WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giorgio Armani S.p.A v. ping li, yisun
Case No. D2021-1712
1. The Parties
Complainant is Giorgio Armani S.p.A, Italy, represented by Legalitax Studio Legale e Tributario, Italy.
Respondent is ping li, yisun, China.
2. The Domain Name and Registrar
The disputed domain name <yanpengarmani.com> is registered with DropCatch.com 1144 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on July 1, 2021. 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 following facts appear from the Complaint and its Annexes, which have not been contested by Respondent.
Complainant GIORGIO ARMANI S.p.A. is the head of a group of businesses (the “Armani Group”) founded in 1975 by fashion icon Giorgio Armani, comprising one of the most famous fashion and lifestyle companies in the world, and providing a broad range of goods and services under trademarks incorporating the name “Armani” (the “ARMANI Mark”). The Armani Group has more than 9,000 employees around the world and its distribution network is present in most industrialized countries, including multi-concept stores in Milan, Munich, Tokyo, and Shanghai. Complainant’s services under the ARMANI Mark also include designing uniforms for sports teams such as the Italian national team when they participated in the 2018 Winter Olympics commonly known as PyeongChang 2018. The ARMANI Mark has been used all over the world, including China, where the brand has been present for almost 20 years, and where Respondent is located.
Complainant, its affiliated subsidiaries and associated companies own exclusive rights to the ARMANI Mark within numerous jurisdictions worldwide, including but not limited to:
International Registration No. 655416, ARMANI (word), registered on December 8, 1995, in International Classes 3, 18, 25, and 28, designating China;
International Registration No. 833734, ARMANI (word), registered on July 19, 2004, in International Classes 3, 8, 11, 12, 14, 16, 18, 20, 21, 24, 25, 27, 32, 36, 39, 41, and 44, designating China;
China Trademark Registration No 6685270, ARMANI, registered on April 28, 2014, in International Class 6;
Italy Trademark Registration No. 1566689, ARMANI, registered on April 14, 1986, in International Classes 3, 14, 18, 24, and 25; and
European Union Trademark Registration No. 504282, ARMANI, registered on March 30, 1999, in International Classes 3, 9, 14,18, and 25.
Complainant is also the owner of more than 1,500 domain name registrations that incorporate the term “armani”, including <armani.com>, which resolves to Complainant’s official website at “www.armani.com” (the “Official Website”), and <armani.cn>, which resolves to the Chinese version of the Official Website.
The disputed domain name was registered by Respondent on October 5, 2020, and resolves to a website featuring explicit sexual content, “containing a large number of pornographic videos and images”.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and subsisting trademark registrations for its famous ARMANI Marks. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Giorgio Armani S.p.A. v. Name Redacted, WIPO Case No. D2019-0107 (referring to the notoriety of the ARMANI Mark as well-known around the world).
With Complainant’s rights in the ARMANI Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s ARMANI Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, sections 1.11.1 and 1.7.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also WIPO Overview 3.0, section 1.8, (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The disputed domain name incorporates Complainant’s ARMANI Mark in its entirety with the addition of the term “yanpeng”. Complainant contends in its Complaint that the term “yanpeng” is meaningless to those people who do not understand Chinese language, and for those who do, the term would be recognized by Chinese consumers as the combination of a common first name (Yan) and last name (Peng).
As noted above, prior UDRP panels have recognized the ARMANI Mark as well known. See Giorgio Armani S.p.A. v. Name Redacted, supra. Complainant’s well-known ARMANI Mark is fully recognizable as it is incorporated in its entirety into the disputed domain name with other characters and for that reason the Panel finds the disputed domain name confusingly similar to the ARMANI Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation or connection with Complainant and was not licensed or authorized by Complainant to use the ARMANI Mark in any manner, including the registration of a domain name, much less the registration of a domain name to access a website with pornographic content. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.
Complainant has also shown that Respondent is not commonly known by the disputed domain name. Respondent and Respondent Organization listed in the WhoIs record submitted with the Complaint is “ping li, yisun”. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name resolves to a website Respondent is using to commercially advertise and distribute pornographic content.
Prior UDRP panels have held that while an adult-oriented website is not illegitimate per se, using a domain name that is confusingly similar to a complainant’s trademarks to attract users to a respondent’s commercial site is not a bona fide offering of services. See VKR Holding A/S v. cui jian jun, WIPO Case No. D2016-1385.
The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows Respondent’s website prominently features such adult material while using Complainant’s ARMANI Mark to somehow suggest an affiliation with or sponsorship by Complainant. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b):
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith for at least the following reasons.
First, Complainant contends and has provided persuasive support that Respondent registered the disputed domain name fully aware of Complainant’s rights, showing that the registration date of the disputed domain name is subsequent to when Complainant registered the ARMANI Mark in China where Respondent appears to reside, and elsewhere, by many years and, therefore, Respondent cannot claim to have been using the ARMANI Mark without being aware of Complainant’s rights to it. Complainant’s evidence in support of its allegations is sufficient for the Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s famous ARMANI Mark, registered in Italy since 1986 and internationally since 1995 and designating China (supra), when Respondent registered the disputed domain name at least 15 years later in October 2020.
Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of Complainant’s rights given Complainant’s fame worldwide. See cases cited under Section 6A above, e.g., Giorgio Armani S.p.A. v. Name Redacted, supra.
The Panel finds that given the many years of prior use of Complainant’s ARMANI Mark prior to Respondent’s registration of the disputed domain name, the worldwide fame of the ARMANI Mark, and Respondent’s replication of Complainant’s ARMANI Mark in its entirety in the disputed domain name, Respondent registered the disputed domain name with actual knowledge of Complainant’s ARMANI Mark in bad faith. See Royds Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624; see also WIPO Overview 3.0, section 3.2.2; see, e.g., eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks is a factor supporting bad faith).
Moreover, the UDRP panel in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, stated that, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Respondent has had multiple opportunities to explain and justify how Respondent came to register the disputed domain name but has failed to do so. Indeed, the fact that Respondent has elected not to appear in this proceeding underscores that Respondent likely has no valid explanation for Respondent’s actions, which to this Panel appears on the evidence submitted to have been undertaken in bad faith. See, e.g., Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot, WIPO Case No. D2019-2521.
Finally, Complainant contends Respondent’s actions constitute registration and use of the disputed domain name in bad faith because using the website related to such domain name in connection with a commercial website providing pornographic content, Respondent was, in all likelihood, trying to divert traffic intended for Complainant’s website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. Prior UDRP panels have found such conduct as grounds for finding bad faith registration and use under paragraph 4(b)(iv) of the Policy. See V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama, WIPO Case No. D2010-0715.
Moreover, as mentioned above, the disputed domain name is connected to websites featuring sexually explicit, pornographic content, not related to Complainant in any way. Prior UDRP panels have consistently held that a respondent’s use of a widely known trademark in connection with a confusingly similar domain name to direct unsuspecting Internet users to a pornographic website, as here, has been found to be bad faith registration and use of that domain name. See La Quinta Worldwide, LLC v. Andirich, AndiPerdana / WhoisGuard Protected, WIPO Case No. D2011-1684; see also Bayerische Motoren Werke AG v. Victor Frankl, WIPO Case No. D2013-0701 (“In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith for a variety of reasons, particularly because of Respondent’s use of the Disputed Domain Name for an adult-content website. The Panel finds in this respect that such use must be considered as tarnishing the Trademark and the Complainant and therefore constitutes an evidence of a bad faith use of the Disputed Domain Name under the Policy.”) This Panel finds the same conclusion should be reached here because Respondent is using the ARMANI Mark within the disputed domain name to attract visitors and then redirect them to its website featuring adult content and in so doing tarnishing Complainant’s mark.
The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence have been submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <yanpengarmani.com> be transferred to Complainant.
Scott R. Austin
Date: July 15, 2021