WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA Modefine SA v. Watchstore / Paul Ouzounian
Case No. D2006-0613
1. The Parties
The Complainant is GA Modefine SA, Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Lugano, Switzerland.
The Respondent is Watchstore / Paul Ouzounian, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <emporioarmaniwatch.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2006. On May 18, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 18, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2006.
The Center appointed Gustavo P. Giay as the sole panelist in this matter on June 28, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of the trademarks ARMANI and EMPORIO ARMANI, which are famous worldwide. Said trademarks are used for different kinds of goods and services, such as watches, clothes, glasses, jewelry, and perfumes, and are registered in various classes within many jurisdictions such as International registration Nos. 536698 and 502876 in classes 14 and 25, United States registration Nos. 3055615, 2142395 in classes 14 and 25; and European Community Trademark registration Nos. 504282 and 505594 in classes 14 and 25, among others. The Complainant’s rights in said marks were acknowledged and referred to in several decisions rendered by WIPO UDRP panels. (See e.g., GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; GA Modefine SA v. Armani International Investment, WIPO Case No. D2000-0305; among others).
According to the non-contested allegations of the Complainant and to the evidence submitted in this case, upon Complainant’s demand to the Respondent that they withdraw their registration of the domain name <emporioarmaniwatch.com>, the Respondent offered to withdraw the domain name in return for a payment of US$1,500.
At the time of this decision, the domain name <emporioarmaniwatch.com> is in use, hosting a website which offers links related to watches and search engines.
5. Parties’ Contentions
The Complainant asserts that: The domain name at issue is confusingly similar to the trademarks ARMANI and EMPORIO ARMANI owned by the Complainant which are well-known throughout the world, and that the Respondent’s addition of the word “watch” in the domain name is not sufficient to prevent the risk of confusion.
The Respondent has no rights or legitimate interests in respect of the domain name at issue as: i) the Respondent is not commonly known by the domain name <emporioarmaniwatch.com>; ii) the Respondent has no connection with the Complainant; iii) the Respondent does not offer products or services in good faith on the website to which the domain name resolves.
The domain name was registered and used in bad faith, as: i) the Respondent knew or should have known about the worldwide fame of the ARMANI and EMPORIO ARMANI marks and thus his choice of the domain name could not result from a mere coincidence; ii) the fact that the Respondent has combined the world famous registered trademark EMPORIO ARMANI with the word “watch” to distinguish one of the several fields of activity of the Complainant reveals the intention of the Respondent to exploit the notoriety, importance and value of the Complainant’s trademark. ii) the Respondent’s intention to obtain a monetary benefit became evident with their written proposal to withdraw the domain name in return for a valuable consideration.
Under these conditions, the Complainant requests that, in accordance with paragraph 4(i) of the Policy, the Panel issue a decision that the contested domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following is satisfied:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and
(iii) that the domain name registered by Respondent has been registered and used in bad faith.
In previous UDRP cases in which the responding party failed to file its response, the panels’ decisions were based upon the complainants’ assertions, evidence and inferences drawn from the respondents’ failure to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936).
Notwithstanding the above, the Panel must not decide in the Complainant’s favor solely given the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof which allow the Panel to presume that its allegations are true.
A. Identical or Confusingly Similar
The domain name <emporioarmaniwatch.com> contains entirely the Complainant’s distinctive and known trademark EMPORIO ARMANI. The mere fact that the Respondent has added to the mark the generic term “watch,” which suggests an association to Complainant’s business activity and products, cannot prevent confusing similarity between the contested domain name and the Complainant’s trademark. The Panel finds that the domain name in dispute is confusingly similar to Complainant’s registered trademarks.
In view of the above, the Panel holds that the requirement of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has proven prima facie that the Respondent has no rights or legitimate interests in respect of the domain name <emporioarmaniwatch.com>.
The website at the disputed domain name displays links to websites offering competing products to those of the Complainant. Such use cannot be considered bona fide use.
After considering the provisions of paragraph 4(c) of the Policy, the Panel finds that the name of the Respondent has no connection with the trademark EMPORIO ARMANI and the Respondent’s use of the disputed domain name cannot be considered fair or non-commercial.
Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, as required in paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
The Panel finds that, in view of the evidence enclosed by Complainant, the fact that the Respondent requested a monetary compensation in return for withdrawing the domain name registration indicates that Respondent registered the domain name for the purpose of selling it to the Complainant or the Complainant’s competitors. This circumstance is considered to be evidence of registration and use of the domain name in bad faith under paragraph 4(b)(i) of the Policy.
The Panel also verified that the Respondent hosts a website which functions as a search engine, whereby customers can find links to commercial sites related to watches identified with the marks GUCCI, MOVADO, STUD, OMEGA and LONGINES, which are products of the Complainant’s competitors. The Respondent’s website also provides links to websites related to matters as diverse as airline tickets, casinos and ringtones, among others.
In view of the content of the webpage, and in the absence of any response from the Respondent, the Panel considers that the Respondent has most likely registered the domain name <emporioarmaniwatch.com> with the intention of taking advantage of the Complainant’s goodwill in its trademarks and has attempted to attract Internet users to said website and other on-line locations thus creating a likelihood of confusion with the Complainant’s marks.
In consequence, the Panel holds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith under paragraphs 4(b)(i) and (iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <emporioarmaniwatch.com> be transferred to the Complainant.
Gustavo P. Giay
Dated: July 12, 2006