WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Zhifang Huang a.k.a. huangzhifang
Case No. D2011-2292
1. The Parties
The Complainant is Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio of Mandrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Zhifang Huang a.k.a. huangzhifang of Fuzhou, Fujian, China.
2. The Domain Names and Registrars
The disputed domain name <armaninew.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.
The disputed domain name <armaniwholesalemall.com> (together the “disputed domain names”) is registered with GoDaddy.com, LLC. (together the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 28, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 28, 2011, and December 30, 2011, the Registrars transmitted by email to the Center their verification responses 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 regarding the Registrars’ identities and the grounds of the proceeding, the Complainant filed an amendment to the Complaint on January 9, 2012. On January 5, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 9, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 January 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on February 17, 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.
The Registrar of the disputed domain name <armaniwholesalemall.com>, GoDaddy.com, LLC, in response to the verification request from the Center advised that the disputed domain name was locked due to proceedings in the United States District Court for Southern New York. The Complainant had stated in its Complaint that there were no legal proceedings on foot in relation to the disputed domain name. On March 1, 2012, the Panel issued Procedural Order No.1 requiring the Complainant to confirm if legal action had been taken by the Complainant or its related parties in respect of the disputed domain name <armaniwholesalemall.com> and if so to provide details. The Complainant responded on March 2, 2012 that the Complainant had not taken any action but that it could not respond in relation to its related parties unless it had more details of the action. The Panel then issued Procedural Order No.2 on March 8, 2012 requiring the Registrar to provide details of the court action. On March 9, 2012, the Registrar responded providing details that the court proceeding was filed in the U.S. District Court Southern District of New York (Foley Square), Burberry Limited (US) et al v. John Doe 1 et al, under civil docket no. 1:11−cv−08306−TPG. The Complainant on March 9, 2012 filed a submission that the court proceeding clearly had nothing to do with the Complainant, and that although the Respondent in this domain name dispute seems to be one of the defendants in the action in New York, it should have nothing to do with the disputed domain name <armaniwholesalemall.com>.
Paragraph 18(a) of the Rules provides:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Panel agrees with the submissions of the Complainant. There does not appear to be any link to the proceedings brought by Burberry and the rights to the domain name <amarniwholesalemall.com> and in the circumstances of this case determines that it should proceed to a decision.
4. Factual Background
The Complainant is the registered proprietor of the trademarks ARMANI and GIORGIO ARMANI registered and used for different kinds of goods and services, for different classes as 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 35 with registrations in Europe, United States of America, China and many Madrid international trademark registrations. These marks have been registered as early as the 1980s.
The disputed domain name <armaniwholesalemall.com> was registered on June 9, 2011. The disputed domain name <armaninew.com> was registered on January 13, 2011.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain names <armaninew.com> and <armaniwholesalemall.com> are made up of the registered trademark ARMANI to which the generic or descriptive terms “wholesale”, “mall” and “new” have been added. They are therefore are confusingly similar to the Complainant’s registered trademarks AMARNI.
The Complainant submits that the use of these terms actually increases the confusing similarity. The addition of the generic terms “wholesale”, “mall” or “new” that clearly relate to Complainant’s business activity is likely to enhance the confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to the Complainant and that their registration and use are authorized by the Complainant.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain names and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for ARMANI.
Further the Complainant submits that the websites to sell products that are most likely counterfeit but which also display ARMANI trademarks.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the ARMANI trademark and could also have by a simple Internet search confirmed this. The unauthorized sale of products by the Respondent on the website at the disputed domain name <armaniwholesalemall.com> that gives the impression of being a genuine website is clearly use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a very simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop.
A. Language of Proceedings
The language of the Registration Agreement for <armaniwholesalemall.com> is in English. The language of the Registration Agreement for <armaninew.com> is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding for the disputed domain name <armaninew.com> be English on the following grounds:
1. the Complainant, due to its nationality and the place of its registered office has no familiarity with the Chinese language; and
2. the Respondent, has chosen to register a domain name with the unsponsored gTLD “.com”, typically not representing a specific community, and regulated by the policies established by the global Internet community directly through the ICANN process, ruled by English language.
Neither, of these reasons are particularly compelling. The fact the Complainant does not understand Chinese is not of great relevance. The Complainant has a large presence in China and could, if necessary, have chosen a representative who was conversant in Chinese. The second argument goes directly against the spirit of paragraph 11(a) of the Rules.
However, the Panel notes the following:
1. that the language of the Registration Agreement for the disputed domain name <armaniwholesalemall.com> is English;
2 the website associated with the disputed domain name <armaniwholesalemall.com> was before it was shutdown written entirely in English;
3. on the website at the disputed domain name <armaniwholesalemall.com> there is a statement directly linking it to <armaninew.com>. This statement reads: “Where to buy cheap armani products online? armaninew.com is online wholesaler you are looking for”;
4. the two disputed domain names are owned by the same person; and
5. the Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be Chinese.
In the circumstances of this case, the Panel, therefore, determines that English shall be the language of the proceeding. The website under one of the disputed domain name was written entirely in English and designed to do business worldwide in English. There can be no doubt that the Respondent is able to handle these proceedings in English.
B. Identical or Confusingly Similar
The disputed domain name <armaniwholesalemall.com> is made up of the registered trademark ARMANI and descriptive terms, “wholesalemall”. The disputed domain name <armaninew.com> is made up of the registered trademark ARMANI and a descriptive term, “new”. Both disputed domain names are clearly confusingly similar to the registered trademark ARMANI. The first part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
The use made by the Respondent of the website under the disputed domain name <armaniwholesalemall.com> where the Complainant’s trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. The Panel notes that the Complainant only provided evidence of such use on the website under the disputed domain name <armaniwholesalemall.com>. As noted, however this website also provide a link to <armaninew.com>. This link shows a clear connection between the sites.
Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
D. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names <armaniwholesalemall.com> and <armaninew.com> were registered in bad faith and are being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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.”
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 names, <armaniwholesalemall.com> and <armaninew.com>, be transferred to the Complainant.
Dated: March 19, 2012