WIPO Domain Name Decision: D2007-0834

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GA MODEFINE SA., Giorgio Armani S.p.A. v. Ahmad Haqqi

Case No. D2007-0834

1. The Parties

The Complainants are GA MODEFINE SA., Mendrisio, Switzerland, and GIORGIO ARMANI S.p.A., Milano, Italy, represented by Studio Rapisardi S.A., Switzerland.

The Respondent is Ahmad Haqqi, Ahmad Haqqi, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <armanihoteldubai.com> is registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2007. On June 8, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On June 11, 2007, Schlund + Partner 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”), 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 June 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2007.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on July 17, 2007. 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 Complainants are the owners of several trademarks, internationally well-known in the world of fashion, such as ARMANI, GIORGIO ARMANI, and EMPORIO ARMANI.

In the context of the present case of particular interest are the following two international registrations for the word mark ARMANI, for which the Complainants submitted registration certificates:

- IR 838290, date of registration August 3, 2004, in the name of GIORGIO ARMANI S.p.A, for “temporary accommodation; hotels; services for providing food and drink (cl. 43)”; extending its protection to over 50 countries;

- IR 869 678, of registration, June 30, 2005, in the name of GA MODEFINE S.A., for “Restaurant services, temporary accommodation (cl. 43)”; extending its protection to over 70 countries, including Great Britain, where the Respondent is located.

The Respondent registered the domain name <armanihoteldubai.com> on April 16, 2006.

5. Parties’ Contentions

A. Complainants

The Complainants submit that they are the owners of several well-known trademarks, such as ARMANI, GIORGIO ARMANI, and EMPORIO ARMANI, registered and used all over the world for a large list of goods and services, such as clothes, glasses, perfumes, jewellery, confectionery, pubs, restaurants, hotels and related services, in classes 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28, 34, 35, 42, 43.

The Complainants also submit that the Armani Group signed a deal with the Emaar Properties company of the United Arab Emirates to build and develop 10 Armani luxury hotels in different towns all over the world and that the first Armani/Emaar hotel is destined to be in Dubai (in the Burj Dubai, under construction).

On February 15, 2007, the Complainant GA MODEFINA S.A. sent a cease and desist letter to the Respondent.

The Complainants submitted appropriate evidence for their contentions.

B. Respondent

The Respondent has failed to submit a Response. He has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complainants’ submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

Furthermore, the Respondent did not reply to the Complainants’ cease and desist letter.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <armanihoteldubai.com> incorporates entirely the trademark ARMANI, in which the Complainants have rights, amongst others in the field of hotels and related services. The addition of the generic term “hotel” and of the geographical term “Dubai” cannot exclude the risk of confusion between the domain name and the trademark ARMANI. On the contrary, the domain name suggests that the site related to it is the site of an ARMANI hotel in Dubai. In view of the well-known character of the trademark ARMANI it therefore gives the impression that it leads to an official site of the Complainants and that its registration and use is authorized by the Complainants. This conclusion corresponds to the conclusion of the Panelist in the GA Modefine S.A., Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090, where the domain name in dispute was <hotelarmani.com>.

In conclusion the domain name <armanihoteldubai.com> is confusingly similar to the trademark ARMANI, in which the Complainants have rights.

B. Rights or Legitimate Interests

ARMANI is not a descriptive term, in which the Respondent might have a legitimate user-interest. It is a well-known trademark of the Complainants. The Respondent has no connection or affiliation with the Complainants, who have not consented to the Respondent’s use of the domain name.

Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for his own legitimate commercial or non-commercial activities, if any, and he has not demonstrated any preparations for such use. Finally, for the same reason that the Respondent does not promote his own commercial activities with the help of this domain name, the Respondent has not been able to become known under it.

In the absence of any submission of the Respondent, the Panel in the circumstances therefore concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Respondent does not actively use his domain name and has not apparently ever offered it to the Complainants for sale. It has therefore to be considered whether the registration and apparent stockpiling of the domain name, taking into account all circumstances of the case, may be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith. In that context, it has been convincingly found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that inaction of the Respondent may be within the concept of paragraph 4a(iii) of the Policy.

(i) Registration in bad faith

Since the trademark ARMANI is internationally well-known there cannot be any reasonable doubt that the Respondent was aware of this trademark when registering his domain name. Furthermore, the joint venture, which the Armani-group concluded with the Emaar Properties company of the United Arab Emirates, builds the first Armani/Emaar hotel in the Burj Dubai. Under the circumstances the choice of the domain name <armanihoteldubai.com> by the Respondent is highly unlikely to result from a mere coincidence.

Departing from this assumption it is difficult to conceive that the Respondent had any good faith intention to use that domain name, when registering it. Also the fact that the Respondent did not make any use of the domain name since its registration more than one year ago, is a further possible indication of registration in bad faith.

These findings, with the findings under section 6(B) of this decision that the Respondent has no rights or interests in the domain name, leads the Panelist to the conclusion that the domain name <armanihoteldubai.com> has been registered in bad faith.

(ii) Use in bad faith

For the Complainants to succeed, they also have to prove that the Respondent is using the domain name in bad faith.

The Administrative Panel in the Telstra case Supra (paragraphs 7.8 to 7.10) has convincingly argued that the provisions in paragraph 4(b) of the Policy are consistant in appropriate circumstances with inaction or passive holding being within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.

The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b) (i) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.

The Panel considers that the sum of the following circumstances justifies such conclusion:

- The Complainants’ trademark ARMANI is an internationally well-known mark and enjoys a reputation in the United Kingdom, where the Respondent is located;

- The Respondent has made no use what so ever of its domain name and has submitted no evidence whatsoever of any good faith use of the domain name;

- Neither has the Respondent on the present record communicated to the Complainant or the panel any plan for a bona fide use of his domain name;

- By registering <armanihoteldubai.com> the Respondent has precluded the Complainant from using its mark in a corresponding domain name;

- at the same time, the existence of the domain name furnishes its holder with an instrument that allows it to activate a website in such a manner as to divert Complainants’ customers to its website;

- absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation;

- Respondent has chosen not to respond to the Complaint.

Taking into account these particular circumstances the Panel concludes that the Respondent's passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered an is being used in bad faith.

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 domain name <armanihoteldubai.com> be transferred to the Complainants.

Gerd F. Kunze
Sole Panelist

Dated: July 30, 2007