WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A. v. Cinard Floyd
Case No. D2020-1718
1. The Parties
The Complainant is Giorgio Armani S.p.A., Italy, represented by Legalitax Studio Legale e Tributario, Italy.
The Respondent is Cinard Floyd, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <presidentialarmani.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 June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2020, 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 July 8, 2020, 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 July 13, 2020.
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 July 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 21, 2020. 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, founded in 1975 by Giorgio Armani. It designs, produces and sells clothes and various accessories, including watches, perfumes, furniture, lighting, rugs, decoration, food, and hotel and interior design services. The Complainant employs more than 8,000 people around the world.
The Complainant is the owner of numerous trademark registrations for the word trademark ARMANI, including United States Registration No 2,142,395 (registered on March 10, 1998), and United States Registration No 2,009,673 (registered on October 22, 1996). The Complainant is also the owner of the United States Registration No 2,296,365 (registered on November 30, 1999) for the combined word and design trademark consisting of the words EMPORIO and ARMANI, in between which is a stylized drawing of an eagle and the letters GA (the “EMPORIO ARMANI device trademark”).
The Complainant is the owner of more than 1,500 domain name registrations that contain the word “armani”, including <armani.it> and <giorgioarmani.it>.
The disputed domain name was registered on May 12, 2020. The Complainant has provided screenshots of the website resolving from the disputed domain name on June 9, 2020, at which appears the EMPORIO ARMANI device trademark, the words “Giorgio Armani S.p.A is an Italian luxury fashion house founded by Giorgio Armani which designs, manufactures, distributes and retails haute couture, ready-to-wear, leather goods, shoes, watches, jewellery, accessories, eyewear, cosmetics and home interiors”, and 12 different men’s watches offered for sale bearing the EMPORIO ARMANI device trademark.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name incorporates the surname “Armani”; (ii) the only minor difference between the disputed domain name and the ARMANI word trademark is the presence of the word “presidential”, which relates to the concepts of luxury and prestige, and does not dispel confusion; and (iii) when a well-known mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the well-known mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is an individual who has no specific interest in using the name “Armani” within its domain name, and has not been commonly known as “Armani”; (ii) the Respondent has no affiliation or connection with the Complainant, and was not licensed or authorized by the Complainant to use the ARMANI trademark in any manner, including in the registration of a domain name and in the sale of products; (iii) the website resolving from the disputed domain name is of a commercial nature and used to offer for sale watches bearing the EMPORIO ARMANI device trademark, which is neither a fair commercial use of the trademark nor a bona fide offering of goods and services; and (iv) the Respondent’s commercial use of the disputed domain name misleads consumers and tarnishes the Complainant’s trademark, creating confusion and damaging the image acquired by the Complainant after years of investment and effort.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the worldwide fame of the ARMANI trademark leaves no doubt about the Respondent’s awareness of it at the time of registration of the disputed domain name; (ii) the Respondent has used the disputed domain name to direct Internet users to a website at which watches bearing the EMPORIO ARMANI device trademark are offered for sale; (iii) it can be reasonably inferred that the Respondent is profiting from the website resolving from the disputed domain name, and is intentionally attracting, for commercial gain, Internet users to that website by creating a likelihood of confusion with the ARMANI trademark as to the source, sponsorship, affiliation or endorsement of the website; (iv) the Respondent’s complete lack of intellectual property rights in the disputed domain name further demonstrates bad faith; and (v) where a domain name is so obviously connected to a particular product or service and the registrant is found to have no connection to that product or service, panels have found the registrant guilty of “opportunistic bad faith”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the generic Top-Level Domain “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark ARMANI, preceded by the word “presidential”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the word “presidential” does not avoid the confusing similarity of the disputed domain name with the trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ARMANI word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website at which is displayed, without authorization, the Complainant’s EMPORIO ARMANI device trademark and the words “Gorgio Armani S.p.A is an Italian luxury fashion house founded by Giorgio Armani which designs, manufactures, distributes and retails haute couture, ready-to-wear, leather goods, shoes, watches, jewellery, accessories, eyewear, cosmetics and home interiors”. This description, together with the contents of the website, are such that many Internet users will form the false belief that the website is operated by, or affiliated with, the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its ARMANI word trademark. The evidence on the record provided by the Complainant with respect to the use of its ARMANI word trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s ARMANI word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. In that regard, the word “presidential” preceding the word “armani” in the disputed domain name could reasonably be interpreted as being a reference to a luxury range of the Complainant’s products. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <presidentialarmani.com> be transferred to the Complainant.
Andrew F. Christie
Date: September 6, 2020