WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. v. PrivacyProtect.org / Hamid Reza Mosayebi
Case No. D2013-0985
1. The Parties
The Complainant is Giorgio Armani S.p.A. of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
The Respondents are PrivacyProtect.org of Queensland, Australia, and Hamid Reza Mosayebi of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <armani-studio.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 11, 2013.
The Center verified that the Complaint together with the amendment to 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 June 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2013.
The Center appointed Mohamed-Hossam Loutfi as the sole panelist in this matter on July 8, 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 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 and regions including the United States of America, Europe, Australia, Canada and many international registrations. These trademarks have been used intensively throughout the world, as several UDRP 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; Giorgio Armani S.p.A., Milan Swiss Branch Mendrisio and Giorgio Armani S.p.A. v. Chaiyakarn Sudampanthorn, WIPO Case No. D2013-0825.
5. Parties’ Contentions
The Complainant asserts that:
- The disputed domain name <armani-studio.com> is confusingly similar to the Complainant’s famous GIORGIO ARMANI mark.
- At the time when the Respondent registered the disputed domain name, the well-known GIORGIO ARMANI mark was already widely famous and familiar to countless consumers around the globe.
- The registration of the disputed domain name took place with the knowledge of the rights of the
well-known trademark GIORGIO ARMANI which is clear evidence of bad faith.
- The Respondent had no permission from the Complainant and was not licensed to use the disputed domain name.
- The disputed domain name is misleading to Internet users because the average Internet user will assume that the disputed domain name is sponsored by or affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussions and Findings
Scope of the Policy
As required by 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.
A. Identical or confusingly similar
The Complainant must show that the disputed domain name is identical or confusingly similar to the Complainant’s well-known mark. Because the disputed domain name comprises the Complainant’s mark in its entirety with the addition of only generic or required elements, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
B. Rights or legitimate interests
Paragraph 4(b) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name.
The Respondent does not appear to be known by the name “Giorgio Armani”, nor does the Respondent have a license or any sort of permission from the Complainant to use its GIORGIO ARMANI mark in a domain name despite such being asserted at the website at “www.armani-studio.ir”, to which the disputed domain name resolves. The Panel does not view this type of use as bona fide as described in the Policy.
Numerous previous UDRP Panels have recognized that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy above (GA Modefine S.A., Giorgio Armani S.p.A. v. Kim Hontage, supra; GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi, supra; GA MODEFINE SA v. AES OPTICS, WIPO Case No. D2000-0306; GA MODEFINE S.A., Giorgio Armani S.p.A. v. Jung Dong Kwon, WIPO Case No. D2004-1103.
Accordingly, the Panel is confident that the Respondent has taken the disputed domain name without lawful interest to misleadingly and deceptively divert Internet users to its website for commercial gain. See Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241; Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412; and Microsoft Corporation v. Hakan Karabidek, WIPO Case No. DMD2010-0003.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and has established paragraph 4(a)(ii) of the Policy.
C. Registered and used in bad faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel accepts the Complainant’s arguments that the worldwide fame of the ARMANI marks leaves no question of the Respondent’s awareness of those at the time of the registration of the disputed domain names which wholly incorporate the Complainant’s trademarks, as even recognized by numerous previous UDRP panels (GA Modefine S.A., Giorgio Armani S.p.A. v. Kim Hontage, supra; GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi, supra; GA MODEFINE SA v. AES OPTICS, supra; GA MODEFINE S.A., Giorgio Armani S.p.A. v. Jung Dong Kwon, supra).
The Panel finds that the disputed domain name was registered and used in bad faith for the purpose of intentionally attempting to attract for commercial gain, Internet users to its website (allegedly under license from the Complainant) by creating a likelihood of confusion with the Complainant’s mark of such endorsement. (Paragraph 4(b)(iv), Policy)
Therefore, the Panel finds that the Complainant fulfilled the criteria in the Policy, paragraph 4(a)(iii), and the disputed domain name was registered and is being used 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 name <armani-studio.com> be transferred to the Complainant.
Date: July 18, 2013