WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Gray Marketing Group
Case No. D2012-2207
1. The Parties
The Complainant is Giorgio Armani S.p.A., Milan Swiss Branch Mendrisio, Mendrisio, Italy, represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Gray Marketing Group, Hollywood, California, United States of America, self represented.
2. The Domain Name and Registrar
The disputed domain name <misterarmani.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 November 9, 2012. On November 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2012. The Response was filed with the Center on December 4, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on December 20, 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 the well-known ARMANI brand and family of trade marks including, in particular, since 1986, the International registration 502876 for the ARMANI word mark which designates numerous countries worldwide.
The Respondent registered the disputed domain name in August 2010 that resolves to a website for lifestyle products and services.
5. Parties’ Contentions
The Complainant submits that it’s ARMANI and GIORGIO ARMANI trade marks are well known and have been used for more than thirty years throughout the world in relation to a range of goods and services. It says that it owns registered trade mark rights in the ARMANI word mark as noted above and that the disputed domain name is confusingly similar to its ARMANI mark because the addition of the pre-fix “Mister” to its mark which is wholly incorporated into the disputed domain name does not distinguish it, but rather increases the likelihood of confusion with the famous Armani stylist and founder of the brand.
The Complainant further submits that the Respondent is not known by and has not acquired any legitimate rights in the ARMANI mark or name, has no connection or affiliation with the Complainant and is not using the disputed domain name in relation to what could be considered a bona fide offering of goods or services. Further the use of the disputed domain name to link to a site describing fashionable lifestyle items and products and services, which also enables consumers to buy fashion items is indicative of the Respondent’s intention to profit from the use of the disputed domain name by confusing and as a result diverting Internet users to the website, which is not a bona fide use of the disputed domain name.
As to bad faith, the Complainant submits that in view of the worldwide fame attaching to the ARMANI mark the Respondent must have been aware of the Complainant’s mark and its choice to include it in the disputed domain name could not result from mere co-incidence. The Complainant further says that the choice of using the generic word “mister” only serves to underline the Respondent’s intention to exploit the notoriety of the Complainant’s mark. The fact that the Respondent has advertised several other high fashion products on its website and has created direct links from its website to the websites for those products suggests according to the Complainant that the Respondent is making money through pay-per-click links. The Complainant submits that this all points to opportunistic bad faith and is compounded by the Respondent’s failure to satisfactorily explain its conduct following the Complainant’s cease and desist letters and the subsequent registration of <misterarmani.co.uk>.
The Respondent says essentially that it purchased the disputed domain name two years ago from the Registrar and runs the website to which it resolves as a “lifestyle” website. It submits that it does not sell anything from the site and has never profited from a pay-per-click arrangement on the website. The Respondent also submits that it has a clear disclaimer on the website disclaiming any association with the Complainant and its marks and that it does not use the complainant’s logos on its website. It denies that it has received a cease and desist letter from the Complainant in the mail and that it thought that the email correspondence from the Complainant’s legal representatives was fraudulent correspondence.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns registered trade mark rights in the ARMANI word mark as set out above. In addition the Panel accepts that the ARMANI mark and brand name has a very strong reputation in connection with the Complainant and is very well known all over the world.
The disputed domain name wholly incorporates the ARMANI mark and is preceded by the word “mister”. In the Panel’s view the addition of the generic word “mister” does not distinguish the disputed domain name from the Complainant’s ARMANI mark. Similar findings have been made by various UDRP panels’ in a range of cases concerning the ARMANI mark, including GA Modefine S.A>; Giorgio Armani SpA v. Ahmad Haqqi, WIPO Case No. D2007-0834. In fact the Panel considers that the Complainant is most likely correct in its submission that the inclusion of “mister” before the mark ARMANI is even more likely to cause Internet users to associate the disputed domain name with the founder of the ARMANI mark. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s ARMANI mark.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not known by the ARMANI name, has no connection or affiliation with the Complainant and is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent rebuts this case by saying that it runs a lifestyle site at the disputed domain name and does not sell goods from the site or take profit from pay-per-click website links. The Respondent explains that it purchased the disputed domain name because it was available for sale from the Registrar and seems to think that just because the disputed domain name was available that the Respondent has some legitimate right to register and use it.
In the Panel’s view and for the reasons set out below under bad faith, the Respondent has not successfully rebutted the prima facie case made out by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the renown attaching to the Complainant’s mark of which the Respondent must have been aware two years ago upon registering the disputed domain name and also considering the nature of the Respondent’s website as discussed further below, the Panel infers that the Respondent ‘s registration and use of the disputed domain name has not been for bona fide purposes and that accordingly the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the ARMANI mark and of the renown attaching to it at the date of registration of the disputed domain name in 2010 and in fact does not deny as such in its Response. It rather says that if the disputed domain name was available for acquisition from Go Daddy then it must have been available for its use. This of course does not follow and it was incumbent on the Respondent to make its own enquiries or to take its own advice as to whether the disputed domain name incorporating the well-known ARMANI mark could be used for its intended purposes. Considering the subsequent use made of the disputed domain name it is simply not credible for the Respondent to allege that it did not seek to use the disputed domain name, incorporating the Complainant’s well known mark, to attract Internet users to its website. As a result the Panel infers that the disputed domain name was registered in bad faith.
The Respondent disputes that products were available for sale from its website or that it ever received pay- per-click revenue from its website at the disputed domain name. However based on the screenshots of the website put in evidence by the Complainant there are individual product pages on the site for a selection of luxury branded goods under a range of well- known marks and for example there is a “LOUIS VUITTON Sac Weekend” product page including the legend and link “Available on-line”. It appears to the Panel that this is clearly commercial use of some description and it would make little sense for the Respondent to have gone to the trouble and expense of developing such a site if not for commercial purposes and the Panel notes that the Respondent offers no other credible explanation for its time and trouble in developing the website at the disputed domain name.
As a consequence the Panel infers that the Respondent is using the disputed domain name and the renown attaching to the Complainant’s ARMANI mark to drive Internet traffic to the website at the disputed domain name for commercial purposes and that this constitutes use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel notes that this is so in spite of the disclaimer on the Respondent’s website. Internet users are likely to be potentially confused or to arrive at the Respondent’s website as a result of a misconception or false association with the ARMANI mark before they even see the disclaimer, which is often referred to as being akin to initial interest confusion by other UDRP panels. It is the act of unauthorized use and trading on the goodwill attaching to the ARMANI mark in order to drive traffic to the site for commercial purposes that constitutes the act of bad faith in this case.
The Panel’s view of the Respondent’s bad faith is only reinforced by its suggestion that the email cease and desist correspondence from the Complainant’s legal representatives was fraudulent, more particularly in circumstances that the Respondent in fact replied to such correspondence. In addition the Respondent’s action in registering the similar domain name <misterarmani.co.uk> in June 2013 and linking that domain name to its website at the disputed domain name only serves further to compound the view that the Respondent is using the Complainant’s mark to drive Internet traffic to its website at the disputed domain name and that this amounts to bad faith.
As a result the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element 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 <misterarmani.com> be transferred to the Complainant.
Date: December 23, 2012