WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. v. ESSENTIAL MALL PTY LTD
Case No. DAU2011-0011
1. The Parties
The Complainant is Giorgio Armani S.p.A. of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is ESSENTIAL MALL PTY LTD of Sydney, Australia, represented by himself.
2. The Domain Names and Registrar
The disputed domain names <armaniwatches.com.au> and <emporioarmaniwatches.com.au> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2011. On March 31, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain names. On April 4, 2011, Aust Domains International Pty Ltd dba Aust Domains, 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 April 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2011. On April 6, 2011, the Center forwarded to the Complainant the email received from the Respondent requesting an extension to the Response due date to May 31, 2011 and requested the Complainant to comment on the Respondent’s extension request. On the same day, the Complainant refused the Respondent’s extension request and the Center informed the parties that given that there did not appear to be exceptional circumstances to grant the extension, the Response due date remained at April 25, 2011. The Response was filed with the Center on April 25, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on April 29, 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 well-known fashion stylist whose business includes clothes, glasses, perfumes, jewellery, watches, confectionery, restaurants and hotels. The Complainant markets its brands through the family name of Armani and the business name of Emporio Armarni. The ARMARNI trademark was first registered in 1986 and the EMPORIO ARMANI trademark was first registered in 1989. The trademarks are registered in many countries including the United States of America, Europe, Australia and Canada.
After the Complainant became aware of the Respondent’s use of the disputed domain names its representative issued a cease and desist letter to the Respondent on October 6, 2009. The Respondent replied stating that “we will be selling Giorgio Armani watches from this website. Australian laws do allow such activity”. The Complainant’s representative sent another letter on October 12, 2009 requesting the Respondent to immediately withdraw the domain name registration. The Respondent replied claiming that the Complainant’s rights were not violated as the Australian Domain Name Administrator had confirmed to the Respondent that Australian domain names are allocated on a first come first serve basis provided the eligibility rules are satisfied.
Once notified of the Complaint the Respondent advised the Center on April 19, 2011 that it had spent AUD 15,000 on building and marketing the two domain names and asked “Is it right or not to ask for compensation?”. The Center responded that it cannot provide legal advice.
5. Parties’ Contentions
The Complainant contends that the notoriety and diffusion of the ARMANI trademarks are proved by articles which constantly appear throughout the world in fashion magazines and in leading newspapers. Also, the Complainant considers such notoriety and trademark rights have been confirmed in several positive decisions rendered under the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”),
The disputed domain names incorporate entirely the Complainant’s house marks ARMANI and EMPORIO ARMANI. The Complainant suggests that the addition of the generic term “watches” is not sufficient to prevent the risk of confusion between the ARMANI trademarks and the disputes domain names. In fact, the idea suggested by the disputed domain names is that it leads to the Complainant’s official sites and that their registration and use are authorized by the Complainant. The word “watches” corresponds to goods for which the ARMANI marks are registered and can be used in connection with or can be viewed as being associated the Complainant’s products.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent has not been commonly known by the disputed domain names and has no connection or affiliation with the Complainant and has not received any license or consent, expressed or otherwise, to use the marks in the disputed domain names or any other use. Also, the Respondent has not acquired any legitimate rights in the disputed domain names or any name corresponding to the disputed domain names. In addition, the Respondent is using the disputed domain names with the intent for commercial gain as the Respondent uses the disputed domain names to misleading divert consumers to promote its activities.
The Complainant contends that the disputed domain names are registered and used in bad faith. The Complainant considers that there is no question that the Respondent was aware of the ARMANI marks at the time of registration of the disputed domain names as the choice of such names could not result from a mere coincidence. The Complainant’s contends that the Respondent’s intention was to exploit the notoriety, the importance and the value of the Armani name and to take advantage from the unlawful use of the trademarks knowing that they were owned by the Complainant. Finally, the Complainant considers the Respondent is using the disputed domain names to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s name and trademarks as to the sponsorship, affiliation and endorsement of the websites by the owner of the trademarks.
The Respondent asserts that it has complied with all Australian laws and that this case is not one of buying a domain name, using it in bad faith and trying to sell it back to the trademark holder for a substantial amount of money.
The Respondent contends that it is acting on the advice it has received from the Australian Domain Name Administrator who advised the Respondent that “.au domain names are allocated on a “first come first served” basis provided the eligibility rules are satisfied. It is important to note also that there is no hierarchy of rights in the domain name space. Essentially, this means, for example, that a trademark does not give an entity a better right to a domain name”.
The Response provides the following explanation for its activities. “We have the very best intentions to grow business of selling Armani watches from the 2 domains, ArmaniWatches.com.au and EmporioArmani Watches.com.au. We have listed only Emporio Armani watches on the disputed sites. Effectively Armarni will benefit from this action, since it is their watches that we sell. All watches are Genuine. It is illegal to sell Fake branded watches in Australia. We have not attempted to “corner the market”, nor do we agree or support such philosophy. We will write the following disclaimer: This website is in affiliation with “www.PrimeWatchStore.com.au” of which genuine Emporio Armani watches are sold from. This website is not in anyway connected with or endorsed by Emporio Armani. We have acted in good faith”.
The Response concludes: “According to current circumstances if we hand over the 2 domain names, we find it fair to be compensated for the amount of $15,000 that has costed for programming, design and marketing of the 2 domains. Furthermore, we would like to become Australian Authorised Armani Watch resellers. We would like to know who to contact and how to comply”.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain names are identical or confusingly similar to a name, 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 names; and
(iii) the disputed domain names have been registered or subsequently used in bad faith.
Although the Policy and the UDRP are two distinct policies, the Panel finds it appropriate to rely on precedent concerning the UDRP in deciding this case as both policies share substantial similarities.
A. Identical or Confusingly Similar
The Complainant provided documentary evidence that it has registered rights in the trademarks ARMANI and EMPORIO ARMANI.
Both the disputed domain names feature the Complainant's trademarks in their entirety together with the generic word “watches”. It has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are identical or confusingly similar to the trademarks in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name.
The Respondent can demonstrate under paragraph 4(c)(i) of the Policy that the Respondent, before receiving any notice of the dispute, was not using the disputed domain names in connection with a bona fide offering of goods or services. The Complainant has asserted that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or otherwise, to use the marks in a domain name or any other use. Instead of rebutting the Complainant’s assertion the Respondent admits in its Response that it wants to grow its business of selling the Complainant’s watches. It also states that it is not an authorized reseller of the Complainant’s watches but wants to become an “Australian Authorised Armani Watch” reseller. Based on the evidence before the Panel it is apparent that the Respondent is actually selling watches through its websites for the disputed domain names and that both websites have links to the Respondent’s primary watch reselling website “www.primewatchstore.com.au”.
According to the WIPO Overview of WIPO Panel Views on Selected URDP Questions, Second Edition (“WIPO Overview 2.0”) a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements that were set out in Oki Data Americas. Inc. v. ASD, Inc., WIPO Case No. D2001-0903. These requirements include:
(i) the Respondent must actually be offering the goods and services at issue;
(ii) the Respondent must use the site to sell only the trademarked goods (otherwise it would be using the trademarks to bait Internet users and then switch them to other goods);
(iii) the site must accurately disclose the registrant’s relationship with the trademark owner; and
(iv) the Respondent must not try to corner the market in all domain names and deprive the trademark owner of reflecting its own mark in a domain name.
In the Panel’s view the Respondent meets requirements (i) and (iv). However, the requirements (ii) and (iii) are not met because, while the websites for the disputed domain names appear to offer for sale only the Complainant’s watches, they have links to the Respondent’s primary website from which a variety of the Complainant’s competitors watches are sold. Also, the websites of the disputed domain names do not identify its relationship to the Complainant.
It is clear to the Panel that the Respondent has chosen to use two disputed domain names that contain the distinctive element of the Complainant's trademarks in their entirety without authorisation by the Complainant. It is also clear to the Panel that the Respondent through its use of the disputed domain names is trying to benefit from the reputation of the Complainant's widely known trademarks to infer websites related to the goods of the Complainant but which bring Internet users to a site which sells the Complainant’s watches and through a link to another site which sell its competitors’ watches. No rights or legitimate interests derive from this type of use of another's trademark. Previous panels have held that rights or legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see, for example, Drexel University v. David Brouda, WIPO Case No. D2001-0067).
In view of the above the Panel is satisfied that the Complainant has demonstrated that the Respondent is not engaged in the bona fide sale of goods and services and does not have rights or legitimate interests in the disputed domain names.
C. Registered or Subsequently Used in Bad Faith
Under paragraph 4b(iv) of the Policy, evidence of registration and use of a domain name in bad faith occurs when ”by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.
In a response to one of the Complainant’s cease and desist letters the Respondent quite clearly states that it will be selling the Complainant’s watches from the websites at the disputed domain names making it clear that the disputed domain names were registered with full knowledge of the Complainant’s marks.
The websites prominently display the Complainant’s trademarks together with photographs and prices of the Complainant’s watches. Both websites contain a link to the Respondent’s principal website “www.primewatchstore.com.au” which displays and sells watches from the Complainant as well as over thirty of the Complainant’s competitors. The Panel is aware that the Respondent has also registered other domain names in a similar style to the current case, such as <swatchwatches.com.au> and <bulovawatches.com.au>, in order to sell other brand name watches.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is no doubt that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain names to bring commercial gain.
On the basis of the above and the Panel’s finding that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondent's conduct falls within 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and used in bad faith.
Before concluding, the Panel considers it necessary to address two aspects of the Response. First, the Panel finds the quoted advice received by the Respondent from the Australian Domain Name Administrator to be somewhat confusing particularly as there is no clear context in which the advice was given. Nevertheless, it is abundantly clear that the reference to the “first come, first served” basis of allocating domain names is qualified by the words “provided the eligibility rules are satisfied”. The Rules provided as evidence in the Complaint specifically include an eligibility rule for a registrant to warrant that “to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”.
Second, with respect to the Respondent’s request for compensation “if we are to hand over the 2 domains” that was made in its Response, the Panel notes that the available remedies under the Policy are limited to the transfer or cancellation of the domain names. Moreover, it is the Panel’s view that there was no bad faith act of attempting to sell the disputed domain names. In all probability the Respondent simply has a belief that there should be some recompense for the cost of developing its two websites. The Panel considers that there is no evidence to suggest that the Respondent purchased the disputed domain names for the purpose of selling them to the Complainant or its competitors.
For all 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 <armaniwatches.com.au> and <emporioarmaniwatches.com.au> be transferred to the Complainant.
Dated: May 13, 2011