WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. Swiss Branch, Mendrisio v. Gabriella Chung
Case No. D2013-0821
1. The Parties
The Complainant is Giorgio Armani S.p.A. of Milan, Italy, Swiss Branch, Mendrisio Switzerland represented by Studio Rapisardi S.A., Switzerland.
The Respondent is Gabriella Chung, Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <emporioarmaniwatches.org> 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 May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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 May 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2013.
The Center appointed John Katz QC as the sole panelist in this matter on June 21, 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 Giorgio Armani S.p.A. is a well known Italian company located in Milan, Italy. It is known around the world as Armani, Giorgio Armani, and Emporio Armani, with a range of products including clothing, accessories, beauty products, floral boutiques, foodstuffs, hotels, cafes and clubs. The clothing and accessories product range includes watches.
The Complainant was founded in the 1970s by Giorgio Armani and has become synonymous with high end fashion associated with its prestigious name in the fashion industry. It has extended its range of branded products and services to include, now, fashion accessories of various types. As indicated, these include watches.
The group owns a number of registered trademarks worldwide including in Europe, the United States and Australasia. It also owns a website “www.armani.com” and “www.emporioarmaniwatches.com”. The “www armani.com” website includes an online store. The “emporioarmaniwatches.com” website is also an online store for purchasing men’s and women’s watches bearing the well known names Armani and Emporio Armani and the familiar device trade mark.
The name Armani in its various permutations features regularly in fashion magazines, newspapers and elsewhere. It would be reasonable to describe the family name Armani and its permutations including Giorgio Armani and Emporio Armani as a famous name so that the name when associated with anything else would be recognized as describing the fashion house based in Milan and the products and services offered by the group.
The Complainant has been assiduous in protecting its rights as a number of other UDRP panel decisions concerning the complainant are in evidence.
The Respondent is the owner of the disputed domain name <emporioarmaniwatches.org>. It was registered first on April 5, 2012 and is current to April 5, 2014. It is registered through the Registrar GoDaddy.com LLC.
At the time of this Panel decision the link to the Respondent’s website was not operational. It appears however from the evidence in the Complaint (Annex F) that the disputed domain name resolved to a website that offers for sale Armani branded watches. It is not known if these are genuine or counterfeit. The Complainant says it has not authorized the Respondent to sell Armani branded watches. It is also apparent from the screens printed off (Annex F) that the watches for sale are being offered for sale at substantially reduced prices.
The Complainant contends that whether or not these are genuine Armani watches is not to the point. It has not authorized the Respondent’s use of the trade mark and the Respondent does not therefore comply with any of the usual requirements normally associated with famous marks including quality control and other measures normally put in place by a trade mark owner to protect its trade marks and concomitant reputation and goodwill
5. Parties’ Contentions
The Complainant contends that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and that the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith.
The Complainant further contends that it is a famous name or mark such that any use of the same or similar name or mark by a third party will automatically be associated in the mind of the consumer with the Complainant. Its name and corresponding trademarks are protected by trade mark registrations around the world including relevant classes that give protection for use in relation to watches. Such is the reputation and knowledge of the Complainant’s marks that it is a famous or well known mark. Any unauthorized use of the name or mark is wrong and harmful to the reputation of the Complainant.
The Respondent did not reply to the Complainant’s contentions. The Complainant did send a letter before action dated October 18, 2012 and then a follow up dated November 14, 2012. Neither of these has been responded to by the Respondent.
Although the Respondent is in defaulted, proper inquiry must be carried out to establish as far as possible what it is that the Respondent does or what it could possibly rely upon within the scope of the Policy and Rules by way of defence. Where full disclosure of the nature of the Complainant is given to a Respondent including the sending of a letter before action, and where the Respondent defaults and provides no evidence or submission whatever, an adverse inference can properly be drawn that there is nothing within the Policy and the Rules that the Respondent could put forward and which it might be able to rely upon.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trademarks or service marks and that the disputed domain name is identical or confusingly similar to those rights.
The Complainant has a number of registered trademarks around the world, some of which are attached to the Complaint as evidence. It also has websites including for Armani Watches.
It would also be a matter of common general knowledge that the Complainant is indeed an extremely well known high end fashion house with an enviable global reputation. That is something that is worthy of protection.
The Respondent’s disputed domain name incorporates fully the Complainant’s mark. It adds the descriptive word “watches”. Such an addition, as has been held in a number of other UDRP panel decisions, adds nothing by way of distinction. Merely adding purely descriptive words which define the product or service offered via the website serves only to compound similarity when used in conjunction with a mark to which the Complainant has rights.
Moreover, where the Complainant also has a website at the disputed domain name <emporioarmaniwatches.com> the confusion is virtually complete. The suffix, “.com” or the suffix, “.org”, or any other gTLD suffix can for these purposes be disregarded. So similar are the marks of the Complainant with that used by the Respondent that it is an inescapable conclusion that the disputed domain name is confusingly similarto the Complainant’s mark.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent is in defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The Complainant contends that it has not authorized or licensed the Respondent to use the Complainant’s mark. Indeed the Complainant knows nothing of the Respondent. It does not know if the Respondent is offering for sale online or otherwise genuine or counterfeit Armani branded watches.
The Complainant is entitled to police third party use of its trade marks. That is what registered trademarks are for. Other UDRP panel decisions have shown (e.g. Nokia Corp v David Wills, WIPO Case No. DWS2001-0004, together with others cited by the Complainant) that even an authorized retailer of products sold branded with a trade mark is subject to controls imposed by the owner of a trade mark. Where such controls do not exist and the respondent is merely on-selling genuine trademarked goods in a parallel market, it is usual for the respondent to disclaim authorization from the trade mark owner. Here there is no disclaimer; indeed there is nothing to indicate what the source of the watches is.
It can therefore safely be assumed that the Respondent has no rights or legitimate interests that it can rely upon. It has no authorization from the Complainant and nor has it suggested it has any.
There being no response from the Respondent, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The Complainant contends that its mark is world famous so the registration in April 2012 of the disputed domain name and the associated website must have been carried out by the Respondent for the purposes of unfair trading on the Complainant’s reputation. The registration must therefore be in bad faith and the Panel accordingly so finds.
The Complainant must also establish use in bad faith. The Complainant sent a letter before action and a follow-up, both of which drew no response. As no response either has been provided to the present Complaint, it is entirely reasonable to assume that the Respondent registered the disputed domain name and seeks to use it for commercial purposes to the prejudice of the Complainant. The fact that the website at the disputed domain name at the time of this decision is not operational does not change the Panel’s findings.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 name <emporioarmaniwatches.org> be transferred to the Complainant.
John Katz QC
Date: July 5, 2013