitimate use of a variant of his own name. The Complaint states (at paragraph 20) in accordance with the Policy, that "the Complainant certifies that the information contained in the Complaint is to the best of the Complainantís knowledge complete and accurate". The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding.

 

7. Decision

In the light of the above findings, the Panelís decision is as set out below.

So far as paragraph 4(a)(i) of the Policy is concerned, the Panel concludes that the domain name is identical to the Complainantís "ARMANI" mark.

As far as paragraph 4(a)(ii) of the Policy is concerned, the Panel is satisfied that the Respondent has a right to and/or a legitimate interest in the domain name by virtue of the domain name corresponding to the Respondentís first two initials and his surname.

So far as paragraph 4(a)(iii) of the Policy is concerned, the Complainant has failed to show that the domain name was registered in bad faith or that it was subsequently used in bad faith.

The Panel therefore declines to find that the domain name should be transferred or cancelled.

The Panel finds this Complaint to be an abuse of the administrative proceeding.

No further action is required to implement the Panelís decision.

 


 

Nick Gardner
Sole Panelist

Dated: July 20, 2001