WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.P.A. Swiss Branch Mendrisio v. Brendhan Hight/Perfect Privacy LLC
Case No. D2015-0491
1. The Parties
The Complainant is Giorgio Armani S.P.A., Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Legalitax Studio Legale e Tributario, Italy.
The Respondents are Brendhan Hight of Nevada, the United States of America ("USA"), and Perfect Privacy LLC of Florida, USA.
2. The Domain Name and Registrar
The disputed domain name <acquadigio.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2015, 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 April 1, 2015 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 amended Complaint on April 2, 2015.
The Center verified that the Complaint together with the amended 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 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2015.
The Center appointed Dr. Clive Trotman as the sole panelist in this matter on May 6, 2015. 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 purveyor of fashion and luxury goods including clothes, many kinds of accessories, perfumes, furniture and food, and provides hotel services. The Complainant's products have been associated with famous people in acting and sport. The founder, Giorgio Armani, has been featured in a Guggenheim Museum retrospective and has published his biography in ten languages.
The Giorgio Armani group has distributed its products in 36 countries and is identified with brands including Giorgio Armani, Emporio Armani, AJ Armani Jeans and Armani collections.
The Complainant owns a number of trademarks for ACQUA DI GIO' for perfumes and clothes of which the following are representative:
ACQUA DI GIO', United States registration, principal register, registered September 1, 1998, registration number 2185423 (serial number 75226000), class 3;
ACQUA DI GIO', international trademark, registered January 14, 1997, registration number 668975, classes 3, 25;
ACQUA DI GIO', Community Trademark, International Office for Harmonization in the Internal Market, registered January 30, 2001, registration number 505669, classes 3, 25;
ACQUA DI GIO', Swiss Federal Institute of Intellectual Property, registered January 14, 1997, registration number P-435049, classes 3, 25.
The Complainant also owns trademarks for GIO' and GIO' DE GIORGIO ARMANI.
The Complainant is also the owner of the domain name <acquadigio.it>.
Since there appears to be one Respondent representing the business Marchex Sales LLC, and a privacy service is in use, it will be appropriate to refer to the Respondent in the singular and impersonally.
Background information about the Respondent has been provided by the Complainant. The Complainant says that the Respondent is a professional domain name registrant specialising in the registration, monetization and sale of generic-word domain names.
The disputed domain name was registered on April 24, 2004.
5. Parties' Contentions
The Complainant contends that it is the owner of the trademarks listed in section 4 above and has produced copies of online registration documents for these and others as evidence.
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademark ACQUA DI GIO'. It is submitted that the generic Top-Level Domain ("gTLD") designation of the disputed domain name must be disregarded in the assessment of confusing similarity. The disputed domain name incorporates the Complainant's trademark ACQUA DI GIO' and also incorporate the trademark GIO' and the element "Gio'" of the trademark GIO' DE GIORGIO ARMANI.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the disputed domain name, has no connection with the Complainant and has never been authorised to use the Complainant's trademarks.
The Complainant says the use of the disputed domain name is commercial since it contains numerous pay-per-click links to a the sources of a variety of goods and services but does not constitute bona fide use because it causes confusion with the Complainant and is damaging to the Complainant's image.
The Complainant says the disputed domain name is not based on a generic word or a single dictionary word.
The Complainant further contends that the disputed domain name was registered at the time in bad faith and is being used in bad faith. It was registered in 2004, whereas the Complainant's perfume to which the trademark refers was launched in 1996.
The Complainant says it is indicated that the disputed domain name may be for sale for at least USD 10,000.
The Complainant says that one of the Respondent's uses of the disputed domain name may reasonably be inferred to be the earning or pay-per-click or click-through revenue, which relies on confusion between the Complainant's trademark and the name of the Respondent's website to which the disputed domain name resolves. The Complainant submits that opportunistic bad faith exists where a domain name has been registered by a registrant having no connection with the products or services to which it obviously refers.
The Complainant contends that bad faith should also be found because the Complainant is prevented from registering the domain name that corresponds to its trademark ACQUA DI GIO'.
It is further contended that, in the circumstances, the Respondent's use of a privacy service further supports an inference of registration and use in bad faith.
The Complainant has cited a number of previous WIPO decisions under the Policy that the Panel is invited to consider.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the registered trademark ACQUA DI GIO'.
A ".com" domain name cannot contain spaces or apostrophes. Thus the Complainant's trademark ACQUA DI GIO', written without spaces or apostrophes, becomes ACQUADIGIO, which corresponds precisely to the disputed domain name. The Panel finds the disputed domain name to be confusingly similar and effectively identical to the Complainant's trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that it has not in any way licensed or permitted the Respondent to use the Complainant's trademark and that the Respondent has no rights or legitimate interests in the corresponding disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The above circumstances are without limitation and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
Screen captures of the website pages to which the disputed domain name resolves produced as evidence, reveal a number of links and link headings, many of them referring to water, perfume or music. Headings include "Perfume Sales", "Acqua di Gio Armani", "Giorgio Armani mania Perfume" and "Giorgio Perfume". The links lead to websites selling variously perfumes, cosmetics, toilets, water fittings, clothes, shoes and other things. The use of the disputed domain name is evidently for an offering, directly or indirectly, of goods for sale, but the Panel does not find the use to be bona fide in the terms of paragraph 4(c)(i) of the Policy because it trades on the registered trademark of the Complainant.
The Respondent has adduced no evidence to the effect that it has been commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy), and as found above, its use is not noncommercial (paragraph 4(c)(iii) of the Policy). The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
On the evidence of the screen captures of the website pages to which the disputed domain name has resolved, one of its uses has been to refer Internet visitors to other websites by means of hyperlinks. Having regard to all the evidence, it may reasonably be inferred that the Respondent has not arranged this service for other than remunerative reasons. The links lead to advertisers and are in accordance with the standard business arrangement whereby they are likely to result, directly or indirectly, in the referring website owner receiving a commission for each referral. This is the pay-per-click or click-through business model that is widely and legitimately practiced.
The operation of a website primarily for the purpose of generating pay-per-click revenue depends for its success on the attraction of visitors in order to present them with referral links. The operation ceases to be legitimate if another's trademark is incorporated into the domain name without authority or good reason as the means of attracting visitors. The Panel finds that the Respondent has registered the disputed domain name for the purpose of attempting to attract Internet visitors to the corresponding website for commercial gain by confusion with the Complainant's trademark. Registration and use of the disputed domain name in bad faith by the Respondent are found under paragraph 4(b)(iv) of the Policy.
Some pages of the website to which the disputed domain name resolves state, "This domain name may be for sale", and provide a link for further information. The link resolves to the website of Archeo Domains which reiterates, "AcquaDiGio.com may be for sale". The Archeo Domains website, under the heading "Submit Price Request", says "The Archeo Domains portfolio consists of premium domain names that may cost between $10,000 to over six figures each. While the current average sales price is $30,000, each domain is individually appraised based on a series of unique attributes and variables and not all domains may be available for purchase".
Having regard to all the evidence, the Panel finds it to be more probable than not that the Respondent has also registered the disputed domain name with the intention of selling or renting it profitably to either the Complainant or a competitor of the Complainant. It is common for domain name traders not to approach the corresponding trademark owner but to await an offer to buy, in order to try to avoid an adverse finding under paragraph 4(b)(i) of the Policy. In the meantime the disputed domain name has evidently been monetized to generate pay-per-click revenue. The provisions of paragraph 4(b) of the Policy are without limitation. Irrespective of whether the profitable sale of the disputed domain name was the Respondent's primary intention, the Panel finds sufficient evidence of additional bad faith registration and use in the Respondent's indication that sale is a possibility and its referral of inquirers to the Archeo Domains dealing agency.
The Panel finds registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) 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 <acquadigio.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: May 14, 2015