WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. wichan poonsawat

Case No. D2012-0845

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 wichan poonsawat of Uthai, Thailand.

2. The Domain Name and Registrar

The disputed domain name <acquadigiobyarmani.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2012. On April 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2012, 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.

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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent sent two email communications to the Center on April 30, 2012 but did not submit any formal response. Accordingly, the Center notified about the commencement of panel appointment procedure on May 18, 2012.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on May 23, 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.

On June 8, 2012, the Panel issued Procedural Order No. 1, requesting the Complainant to take position on its rights with regard to some of the relied-upon trademarks, which are registered for GA MODEFINE S.A., Switzerland. The Complainant complied with the request of Procedural Order No. 1 on June 12, 2012.

4. Factual Background

The Complainant is the Swiss branch of Giorgio Armani S.p.A. Milan, a company incorporated under Italian law. The Complainant is primarily in the business of fashion and luxury goods.

As evidenced in Annex C to the Complaint as well is in the response by the Complainant to Procedural Order No. 1 submitted on June 12, 2012, the Complainant has registered a number of worldwide known trademarks, inter alia the following trademarks:

ARMANI

GIORGIO ARMANI

ACQUA DI GIO’

GIO‘ De GIORGIO ARMANI

GIO’

Said trademarks are registered for various kinds of goods and services, including perfumes and clothing in classes 3 and 25. Relied-upon registrations include Community Trademarks (GIO’, ACQUA DI GIO’), International trademarks designating numerous countries in Europe, Africa, Asia (ARMANI, GIORGIO ARMANI, ACQUA DI GIO’) and national registrations for the USA (ACQUA DI GIO’) and Thailand (ARMANI, GIORGIO ARMANI, ACQUA DI GIO’).

Furthermore, the Complainant or affiliated group companies have registered a large number of domain names consisting of or including the words “armani” or “giorgio armani”, as evidenced in Annex F to the Complaint.

The Respondent appears to be an individual based in Uthai, Thailand.

The disputed domain name was registered on December 1, 2011 and resolved, at the time of filing, to a page offering sale of a wide range of products (perfumes), bearing both the Complainant’s products as well as other trademarks.

The Complainant sent a cease and desist letter by email to the Respondent on January 23, 2012, who did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant made the following contentions:

The Complainant is the legal successor of GA MODEFINE S.A., Switzerland. Trademark registrations previously in the name of GA MODEFINE S.A. are now registered to the name of the Complainant.

The disputed domain name is confusingly similar to the Complainant’s trademarks. It incorporates the trademarks ARMANI, GIO’ and ACQUA DI GIO’ in their entirety (referring to recent panel decision GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090 presented in Annex E to the Complaint). The confusion is enhanced by the fact that through the website linked to the disputed domain name it is possible to buy a wide range of products (perfumes), bearing both the Complainant’s trademarks and trademarks of the Complainant’s competitors. This leads to the assumption that the disputed domain name leads to one of the Complainant’s official websites or that its registration and use is authorized by the Complainant.

As a result, it clearly appears that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the trademarks as well as the existence of the Complainant’s goodwill preceded the registration of the disputed domain name for years. The Respondent is not affiliated with the Complainant and not authorized to use the well-known trademarks. Given the fact that the Complainant’s trademarks are well-known, the Respondent could not have a legitimate interest in the disputed domain name. The Respondent did not demonstrate any use of the disputed domain name in connection with a bona fide offering of goods or services.

It can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name.

It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name, because the Complainant’s trademarks are well-known. Based on previous UDRP decisions, when a domain name is so obviously connected with a well-known trademark, its very use by someone with no connection to the trademark may suggest opportunistic bad faith. Based on previous UDRP decisions, the knowledge of a corresponding trademark at the time of the domain name’s registration suggests bad faith. The combination of the words “acqua di gio by armani” could not result from coincidence. The Respondent had the intent and is trading on the goodwill of the Complainant’s famous mark to intentionally attract Internet users to the Respondent’s page for the purpose of commercial gain.

Also, a cease and desist letter had been sent to the Respondent, who did not reply.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent sent two email communications to the Center on April 30, 2012, following notification about the Complaint. These email communications expressed the will of the Respondent to “remove” the disputed domain (“Now I remove my domain name form my host.”) but did not contain any further statements and do not constitute a formal response.

6. Discussion and Findings

The Complainant requests that the language used in the proceedings be English. Pursuant to the information of the Registrar in its email communication dated April 20, 2012, the language used by the Respondent for registration of the disputed domain name is English. The language used on the website at the disputed domain name is English. It must therefore be assumed that the Respondent is familiar with the English language. The language of present proceedings is therefore English according to paragraph 11(a) of the Rules.

Pursuant to paragraph 4(a) of the Policy 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 has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted. Paragraph 5(e) of the Rules stipulates that if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. As the Respondent did not provide a formal response and did not include any substantiated contentions in his informal reply and the Panel cannot see any exceptional circumstances, the Panel decides the dispute based upon the Complaint and the statements and documents submitted.

A. Identical or Confusingly Similar

The Complainant is holder of a number of Community Trademarks (GIO’, ACQUA DI GIO’), International trademarks designating numerous countries in Europe, Africa, Asia (ARMANI, GIORGIO ARMANI, ACQUA DI GIO’) and national registrations for the USA (ACQUA DI GIO’) and Thailand (ARMANI, GIORGIO ARMANI, ACQUA DI GIO’). Relied-upon trademarks were registered before the registration of the disputed domain name.

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark(s) alone, independent of the location of the trademark, the goods or services for which the trademark is registered, irrespective of how the disputed domain name is used or other factors, usually considered in trademark infringements. Consequently, the threshold test for confusing similarity under the Policy involves a comparison between the trademark as such and the disputed domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark generally needs to be recognizable as such within the disputed domain name. As domain names are alphanumeric strings the confusing similarity test under the Policy typically involves only the alphanumeric elements of the trademarks involved (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

All of the relied-upon trademarks are word marks in this case. Consequently, the Panel finds it appropriate to compare the alphanumeric elements / strings, namely “acqua di gio’” and “armani”. The Panel also finds that the generic top-level domain (gTLD) suffix in the disputed domain name, namely “.com”, can – as usual under the Policy – be disregarded.

The disputed domain name wholly incorporates several of the Complainant’s trademarks, especially the word marks GIO’, ACQUA DI GIO’ and ARMANI. The only addition to the combination of words is the preposition “by”. This addition does not eliminate any confusing similarity between the Complainant’s trademarks and the disputed domain name, as the addition is not distinctive.

Taking into account that the Complainant is well-known worldwide for its ARMANI trademarks, the use of the disputed domain name leads – in connection with the page selling products bearing the Complainant’s and other trademarks – to a risk that Internet users may actually believe there is a real connection between the disputed domain name and the Complainant and/or its goods, although the Panel is of the opinion that such risk would not be required for satisfying the first element of the Policy.

The Panel thus finds already by a comparison between the Complainant’s trademarks GIO’, ACQUA DI GIO’ and ARMANI as such and the disputed domain name itself that the disputed domain name is confusingly similar to these trademarks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy clearly stipulates that the overall burden of production rests with the Complainant. The Panel recognizes that the burden of production could result in the impossible task of proving a negative, requiring information that is only within the knowledge of the Respondent, who did not reply in a substantiated way.

The Panel follows the view that a prima facie case regarding the lack of rights and legitimate interests can be sufficient under the Policy and that once such prima facie case is made, the burden of production shifts to the Respondent and if the Respondent fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, generally the requirements of the Policy, paragraph 4(a)(ii), are met.

On the other hand the Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use or to register any domain name incorporating any of the Complainant’s trademarks or any other similar sign. The Panel follows the Complainant’s argument that in the absence of any license or permission to use a well-known trademark there is prima facie no actual or contemplated bona fide or legitimate use of the disputed domain name incorporating the well-known trademarks. Furthermore, the Panel finds that using the disputed domain name to resolve to a website offering goods bearing the Complainant’s and its competitors trademarks is prima facie showing that the Respondent has no rights or legitimate interests.

Consequently, the Respondent would have the burden to show rights or legitimate interests in the disputed domain name.

As the Respondent did not reply in a substantiated way, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

The disputed domain name was registered on December 1, 2011, years after many of the Complainant’s trademarks had been registered.

Also in 2011, all of the relied-upon trademarks were well-known and widely used also in Thailand, at the location of the Respondent. Therefore, the Panel follows the argument of the Complainant that it is implausible that the Respondent was unaware of the Complainant’s trademarks, or the names of its goods, when the Respondent registered the disputed domain name. The choice of the disputed domain name is certainly not coincidental anyway and even less so given the prominence of the Complainant’s products and goodwill worldwide. Consequently, the Panel considers that the Respondent knew Complainant’s trademarks, and the Respondent must have been aware that the use of the disputed domain name could be an infringement of the Complainant’s (trademark) rights. In this knowledge, the Respondent registered the disputed domain name incorporating the several of the Complainant’s well-known trademarks. Because of the knowledge of the Complainant’s trademarks, which especially is evidenced by the website of the disputed domain name resolving to offers of goods bearing the Complainant’s and its competitors’ trademarks, it is again implausible that the Respondent was unaware of the Complainant’s products and trademarks and although the Respondent had this knowledge, the Respondent registered the disputed domain name.

Therefore, the Panel finds that the disputed domain name was registered in bad faith.

The disputed domain name resolved, at the time of the filing, to a third party website offering goods bearing the Complainant’s and its competitors trademarks. The Respondent did not take steps to change this although the Complainant had sent out a cease and desist letter. At the latest after the cease and desist letter, the Respondent was aware of the Complainant’s trademarks. As the domain name registrant generally is responsible for the content appearing on a website at its domain name, even if the registrant may not be exercising direct control over such content, the Respondent is responsible for the content, especially as Internet users are likely to get the idea that the Respondent’s website is endorsed or sponsored by the Complainant.

Therefore, the Panel finds that the the disputed domain name is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel therefore finds already on this base that the Complainant has established the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <acquadigiobyarmani.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Dated: June 21, 2012