WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.P.A. v. Name Redacted
Case No. D2019-0107
1. The Parties
The Complainant is Giorgio Armani S.P.A. of Milan, Italy represented by Legalitax Studio Legale e Tributario, Italy.
The Respondent is Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <giorgioarmanioutlet.com> 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 January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2019, 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 January 21, 2019 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 January 24, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent about commencement of panel appointment process on February 15, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on February 25, 2019. 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, founded in 1975, is one of the most famous fashion and lifestyle companies in the world. The Complainant designs, manufactures and distributes products and services in 36 countries. The Complainant is the proprietor of several trademarks such as ARMANI and GIORGIO ARMANI. For example, the Complainant has registered the trademark GIORGIO ARMANI as a European Union trademark on March 8, 1999. Both marks have been used extensively all over the world.
The disputed domain name was registered on October 26, 2017.
5. Parties’ Contentions
The trademark GIORGIO ARMANI is a well-known trademark around the world, which has also been confirmed by previous UDRP Panels.
The disputed domain name incorporates the Complainant’s trademark GIORGIO ARMANI in its entirety, combined to the merely descriptive and generic term “outlet”. The word “outlet” strengthens the likelihood of confusion between the Complainant’s trademark and the disputed domain name as it gives the incorrect idea that the website is an official outlet of the Complainant, which it is not.
The Respondent has no affiliation with the Complainant and is not licensed or otherwise authorized to use the Complainant’s trademark in any manner. There is no evidence of bona fide use of the disputed domain name. The use of the disputed domain name is merely commercial use.
The worldwide fame of the Complainant’s trademark means that the Respondent must have been aware of the Complainant when registering the disputed domain name. The disputed domain name is used to direct Internet users to a website where clothes bearing the Complainant’s trademark are offered for sale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark in its entirety combined with the general term “outlet”. The addition of a descriptive term does not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements (section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interest in the disputed domain name, and that the Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides 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 [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”.
The Panel agrees with previous Panels and finds that the Complainant’s trademark GIORGIO ARMANI is a well-known trademark around the world. It is therefore inconceivable that the Respondent’s would not have been aware of the Complainant and its trademark when registering the disputed domain name.
The website to which the disputed domain name resolves sells clothing and accessories under the Complainant’s trademarks without identifying the (non-existent) relationship between the Complainant and the Respondent. The disputed domain name is therefore used to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation of endorsement of the Respondent’s website.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.
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, <giorgioarmanioutlet.com> be transferred to the Complainant.
Date: March 8, 2019
1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name and contact details of Respondent as listed in the WhoIs for the disputed domain name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788