WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. v. Domain Admin, Whois Privacy Corp. / Heath Allison / Gay Oxford / Domain Administrator, See PrivacyGuardian.org.

Case No. D2019-1182

1. The Parties

The Complainant is Giorgio Armani S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondents are Domain Admin, Whois Privacy Corp., Bahamas (the “First Respondent”), Heath Allison, United States of America (the “Second Respondent”), Gay Oxford, United States of America (the “Third Respondent”) and Domain Administrator, See PrivacyGuardian.org, United States of America (the “Fourth Respondent”).

2. The Domain Names and Registrars

The disputed domain name <armanionlineuk.com> is registered with Internet Domain Service BS Corp and the disputed domain names <armanieu.com> and <armanioutletfashion.com> are registered with NameSilo, LLC (the “Registrars”). The domain names <armanionlineuk.com>, <armanieu.com> and <armanioutletfashion.com> will collectively be referred to as the (“Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 23, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 24, 2019, the Registrar Internet Domain Service BS Corp transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant of <armanionlineuk.com> and providing the contact details. On May 23, 2019 the Registrar NameSilo, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for <armanieu.com> and <armanioutletfashion.com> which differed from the named Fourth Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 24, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 28, 2019 adding the Second and Third Respondent.

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”).

The Center sent the prima facie consolidation email on June 3, 2019.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 24, 2019.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 3, 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 is an Italian company, founded in 1975 by fashion designer Giorgio Armani, that designs, manufactures, and retails clothing and related products, specialising in high fashion and luxury products. The Complainant’s global consolidated revenues exceed EUR 2 Billion in each of 2016, 2017, and 2018.

The Complainant is the owner of numerous trademark registrations for ARMANI (the “ARMANI Mark”) in jurisdictions including the European Union, United States of America and Italy, the earliest of which is a United Kingdom trademark filed on January 2, 1976 and registered on July 10, 1978 (registration number 1056997) for goods in class 25.

The Domain Name <armanionlineuk.com> was registered on October 8, 2018 by the First Respondent. The Domain Name <armanieu.com> was registered on December 1, 2018 by the Second Respondent using a privacy service (the Fourth Respondent). The Domain Name <armanioutletfashion.com> was registered on October 29, 2018 by the Third Respondent using a privacy service (the Fourth Respondent).

Each of the Domain Names resolves to a site (collectively the “Respondent’s Websites”) that is strikingly similar to the other Respondent’s Websites. Each of the Respondent’s Websites prominently displays the ARMANI Mark in the same font used on the Complainant’s official website at “www.armani.com”. Each of the Respondent’s Websites purports to offer for sale the Complainant’s Armani products, such products being asserted in the Complaint to be “prima facie counterfeit”. None of the Respondent’s Websites contain any prominent disclosure or explanation as to their relationship with the Complainant and each of them contains the footers “© 2019 Giorgio Armani Outlet Shop”, “© 2019 Armani Outlet UK Online” and “© 2019 Giorgio Armani Outlet Online Shop”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s ARMANI Mark;

(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the ARMANI Mark, having registered the ARMANI Mark in numerous jurisdictions, including Italy, the United Kingdom and the United States of America. The Domain Names each reproduce the ARMANI Mark along with additional generic words or geographical terms which do not distinguish the Domain Names from the ARMANI Mark.

There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondents are using the Domain Names to create websites that purport to sell the Complainant’s products and reproduce the Complainant’s mark and copyrighted photos, such use not being bona fide.

The Domain Names were registered and are being used in bad faith. By using the Domain Names for websites that purport to sell the Complainant’s products, the Respondents are clearly aware of the ARMANI Mark and are using it to deceive consumers as to their affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation of Respondents

The named registrant of each of the Domain Names is a different individual or entity, as identified in section 4 above. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behaviour, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered within the same three-month period. The Respondent’s Websites are almost identical with each other and indeed reproduce much of the same textual material. Each of the Respondent’s Websites displays identical contact details. The contact details of the Second and Third Respondents provided by the Registrar reveal certain similarities including in respect of email addresses.

Finally, the Panel notes that none of the Respondents has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.

6.2. Substantive Matters

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the ARMANI Mark, having registrations for ARMANI as a trademark in the United Kingdom as well as in various other jurisdictions.

Each of the Domain Names wholly incorporates the ARMANI Mark with the addition of one or more descriptive or geographic terms, such as “outlet fashion” or “eu”. The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview 3.0 and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

An individual viewing any of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s ARMANI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the ARMANI Mark or a mark similar to the ARMANI Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.

The Respondent has used the Domain Names to operate websites to sell apparel that, through the use of the ARMANI Mark, purports to be legitimate ARMANI products.

If the clothing products sold on the Respondent’s Websites are not genuine Complainant’s products, the Respondent’s use of the Domain Names does not grant it rights or legitimate interests since it is using the Complainant’s ARMANI Mark for a site selling counterfeit products.

Even if the Respondent is offering genuine Armani products from the Respondent’s Websites, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:

“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

In this case, the Respondent’s Websites do not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the ARMANI Mark and the copyright notice expressly referring to the Complainant give the impression that the Respondent’s Websites are official websites of the Complainant. Even in the event that the Respondent is reselling genuine Armani products, its use of the Domain Names for the Respondent’s Websites does not grant it rights or legitimate interests in the Domain Names.

In addition, the Panel notes that the nature of the Domain Names, incorporating the ARMANI Mark in its entirety with the addition of one or more descriptive or geographic terms, carries a risk of implied affiliation with the Complainant (WIPO Overview 3.0, section 2.5.1).

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark 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 of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the ARMANI Mark at the time the Domain Names were registered. The Respondent’s Websites contain numerous references to the Complainant, including reproducing the ARMANI Mark in the exact font used by the Complainant and reproducing the Complainant’s marketing material. The registration of the Domain Names in awareness of the ARMANI Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Respondent registered the Domain Names for the purposes of operating websites specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s apparel. The Respondent is using the Domain Names that are confusingly similar to the ARMANI Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant and the Complainant’s ARMANI Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Names <armanieu.com>, <armanionlineuk.com> and <armanioutletfashion.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: July 6, 2019