WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Li Kai

Case No. D2012-0503

1. The Parties

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

The Respondent is Li Kai of Putian, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <armaniar.com> and <armaniemporiowatches.com> are registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2012. On March 14, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On March 15, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On March 15, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 15, 2012 and March 19, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Complainant submitted an amended Complaint to the Center on March 19, 2012.

The Center has verified that the Complaint together with the amended Complaint satisfy 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 proceeding commenced on March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 16, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on April 17, 2012.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 19, 2012. 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

A. Complainant

The Complainant is a company incorporated in Italy and the owner of numerous registrations worldwide for the trade marks ARMANI, EMPORIO ARMANI, GIORGIO ARMANI and AX - ARMANI EXCHANGE (the “Trade Marks”), the earliest dating from 1978.

B. Respondent

The Respondent appears to be an individual based in China.

C. The Disputed Domain Names

The disputed domain name <armaniar.com> was registered on May 19, 2011 and the disputed domain name <armaniemporiowatches.com> was registered on May 28, 2011, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the amended Complaint.

The Trade Marks have been used by the Complainant for many years worldwide in respect of a wide range of goods, including watches. The Trade Marks have been recognised as well-known marks worldwide in fashion magazines, newspapers, and previous UDRP decisions made in favour of the Complainant.

The disputed domain names are confusingly similar to the Trade Marks. The disputed domain name <armaniar.com> contains the Complainant’s ARMANI trade mark in its entirety together with the non-distinctive suffix “ar”. The disputed domain name <armaniemporiowatches.com> contains the Complainant’s EMPORIO ARMANI trade mark in its entirety together with the non-distinctive descriptive word “watches”.

The disputed domain name <armaniar.com> is being passively held by the Respondent and has not been resolved to an active website.

The disputed domain name <armaniemporiowatches.com> is resolved to a website which offers for sale watches bearing the Trade Marks as well as watches of other well-known brands (the “Website”). The Complainant believes the watches sold on the Website are “not original”.

The Complainant sells watches bearing the Trade Marks online, including via its website “www.emporioarmaniwatches.com”.

The use of the disputed domain name <armaniemporiowatches.com> gives the impression that the site is one of the Complainant’s official sites and that its registration and use is authorised by the Complainant.

The Respondent is not commonly known under the disputed domain names and does not have any legitimate trade mark rights in respect of the disputed domain names.

The Respondent has not been licensed or authorised by the Complainant to use the Trade Marks or to register the disputed domain names. The Respondent is not making a bona fide offering of goods or services under the disputed domain names.

The Respondent has registered and is using the disputed domain names in bad faith. The Respondent is using the disputed domain name <armaniemporiowatches.com> primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website and in order to profit from the notoriety of the Trade Marks.

The Respondent’s bad faith is further evidenced by its failure to respond to the letter of demand sent by the Complainant’s representative.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreements for the disputed domain names is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) the language of the Website is English;

(2) the Website allows users to purchase goods in USD;

This indicates that the Respondent has a great familiarity with the English language.

The Respondent did not file any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel notes, for the reasons specified by the Complainant in the amended Complaint, it appears the Respondent is familiar with the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). The Respondent has not filed any submissions in response to the submissions of the Complainant.

The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is familiar with the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Decision

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain names by many years.

UDRP panels have consistently held that a domain name is generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The disputed domain name <armaniar.com> contains the Complainant’s ARMANI trade mark in its entirety. The Panel finds that the addition of the non-distinctive suffix “ar” does not serve to distinguish this disputed domain name from the Trade Marks in any way.

The disputed domain name <armaniemporiowatches.com> contains the Complainant’s EMPORIO ARMANI trade mark in its entirety, albeit in reverse word order. The Panel finds that the addition of the non-distinctive generic word “watches” does not serve to distinguish this disputed domain name from the Trade Marks in any way.

The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks, or to offer for sale and sell watches under the Trade Marks, whether on the Website or otherwise. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant contends the Website is used by the Respondent to market “non-original” watches under the Trade Marks and also under trade marks of other well-known brand owners. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750). The Panel further notes the Website features the Trade Marks as well as images of the Complainant’s products, all without the authorisation or approval of the Complainant.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of the disputed domain names in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant asserts that the disputed domain names have been used to offer for sale non-original products under the Trade Marks via the Website. Using domain names to facilitate the sale of non-original goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Even if the goods on the Website are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain names and setting up the Website using the Trade Marks and images of the Complainant’s goods, and offering for sale watches under the Trade Marks, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Website are counterfeit (or, in the words of the Complainant’s representatives, non-original).

It is well-established under UDRP jurisprudence that passive use of a domain name can, in certain circumstances, amount to evidence of bad faith registration and use. In all the circumstances of this proceeding, the Panel finds that the passive use of the disputed domain name <armaniar.com> amounts to a further indication of bad faith.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all 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 <armaniar.com> and <armaniemporiowatches.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: April 26, 2012