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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. v. Mercedes Peralta

Case No. D2017-0503

1. The Parties

The Complainant is Giorgio Armani S.p.A., Milan, Italy, represented by Legalitax Studio Legale e Tributario, Italy.

The Respondent is Mercedes Peralta, Aventura, Florida, United States of America (“USA” or “US”).

2. The Domain Name and Registrar

The disputed domain name <thearmaniresidences.com> (“Disputed Domain Name”) is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2017. On March 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2017, 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 March 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2017.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 28, 2017. 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 and lifestyle company, which was founded in 1975 by Giorgio Armani, a famous style icon. The Complainant designs and sells clothing, accessories and furniture, and also provides food, hotel and interior design services. The Complainant owns several trade mark registrations worldwide for the ARMANI (US ARMANI trade mark No. 2009673, registered on October 22, 1996), ARMANI/CASA (International trade mark No. 1337989, registered on October 20, 2016), ARMANI CASA (US trade mark No. 76076847, registered on September 14, 2004), ARMANI HOTELS & RESORTS (International trade mark No. 1075756, registered on March 14, 2011) and ARMANI RESIDENCE MARASSI (International trade mark No. 1084351, registered on April 18, 2011) trade marks (“Armani Trade Marks”).

The Respondent is an individual based in the USA, who registered the Disputed Domain Name on June 25, 2016.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(a) The Complainant owns several trade mark registrations worldwide for the Armani Trade Marks. The Disputed Domain Name was registered by an individual in the USA on June 25, 2016. The Disputed Domain Name resolves to a website that advertises accommodation for sale, which is located in Miami, Florida. The accommodation is allegedly called “Armani Residences”. The website to which the Disputed Domain Name resolves, prominently features the Complainant’s ARMANI/CASA trade mark and uses the name Giorgio Armani and his image.

(b) The Disputed Domain Name is confusingly similar to the Complainant’s Armani Trade Marks. The Disputed Domain Name incorporates the Complainant’s ARMANI trade mark in its entirety. It also incorporates the distinctive part of the Complainant’s ARMANI RESIDENCE MARASSI trade mark, and is very similar to the Complainant’s ARMANI/CASA and ARMANI HOTELS & RESORTS trade marks. The only minor differences between the Disputed Domain Name and the Complainant’s ARMANI trade mark is the use of the word “the” and “residences”. The addition of such descriptive and generic terms does nothing to dispel the confusing similarity between the Disputed Domain Name and the Complainant’s ARMANI trade mark. The likelihood of confusion may even be higher due to the use of the word “residences", since the Complainant is involved in the provision of hotels and residential services. The use of the generic Top-Level Domain (gTLD) extension “.com” can be disregarded. The Disputed Domain Name misleads users into believing that the Disputed Domain Name is authorised by the Complainant and its resulting website is an official website of the Complainant, which is false.

(c) The Respondent is not commonly known by the name “Armani” and has no affiliation or connection with the Complainant, and is not authorised or licensed by the Complainant to use its trade marks. The Disputed Domain Name resolves to a website of a commercial nature, as it offers accommodation for sale called “Armani Residences”. The Respondent is using the reputation of the Complainant and its Armani Trade Marks in order to attract visitors to the Disputed Domain Name and the resulting website for commercial gain. This cannot amount to a fair commercial use or a bona fide offering of goods or services.

(d) In light of the Complainant’s worldwide fame, the Respondent must have been aware of the Complainant and its Armani Trade Marks at the time she registered the Disputed Domain Name. The Complainant registered and is using the Disputed Domain Name in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website -offering “Armani Residences” for sale- by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

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

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has registered rights in the Armani Trade Marks, based on its registrations in several different jurisdictions, including its International trade mark registrations. The ARMANI trade mark was first registered by the Complainant in 1996, and the ARMANI RESIDENCE MARASSI trade mark was first registered by the Complainant in 2011.

The Disputed Domain Name incorporates the Complainant’s ARMANI trade mark in its entirety, the only difference being the use of the generic words “the” and “residence”. The Disputed Domain Name is also confusingly similar to the Complainant’s ARMANI RESIDENCE MARASSI trade mark, save that the Disputed Domain Name incorporates the word “the” as a prefix, and does not include the word “Marassi”.

It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).

It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ARMANI trade mark and ARMANI RESIDENCE MARASSI trade mark, and paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Complainant registered and began using the Armani Trade Marks many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not provided any evidence to demonstrate that she has become commonly known by the Disputed Domain Name, or a name corresponding to it.

The Disputed Domain Name resolves to a website (“Respondent Website”) that advertises for sale accommodation located in Miami, Florida. Such accommodation is allegedly called “Armani Residences”. The Respondent Website prominently displays a logo that features the Complainant’s ARMANI/CASA trade mark, and also includes several references to Giorgio Armani, including his image, and the ARMANI trade mark. The Respondent Website also replicates the same look and feel of the Complainant’s official websites found at “www.armanicasa.com” and “www.armanihotels.com”.

The Panel finds that the Respondent is not using the Disputed Domain Name to make a bona fide offering of goods or services, or for any purpose that amounts to legitimate noncommercial or fair use. The Respondent is clearly seeking to take advantage of the Complainant’s well-known Armani Trade Marks in order to mislead users into believing that the Disputed Domain Name resolves to a website that is affiliated with the Complainant in order for commercial gain (i.e., to get users to purchase the alleged accommodation that is offered for sale).

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has been using the Armani Trade Marks for many years, prior to the registration of the Disputed Domain Name, and is well-known worldwide. Further, the Respondent Website purports to offer for sale accommodation that has been allegedly designed by or is affiliated with the Complainant. The Respondent Website has the same look and feel as the Complainant’s official websites, and prominently displays and uses the Complainant’s ARMANI and ARMANI/CASA trade marks. It also includes references to and images of Giorgio Armani and the ARMANI trade mark. The Respondent therefore must have been aware of the Complainant at the time she registered the Disputed Domain Name, and sought to register and use the Disputed Domain Name in order to take advantage of the Complainant’s reputation and its well-known Armani Trade Marks for profit.

In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name with the intent of misleading users into believing that the Disputed Domain Name and the Respondent Website are associated with the Complainant, for commercial gain.

The Panel finds paragraph 4(a)(iii) of the Policy is satisfied.

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 <thearmaniresidences.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: May 12, 2017

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