WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Brian Mullen
Case No. D2011-0529
1. The Parties
The Complainant is Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Brian Mullen of Glasgow, United Kingdom of the Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <emporio-armani-watches.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 23, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On March 24, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 30, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2011.
The Center appointed Gunnar Karnell as the sole panelist in this matter on April 29, 2011. 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
According to the publicly available WhoIs information, the disputed domain name <emporio-armani-watches.com> was registered on October 6, 2009.
5. Parties’ Contentions
The Complainant bases its Complaint on the following trademarks: EMPORIO ARMANI and ARMANI. They are registered, included class 14, for a wide variety of products and services throughout the world, including United Kingdom. It is universally recognized that the ARMANI trademarks are well-known all over the world.
The disputed domain name is identical or confusingly similar to the Complainant’s trademarks. It incorporates entirely both the Complainant’s trademark EMPORIO ARMANI, used for watches, and ARMANI. The added generic term “watches” does not prevent the risk for confusion between the trademarks and the disputed domain name suggests that it leads to one of the Complainant’s official sites and that its registration and use is authorized by the Complainant.
The Respondent does not have, nor has it ever had, any rights or legitimate interests in respect of the disputed domain name, not being commonly known by it, neither having any connection or affiliation with the Complainant nor having received any license or consent for use in any manner of the Complainant’s trademarks ARMANI and not having any rights or legitimate interests in the domain name or any name corresponding thereto.
The disputed domain name is linked to a web site where watches are offered for sale, taking advantage of traffic diverted from the Armani’s domain names and web sites. There has been no reply from the Respondent to any of three cease-and-desist letters.
The Respondent has registered and used the disputed domain name in bad faith, aware of the Complainant’s trademarks ARMANI, their fame and worldwide relevance, at its registration. The Respondent must have intended to sell, rent or otherwise transfer the disputed domain name registration to the Complainant for valuable consideration in excess of out-of pocket costs directly related to the disputed domain name. Also, its use for promotion of the commercial activity mentioned shows that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non contradicted complaint by written evidence and reference to earlier UDRP case decisions, leads the Panel to the following conclusions:
A. Identical or Confusingly Similar
The Complainant’s trademarks ARMANI that are here in issue have been proven by ample written documentation about registrations and uses to have become known world-wide, and not least to be well known also in United Kingdom, at the time of Respondent’s registration of the disputed domain name. The similarity of the Complainant’s trademarks ARMANI to the disputed domain name as registered and in use is obviously confusing.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions regarding facts leading up to its conclusions that the disputed domain name <emporio-armani-watches.com> has been registered and used in bad faith, the Panel confirms that the conditions for transfer of the disputed domain name to the Complainant are satisfied.
Given the notoriety of the Complainant’s trademark and the use of the domain name, the Panel finds that the Respondent must have been aware of the Complainant, and that therefore the Respondent registered the disputed domain name in bad faith. Furthermore, the Panel notes that by using the disputed domain name in connection with a website that offers Complainant’s products and similar products, the Respondent used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <emporio-armani-whatches.com> be transferred to the Complainant.
Dated: May 9, 2011