WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Basil Kakis
Case No. D2011-2219
1. The Parties
The Complainant is Giorgio Armani S.p.A. Milan Swiss Branch, of Mendrisio, Switzerland represented by Studio Associato Carlo Sala, Switzerland.
The Respondent is Basil Kakis of Rockville, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <armani-code.com> is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2011, GoDaddy.com, Inc. 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 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on January 16, 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 the owner of marks for GIORGIO ARMANI, ARMANI, and ARMANI CODE among others. Those marks are registered in various jurisdictions, including the United States of America, and various classes. The Complainant provides evidence of its registration of its ARMANI CODE mark as an international mark. The Complainant’s marks are well-known, and there have been previous decisions under the Policy in the Complainant’s favor, including the cases involving the Complainant’s marks relevant in this case.
According to the “creation date” in the WhoIs record, the disputed domain name was registered on April 1, 2011.
Evidence attached to the Complaint indicates that, at some time (not identified in the Complaint), the disputed domain name linked to a website featuring the Complainant’s products. The website contained the prominent heading “Armani Code” and “Find out the best fragrance from Armani”, and contained links to websites such as “www.amazon.com”.
5. Parties’ Contentions
The Complainant notes that the disputed domain name entirely incorporates its ARMANI and ARMANI CODE trademarks. For that reason, the Complainant says that the use of the disputed domain name is likely to create confusion and lead customers to believe that the disputed domain name is affiliated with the Complainant. For support, the Complainant points to previous cases under the Policy involving its marks, including GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834.
The Complainant says that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name, has not acquired any legitimate rights or interests in any name corresponding to the disputed domain name, and otherwise has no connection with the Complainant.
The Complainant also argues that the Respondent has acted in bad faith. Given the fame of the Complainant’s marks, the Respondent’s choice of the disputed domain name cannot have been by coincidence, and the Respondent would have been aware of the Complainant at the time it registered the disputed domain name. The Complainant says that, by registering the disputed domain name the Respondent has attempted to sell, rent or transfer it to the Complainant to obtain some personal advantage. The Respondent was officially informed of the Complainant’s rights by a cease and desist letter and a subsequent reminder requesting the transfer of the disputed domain name, to which the Respondent has not replied. The Respondent’s bad faith is also demonstrated by its linking of the disputed domain name to a website for the sale of Armani Code perfumes. The Complainant says that this demonstrates that the Respondent’s intention was to exploit the notoriety of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
There is no doubt that the Complainant relevantly “has rights” in its marks, for the purpose of paragraph 4(a) of the Policy. The Complainant provides supporting evidence of those rights. Those rights have also been recognized in multiple previous cases under the Policy. See e.g., Giorgio Armani S.p.A. v. lv kefeng, WIPO Case No. D2011-0740 in relation to the Complainant’s ARMANI CODE and ARMANI marks. (“Complainant’s well established international presence ensures that its trademarks are known by consumers beyond the jurisdictions corresponding to Complainant’s trademark registrations.”)
The Complainant’s ARMANI and ARMANI CODE marks are wholly incorporated in the disputed domain name. The entire incorporation of a complainant’s mark, in numerous prior cases under the Policy, has been found sufficient for a finding of a confusing similarity. (See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.)
The disputed domain name is only relevantly different from the Complainant’s mark by the inclusion of a hyphen between “armani” and “code”. It is well established that the “.com” extension, being a necessary function of the domain, may be disregarded for the purpose of comparison under this ground. A number of previous UDRP cases, including cases specifically involving the Complainant’s marks, have found that a hyphen does not distinguish the domain name from a trademark in which a complainant has established rights. See e.g., Giorgio Armani S.p.A. v. lv kefeng, WIPO Case No. D2011-0740.
Disregarding the hyphen and the “.com” extension, the disputed domain name is self-evidently identical to the Complainant’s ARMANI CODE mark.
B. Rights or Legitimate Interests
In relation to this element of the Policy, it is well established that the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that a complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
While the Complainant’s arguments against the Respondent are not extensive, the Panel considers that the Complainant has established a sufficient prima face case against the Respondent in relation to this second element under the Policy. The brevity of the Complainant’s arguments are in part understandable, given the weight of evidence supporting its case, the strength of its marks, the identical nature of the disputed domain name and those marks, and the apparent lack of evidence casting doubt on the Complainant’s arguments, and the multiplicity of previous cases under the Policy in the Complainant’s favor.
The burden is therefore on the Respondent to rebut the prima facie case against it. However, the Respondent has failed to respond. There is otherwise little evidence in the case file to indicate that the Respondent may have a right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
The Panel finds that the Complainant has established that the disputed domain name was registered, and has been used, in bad faith under paragraph 4(a)(iii) of the Policy. The Complainant’s marks are well-known, and the Respondent must have known of those marks when it registered the disputed domain name. The content of the Respondent’s website – referring to the Complainant’s products - strongly supports this conclusion. The Respondent has registered a domain name which wholly incorporates the Complainant’s well-known mark. There is little evidence in the case file which suggests that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent has chosen to submit no response. The Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <armani-code.com>, be transferred to the Complainant.
James A. Barker
Dated: January 30, 2012