WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lizhen Ye

Case No. D2013-0808

1. The Parties

The Complainant is Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio, Mendrisio, Italy, represented by Studio Rapisardi S.A., Italy.

The Respondent is Lizhen Ye of Xiapu, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <armanijeanses.com> and <armanijeansit.org> are registered with 1API GmbH

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2013. On May 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.

The Center appointed Ladislav Jakl as the sole panelist in this matter on June 10, 2013. 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.

On the question of the language of the proceedings, the Complaint was filed in English, and the Registrar confirmed on May 10, 2013 that the language of Registration Agreement for the disputed domain names is English. Neither the Complainant nor the Respondent commented on this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (Brand Strategy, Inc. v. Business Service Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836) decides that the language of the administrative proceedings will be English.

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant is primarily in the business of fashion and luxury goods and is the owner of various trademark registrations ARMANI, ARMANI JEANS and AJ ARMANI JEANS for different kinds of goods and services in classes as 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26 and 35 with registrations in Europe, United States of America, China and many international registrations. These trademarks have been used intensively. The overview of all these registrations for the trademark reproductions is comprised in Annex C of the Complaint. For example, the United States trademark registration No. 2, 742, 849 for AJ ARMANI JEANS was registered on July 29, 2003 in international classes 18, 25 and 35.

According to the information provided by the Registrar, the disputed domain names <armanijeanses.com> and <armanijeansit.org> were created both on July 7, 2013.

The Complainant requests the Panel, appointed in this administrative proceeding, that the disputed domain names <armanijeanses.com> and <armanijeansit.org> be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to its trademarks ARMANI, ARMANI JEANS and AJ ARMANI JEANS (“ARMANI marks”), that the Respondent has no rights or legitimate interests in respect to the disputed domain names and that the disputed domain names were registered and are being used in bad faith.

The Complainant introduces that the disputed domain names <armanijeanses.com> and <armanijeansit.org> are phonetically, visually and conceptually confusingly similar to the Complainant’s registered trademarks. The only difference between the disputed domain name <armanijeanses.com> and the trademark ARMANI JEANS is just the addition of the letter “es”. In a similar way, the only difference between the disputed domain name <armanijeansit.org> and the trademark ARMANI JEANS is just the addition of the letter “it”. The Complainant refers to several UDRP decisions which have established that such a difference does not alter the fact that the disputed domain names are confusingly similar to this trademark.

As to rights or legitimate interests, in respect of the disputed domain names, the Complainant essentially contends that the Respondent has no specific interest in using the words “armani” and /or “armani jeans” within its domain names and that it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the ARMANI marks in a domain name or in any other manner. The Complainant further contends that the Respondent is making no use of the disputed domain names and it has not making a legitimate noncommercial or fair use of the disputed domain names, without the intent to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not found out any link that would suggest that the Respondent has been using the wording “armanijeans” in any manner that would give it any legitimate right in the name. As the consequence, the Respondent may not claim any rights established by common usage. Moreover the Complainant is persuaded that it is very unlikely that the Respondent would not have known of the existence of the Complainant’s legal rights in the wordings “armani” and “armanijeans” at the time of the registration of the disputed domain names.

Furthermore, the Complainant asserts that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the worldwide fame of the ARMANI marks leaves no question of the Respondent’s awareness of them at the time of the registration of the disputed domain names which wholly incorporate the Complainant’s trademarks, as even recognized by numerous previous UDRP panels (Ga Modefine, Giorgio Armani S.p.A. v. Kim Hontage, WIPO Case No. D2007-0851; Ga Modefine, Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834; Ga Modefine v. AES Optics, WIPO Case No. D2000-0306; Ga Modefine, Giorgio Armani S.p.A. v. Jung Dong Kwon, WIPO Case No. D2004-1103). The Complainant states that in light of the aforesaid fame of the Complainant’s trademarks, the choice of the disputed domain names by the Respondent could not result from a mere coincidence and that the Respondent could not have registered the disputed domain names without knowing that, by so doing, it was either infringing on the Complainant’s trademarks or that it was not abiding by the terms of the ICANN Policy. Furthermore the Complainant contends that the inaction (e.g. “passive holding”) in relation to the domain names registrations can, in certain circumstances, constitute the domain names being used in bad faith. The Respondent is therefore holding the disputed domain names passively and that it has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name are in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Finally the Respondent, warned by the Complainant on the illegality of the disputed domain names registrations, has never replied when requested to transfer the disputed domain names and that according to previous UDRP decisions, the failure of the Respondent to respond to the letter of demand from the Complainant further supports an interference of bad faith (Bayerische Motoren Werke AG v. (This Domain is for Sale) Joshuathan Investments Inc, WIPO Case No. D2002-0787).

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel accepts arguments of the Complainant that the disputed domain names <armanijeanses.com> and <armanijeansit.org> are phonetically, visually and conceptually confusingly similar to the Complainant’s registered ARMANI marks. The only difference between the disputed domain name <armanijeanses.com> and the trademark ARMANI JEANS is just the addition of the letter “es”. In a similar way, the only difference between the disputed domain name <armanijeansit.org> and the trademark ARMANI JEANS is just the addition of the letter “it”. The Panel finds that the test of identical or confusing similarity under the Policy is generally confined to a comparison of the disputed domain names and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812). Mere addition of two letters to the Complainant’s mark does not adequately distinguish the disputed domain names from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal -Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F. Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. As well the inclusion of the gTLD suffix “.com” or “.org.” does not avoid confusing similarity between the disputed domain names and trademark. See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310.

For all the above cited reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

As to rights or legitimate interests in respect of the disputed domain names, the Complainant contends that it has not licensed or otherwise authorized the Respondent to seek registration of any domain name incorporating said Complainant’s trademark. The registration of the ARMANI JEANS trademark preceded the registration of the disputed domain names <armanijeanses.com> and <armanijeansit.org>. The Respondent has no specific interest in using the words “armani” and /or “armani jeans” within its domain names and that it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the ARMANI marks in the domain names or in any other manner. It is very unlikely that the Respondent would not have known of the existence of the Complainant’s legal rights in the wordings “armani” and “armanijeans” at the time of the registration of the disputed domain names. Further the Respondent has not placed any content in the websites that might be relevant to demonstrate its rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, but the Respondent failed to rebut it with any appropriate allegations or evidence of demonstrating rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, 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 source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.

The Panel finds that there is beyond all doubt that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain names and that the Respondent has engaged in a pattern of such conduct. The Panel accepts the Complainant’s arguments that the worldwide fame of the ARMANI marks leaves no question of the Respondent’s awareness of those at the time of the registration of the disputed domain names which wholly incorporate the Complainant’s trademarks, as even recognized by numerous previous UDRP panels (Ga Modefine, Giorgio Armani S.p.A. v. Kim Hontage, WIPO Case No. D2007-0851; Ga Modefine, Giorgio Armani S.p.A. v. Ahmad Haqqi, WIPO Case No. D2007-0834; Ga Modefine v. AES Optics, WIPO Case No. D2000-0306; Ga Modefine, Giorgio Armani S.p.A. v. Jung Dong Kwon, WIPO Case No. D2004-1103).

Moreover the Respondent’s passive holding in relation to the disputed domain names registrations constitutes the disputed domain names being used in bad faith. It has long been generally held in UDRP decisions under certain circumstances that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Finally the Respondent, warned by the Complainant on the illegality of the disputed domain names registrations, has never replied when requested to transfer the disputed domain names and that, according to previous UDRP decisions, the failure of the Respondent to respond to the letter of demand from the Complainant may further supports an interference of bad faith (Bayerische Motoren Werke AG v. (This Domain is for Sale) Joshuathan Investments Inc, WIPO Case No. D2002-0787).

For the above cited reasons the Panel finds that the disputed domain names were registered and are being used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 names <armanijeanses.com> and <armanijeansit.org> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: June 23, 2013