WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Jose Hoane

Case No. D2016-1098

1. The Parties

The Complainant is Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Masotti & Berger, Italy.

The Respondent is Jose Hoane of Burgess Hill, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <emporioarmaniwatch.watch> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2016.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 11, 2016. 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 Swiss branch of the company Giorgio Armani S.p.A. Milan, which owns several registrations for trademarks worldwide comprising the element ARMANI, including EMPORIO ARMANI. The trademarks cover different kinds of goods and services, including watches and clothing. The UK Registration No. 00001372467, for EMPORIO ARMANI (word and design mark) filed on January 31, 1989 and granted on May 24, 1991, covers, among other goods, watches, in international class 14.

The Respondent is Jose Hoane of Burgess Hill, United Kingdom.

The disputed domain name was registered on June 29, 2015. Evidence offered by the Complainant shows that the disputed domain name resolved to a website offering watches with the Complainant’s trademarks ARMANI and EMPORIO ARMANI.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <emporioarmaniwatch.watch> incorporates its trademarks ARMANI and EMPORIO ARMANI entirely.

According to the Complainant, the addition of the word “watch” is not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademarks. Since the Complainant’s trademarks comprising ARMANI cover watches, the fact that the disputed domain name contains the word “watch” and repeats it as the generic Top Level Domain (“gTLD”) will lead Internet users to believe that the disputed domain name is one of the Complainant’s official websites and that its registration and use have been authorized by the Complainant.

The Complainant argues that the likelihood of confusion is enhanced in this case because the disputed domain name resolves to a website offering watches with the Complainant’s trademarks for sale. The Complainant does not know if the cited watches are genuine or not.

The Complainant cites GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090, and Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. emporio armani watches, WIPO Case No. D2012-0928, in which the trademarks ARMANI and EMPORIO ARMANI, respectively, were incorporated in the domain names. In both cases, the Panel found that there was confusion between the domain names and the Complainant’s trademarks.

No authorization to use the trademarks ARMANI and EMPORIO ARMANI or to register domain names encompassing these marks has been granted to the Respondent by the Complainant. The Respondent has no connection or affiliation with the Complainant.

The Complainant alleges that the Respondent has not acquired any rights or legitimate interests in the disputed domain name and that the Complainant has not permitted or licensed the Respondent to use its trademarks or to register domain names incorporating its trademarks.

It argues that the Respondent is using the disputed domain name in bad faith to identify a page containing images of watches bearing the Complainant’s trademarks and offering them for sale. The Complainant says it does not know if the goods advertised on the website related to the disputed domain name are original or not and mentions UDRP decisions finding that even authorized retailers cannot register domain names bearing the licensor’s trademarks if not expressly authorized (Nokia Corporation v. David Wills, WIPO Case No. DWS2001-0004; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262).

The Complainant argues that the Respondent intends to profit from the use of the disputed domain name, which is confusingly similar to the Complainant’s renowned trademarks, diverting Internet users to its website in order to generate traffic on the web and gain for its activity.

The Complainant also alleges that the Respondent could not argue that it did not know of the Complainant’s trademarks, in view of their fame worldwide.

It argues that during the pre-complaint correspondence, the Respondent, after being warned about his infringement, asked for compensation in exchange for the disputed domain name.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per 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;

(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 evidence presented demonstrates that the Complainant is the owner of the trademarks ARMANI and EMPORIO ARMANI in several countries, including in the United Kingdom, in different classes to cover watches, among other goods. The Complainant’s trademarks predate the disputed domain name.

The disputed domain name comprises the Complainant’s trademarks ARMANI and EMPORIO ARMANI with the addition of the word “watch.”

The dominant element of the disputed domain name is “Emporio Armani”, which is identical to the Complainant’s trademark EMPORIO ARMANI.

The expression “watch” is not enough to avoid confusion by Internet users, since it gives the idea of a website related to watches from the Complainant.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not denied the Complainant’s contention that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no authorization to use the Complainant’s trademarks or to register domain names containing the trademarks ARMANI and EMPORIO ARMANI.

The Respondent is not known by the trademark EMPORIO ARMANI. Further, even if the goods on offer under the disputed domain name are genuine, the website would not satisfy the Oki Data criteriafor the bona fide offering of goods for resale as there is no accurate and prominent disclosure of the Respondent’s lack of a relationship with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.3.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademarks ARMANI and EMPORIO ARMANI are registered by the Complainant in several countries, including in the United Kingdom, where the Respondent is domiciled, also to cover watches.

The disputed domain name uses the trademarks ARMANI and EMPORIO ARMANI with the addition of the word “watch,” which does not avoid confusion with the Complainant’s trademark.

The Respondent has no rights or legitimate interests in using the trademarks ARMANI and EMPORIO ARMANI.

The website at the disputed domain name offers goods for sale, including goods with the Complainant’s trademarks ARMANI and EMPORIO ARMANI. However, although the Respondent has no authorization to sell goods with the Complainant’s trademarks, his website creates this impression.

In view of the above reasons, this Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks.

This Panel finds that the Respondent’s intention of taking undue advantage of the trademarks ARMANI and EMPORIO ARMANI as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 disputed domain name <emporioarmaniwatch.watch> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: July 25, 2016