WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. v. Farbod Golzar, Goudiva Inc.
Case No. D2011-2091
1. The Parties
The Complainant is Giorgio Armani S.p.A. of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Farbod Golzar, Goudiva Inc. of Woodland Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <armaniexchangeusa.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 November 29, 2011. On November 29, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On December 1, 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.
The Center verified that 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 December 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2011. On December 13 and December 15, 2011, the Respondent sent email communications to the Center where it sought to settle the dispute. On December 15, 2011, the Center acknowledged receipt of the Respondent’s email communications and invited the Complainant to comment thereon. On December 21, 2011, the Complainant sent a request to suspend the proceedings for 30 days. On the same date, the Center notified the parties and the registrar the suspension of the proceedings until January 20, 2012. On January 18, 2012, the Complainant sent a request to reinstitute the proceedings. On the same date, the Center notified the parties and the registrar the reinstitution of the proceedings and informed them that January 23, 2012 was the new Response due date. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on January 25, 2012. 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 an international Italian fashion house.
The international renown of the mark ARMANI and of the variations ARMANI EXCHANGE, GIORGIO ARMANI was duly produced by the Complainant, as well as proof of the registrations owned throughout the world for these marks. In fact, the ARMANI trademarks are undoubtedly well known throughout the world.
The Complainant owns, among other ARMANI marks, trademark ARMANI EXCHANGE, which is very popular, widely recognized, used and promoted, particularly in the United States of America (hereinafter “USA”), where the Respondent has its domicile.
According to the registrar’s verification response, the disputed domain name was registered by the Respondent on February 28, 2011.
The disputed domain name, as at the date of this decision, does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <armaniexchangeusa.com> bears the famous trademark ARMANI EXCHANGE, associated with the name of the country where it is particularly known, the USA, in a clear attempt to create confusion and mislead the consumers.
The Complainant claims not to have any relationship with the Respondent or has never given the Respondent permission to use its mark or to apply it to any kind of domain name incorporating this mark
The Complainant also states that the Respondent did not reply to the warning letter sent, claiming the illegality of the registration and the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In this Panel’s view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel understands that the Complainant’s evidence suffices to proof its rights on the ARMANI marks, particularly the trademark ARMANI EXCHANGE, which is duly registered in several countries and consequently used regularly in those countries.
The Complainant also produced enough evidence of the worldwide renown of the ARMANI marks.
Further, the Panel finds that the disputed domain name, <armaniexchangeusa.com>, indeed reproduces the mark and furthermore, the addition of the suffix “usa”, an abbreviation of the geographical term for “United States of America”, in a clear reference to the major market for the original ARMANI EXCHANGE products, intentionally leads the consumers to confusion.
Hence, the Panel finds that the first of the elements is present in this dispute.
B. Rights or Legitimate Interests
The Panel understands that the marks ARMANI and ARMANI EXCHANGE are undoubtedly linked to the Complainant, since they are not only registered as a mark in its name in a huge number of countries, but also is used for to identify one of the Complainant’s business and the related goods.
Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s contentions.
Besides, the Complainant provided enough evidence of the renown of their marks, especially in the USA. Hence, the Panel understands that the Respondent should have been aware of the mark and its direct relation to the Complainant.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, under paragraph 4(b) of the Policy.
The Complainant’s trademarks ARMANI and ARMANI EXCHANGE are recognized as being well-known trademarks. In this Panel’s view, the Respondent was aware of the Complainant’s rights on these marks at the time the disputed domain name was registered, due to their notoriety, as well as the fact that Respondent resides in the same jurisdiction where the Complainant has its major business under trademark ARMANI EXCHANGE. These facts indicate that such registration was made in bad faith.
Besides, with regards to the use of the disputed domain name in bad faith, panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Based on that evidence, the Panel finds that the Respondent registered and is using the disputed domain name with the intention of illegally obtaining benefits and harming the Complainant’s reputation in the market.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <armaniexchangeusa.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: February 5, 2012