WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Mage Enterprises Inc.
Case No. D2011-1172
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 Mage Enterprises Inc of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <armaniacquadigio.com> is registered with Wild West Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2011. On July 11, 2011, the Center transmitted by email the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2011 the Registrar 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 July 21, 2011.
The Center verified that the Complaint together with the amended 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 July 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2011.
The Center appointed Lana I Habash as the sole panelist in this matter on August 22, 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
The Complainant is a leading company in the fashion industry and is the owner of various trademarks, together known as the “Armani Trademarks”, such as GIORGIO ARMANI, ARMANI, ACQUA DI GIO’, De GIORGIO ARMANI and GIO’. The Armani Trademarks are registered and used for different kinds of goods and services, including perfumes and clothing and are registered in Europe, United States of America, Canada and before the WIPO. The WIPO registration for the Trademarks ARMANI and ACQUA DI GIO’ date back to 1986 and 1997.
The disputed domain name <armaniacquadigio.com> was registered on April 20, 2010 and resolves to an inactive webpage.
5. Parties’ Contentions
The Complainant contends the following:
The disputed domain name <armaniacquadigio.com> fully incorporates two of the Complainant’s Trademarks ARMANI and ACQUA DI GIO’, which makes it confusingly similar to each Trademark;
The Complainant’s Trademarks are well-known and enjoy a great deal of notoriety around the world due to the continuous appearance of such Trademarks in magazines and newspaper articles, and such notoriety have been recognized in the decisions of various UDRP Panels;
The use of the disputed domain name is likely to enhance the confusion and lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant, suggesting that the disputed domain name leads to one of Complainants’ official sites, or an authorized website;
The Respondent does not have any specific interest in using the words “armani” and/or “acquadigio” within its domain name;
The Respondent has no legitimate rights or interests in the disputed domain name, as it has no affiliation or connection with the Complainant, and was not licensed or authorized by the Complainant to use the Trademarks in any manner, including the registration of a domain name;
The Respondent has registered and is using the disputed domain name in bad faith, considering that the Respondent must be aware of the fame of the Complainant’s Trademarks, which can be inferred from the fact that the disputed domain name incorporates fully two of the Complainant’s Trademarks;
By registering the disputed domain name, the Respondent attempted to sell, rent or otherwise transfer the domain name registration to the Complainant who is the owner of the corresponding renowned Trademarks for valuable consideration in excess of the out-of-pocket costs directly related to the domain name or in any case to obtain some personal advantage from the value of these famous Trademarks;
In support of bad faith, the Respondent never accepted the registered letter requesting the withdrawal of the registration of the disputed domain name;
The fact that the disputed domain name resolves to an inactive webpage is an indication of use in bad faith, as have been upheld by a various UDRP Panels.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <armaniacquadigio.com> transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the Trademarks ARMANI and ACQUA DI GIO’. The Panel is also satisfied that the Complainant has established that the Armani Trademarks are widely known worldwide including in the United States of America, where the Respondent is located. This view was also upheld by numerous UDRP Panels; see GA Modefine SA v. Watchstore / Paul Ouzounian, WIPO Case No. D2006–0613, GA Modefine S.A. v. Nirooshan Jeevarajah, WIPO Case No. D2006-0788, and GA Modefine S.A., Giorgio Armani S.p.A. v. Kim Hongtae, WIPO Case No. D2007-0851.
The disputed domain name contains the Complainant’s Trademarks ARMANI and ACQUA DI GIO’ in their entirety and combining both Trademarks suggests a specialized website concerning that particular product of Armani, which supports the confusing similarity between the Complainants’s Trademarks and the disputed domain name.
Paragraph 4(a)(i) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
Considering the facts of this case, the Panel is convinced that the Respondent does not enjoy any of the following circumstances: the Respondent must have known of the Complainant’s Trademarks, which can be inferred from incorporating two of them identically in the disputed domain name. Moreover, the Respondent is not known by the disputed domain name and has never been authorized by the Complainant to use the registered Trademarks, and by defaulting the Respondent failed to assert any such rights.
Accordingly, the Complainant has succeeded in making a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name and as such has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademarks ARMANI and ACQUA DI GIO’, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademarks and subsequently its interest in the disputed domain name.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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 trademark 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The consensus view among the various Panels have found that the apparent lack of so-called active use does not in itself prevent a finding of bad faith; in this case, the Panel is satisfied that the Respondent must have had knowledge of the Complainant’s Trademarks and its failure to respond to the Complaint supports a finding of bad faith registration and use.
Therefore, on the balance of probabilities, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and as such paragraph 4(a)(iii) is therefore satisfied.
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 <armaniacquadigio.com> be transferred to the Complainant.
Lana I Habash
Dated: September 4, 2011