WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. CW Lee
Case No. D2013-0207
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 CW Lee of Singapore, Singapore.
2. The Domain Names and Registrar
The Domain Names <armaniattitude.com>, <armanicodemen.com> and <armanidiamonds.org> (the “Domain Names”) are registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 30, 2013, 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. On February 8, 2013, the Center sent an email communication to the Complainant requesting an annex, that was missing from the Complaint, be transmitted to it. On the same date, the Complainant sent an e-mail communication to the Center filing the missing annex to the Complaint.
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 February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on March 14, 2013. 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 owns International Registration No. 502876 for the mark ARMANI, in connection with a variety of goods in International Classes 3, 8, 9, 14, 18, 20, 21, 24, 25, and 34, including perfumes, Canadian Registration TMA 794,017 for the mark ARMANI in connection with a wide variety of goods and services, including perfumes. The Complainant also owns International Registration No. 926356 and Canadian Registration No. TMA 764,445 for EMPORIO ARMANI DIAMONDS and design in connection with perfumes and other goods in International Class 3, and United States Registration No. 3,389,273 for the mark EMPORIO ARMANI DIAMONDS and design in connection with perfumes. The Complainant also owns United States Registration No. 3,771,978 and International Registration No. 909843A for the mark ATTITUDE in connection with goods in International Class 3, including perfumes. The Complainant also owns International Registration No. 862342 and United States Registration No. 3,362,274 and Canadian Registration No. TMA 718,213 for the mark ARMANI CODE and design in connection with various goods in International Class 3, including perfumes. The earliest of the Complainant’s registrations was issued in 1986, and all of them were issued prior to the registration of the Domain Names on February 4, 2012.
5. Parties’ Contentions
The Complainant owns trademark rights in the marks ARMANI, EMPORIO ARMANI, which have become very famous throughout the world, as several WIPO panels have found. See, e.g., GA Modefine S.A., Giorgio Armani S.p.A. v. Kim Hongtae, WIPO Case No. D2007-0851, GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834, GA Modefine S.A. v. Namezero.Com, WIPO Case No. D2001-0331. The Domain Names are confusingly similar to the Complainant’s trademarks ARMANI, ARMANI CODE, EMPORIO ARMANI DIAMONDS and ATTITUDE GIORGIO ARMANI.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent from the Complainant to use the Complainant’s marks. The Complainant argues that the Respondent has no rights to or legitimate interests in respect of the Domain Names, and that the Respondent is using the Domain Names to misleadingly divert consumers to a web site that sells perfumes that use the Complainant’s trademarks, as well as perfumes sold under the marks of competitors. The sites hosted on the Domain Names also offer pay-per-click advertisements, which the Complainant contends is further evidence of the Respondent’s bad faith use of the Domain Names. According to the Complainant, these activities constitute evidence of bad faith registration and use of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that the ARMANI mark is a well-known mark, and prior panels have recognized it as such. See, e.g., GA Modefine S.A., Giorgio Armani S.p.A. v. Kim Hongtae, WIPO Case No. D2007-0851, GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834, GA Modefine S.A. v. Namezero.Com, WIPO Case No. D2001-0331. When a well-known mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the well-known mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140. Further, in this case, the confusing similarity is exacerbated by the fact that the Domain Names pair the famous ARMANI mark with names that the Complainant uses for perfumes that are sold under the ARMANI mark, “code,” “diamonds” and “attitude.” Id. (finding confusing similarity in domain names that paired MASTERCARD and PAYPASS trademarks). Under these circumstances, the panel finds that the Domain Names are confusingly similar to the Complainant’s famous ARMANI mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Names or that the Respondent is making a noncommercial or fair use of the Domain Names, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Names to advertise products that are competitive with the Complainant’s products, and the Respondent has not refuted those allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Names were used in connection with web sites that falsely suggested an affiliation with the Complainant and were used to sell competitors’ products. The Respondent did not reply to these contentions. Under the circumstances, the Panel finds that the Respondent has registered and used the Domain Names 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 disputed domain names <armaniattitude.com>, <armanicodemen.com> and <armanidiamonds.org> be transferred to the Complainant.
Date: March 26, 2013