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 emporio armani watches of Hong Kong, China.
The disputed domain name <emporio-armaniwatches.com> (the “Disputed Domain Name”) is registered with Bizcn.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2012. On May 2, 2012, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 3, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 8, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On May 9, 2012, the Complainant confirmed their request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 27, 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.
The Complainant owns trademark registrations for ARMANI and EMPORIO ARMANI (the “ARMANI Trademarks”) in many jurisdictions covering a variety of goods including watches and clothing. These include:
Jurisdiction | Trademark | Trademark Number | Registration Date |
|
International |
EMPORIO ARMANI & Device |
536698 |
May 23, 1989 |
|
International |
EMPORIO ARMANI & Device |
782614 |
June 6, 2002 |
|
International |
ARMANI |
502876 |
May 1, 1986 |
|
International |
ARMANI |
838290 |
August 3, 2004 |
These registrations together designate a large number of countries worldwide including China (International Trademark Registration Nos. 782614 and 838290).
The ARMANI Trademarks are regularly featured in fashion magazines and newspapers around the world and past UDRP panels have recognized that the trademark ARMANI is well-known (e.g., GA Modefine SA v. Nirooshan Jeevarajah, WIPO Case No. D2006-0788; Giorgio Armani SpA, Milan, Swiss Branch Mendrisio v. Brian Mullen, WIPO Case No. D2011-0529; Giorgio Armani SpA Milan Swiss Branch Mendrisio v. Mage Enterprises Inc, WIPO Case No. D2011-1172).
The Disputed Domain Name was registered on November 19, 2011. As of April 24, 2012, the Disputed Domain Name resolved to a website which prominently promoted watches under the name “Christian Louboutin”. The website also display the title “Armani Watches | Emporio Armani Watches”, a photograph of a watch showing part of words which appeared to be “EMPORIO ARMANI” and purportedly online shopping cart facilities.
Very little is known about the Respondent beyond the WhoIs information relating to the Disputed Domain Name. Even so, the addresses provided by the Respondent do not appear to be complete and/or valid. The Complainant sent a cease and desist letter to the Respondent on January 26, 2012 (and a reminder on March 8, 2012). The Respondent did not reply to the cease and desist letter and reminder.
The Complainant contends that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s ARMANI Trademarks. The addition of the generic term “watches” is not sufficient to prevent the risk of confusion between the ARMANI Trademarks and the Disputed Domain Name;
(b) The Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. Although the Respondent’s name identified its name as “emporio armani watches”, its real name is unknown. There is no registered company in Hong Kong, China or the other parts of China in the name of “Emporio Armani Watches”. The telephone number provided by the Respondent does not exist. The Respondent has no connection or affiliation with the Complainant and has not received any licnese or consent to use the ARMANI Trademarks; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The ARMANI Trademarks are famous. The Respondent must have been aware of the ARMANI Trademarks at the time of registering the Disputed Domain Name. The Respondent is using the ARMANI Trademarks in the Disputed Domain Name to exploit the Complainant’s goodwill.
The Respondent did not reply to the Complainant’s contentions.
The default language of the proceeding is Chinese because the registration agreement was in Chinese. The Complainant has requested for English to be the language of the proceedings. Having considered the circumstances, including the following, the Panel determines that English be adopted as the language of the proceedings:
(a) The Complainant is not familiar with the Chinese language;
(b) The Disputed Domain Name resolved to a website which is entirely in English and which adopts the United States Dollar as currency, strongly suggesting that the Respondent is familiar with and/or capable of communicating in English;
(c) The Respondent did not reject the Complainant’s request for English to be adopted as the language of the proceeding;
(d) The Respondent did not file a Response;
(e) No apparent benefit will be served if the Complainant is required to submit to Chinese as the language of the proceedings; and
(f) Imposing Chinese as the language of the proceedings will not only lead to additional burdens on the Complainant but also delay in the proceedings.
To succeed in these proceedings, the Complainant must satisfy the Panel that all 3 limbs of paragraph 4(a) of the Policy are met.
The first limb of the Policy requires the Disputed Domain Name to be identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns trademark registrations for ARMANI and EMPORIO ARMANI. There is no doubt that the Complainant has rights in these trademarks. The Disputed Domain Name incorporates the trademarks ARMANI and EMPORIO ARMANI in their entirety.
The hyphen between the words “emporio” and “armani" in the Disputed Domain Name is minor and inconsequential. The only material element in the Disputed Domain Name which does not exist in the trademark EMPORIO ARMANI is the suffix “watches”. It is the consensus of past UDRP panels that a domain name which incorporates a trademark in its entirety is generally incapable of being distinguished from trademark by the addition of generic or descriptive prefixes or suffixes for purposes of the Policy. In this case, the suffix “watches” is clearly descriptive of the nature of goods under the ARMANI Trademarks. The Panel agrees with the Complainant that the suffix is not sufficient to prevent a finding of confusing similarity between the trademark EMPORIO ARMANI and the Disputed Domain Name.
The Panel holds that the first limb of the Policy is established by the evidence.
The second limb of the Policy requires that it be shown that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Past UDRP panels have consistently maintained that this limb of the Policy is established once the Complainant presents a prima facie case, typically including that the Respondent has not been authorized to use the trademark of the Complainant, and is not commonly known by the same. The burden of production then shifts to the Respondent to rebut the prima facie case.
The Complainant has confirmed that it has no relationship with the Respondent and has not authorized the Respondent to use the ARMANI Trademarks. Based on the evidence submitted, the Panel agrees with the prior UDRP panels in holding that the ARMANI Trademarks are well-known and the Respondent must in all likelihood have been aware of the existence of the ARMANI Trademarks. Although the Respondent has identified itself as “Emporio Armani Watches”, there is no explanation or suggestion provided which could justify the Respondent’s use of trademark EMPORIO ARMANI as part of its name in the face of the Complainant’s trademark rights.
In the circumstances, the Panel finds the Complainant has established a prima facie case which has not been rebutted by the Respondent or by the available evidence. The Panel determines that the second limb of the Policy is met.
The third limb of the Policy requires the Complainant to show that the Disputed Domain Name was registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy identifies the following situation as evidence of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
As indicated above, the ARMANI Trademarks are well-known marks. It is inconceivable to the Panel that the Respondent was not aware of the ARMANI Trademarks at the time of registering the Disputed Domain Name. This is further corroborated by the association of products with the ARMANI Trademarks on the website resolved from the Disputed Domain Name.
The website resolved from the Disputed Domain Name is clearly intended for commercial gain. The online shopping cart facilities and the listing of various products with prices on the website reinforce this finding. In the circumstances, the reasonable conclusion is that the Respondent is using the Disputed Domain Name to attract Internet users for commercial gain by using the Complainant’s ARMANI Trademarks. From the evidence, the Panel believes that such use will create a likelihood of confusion with the Complainant’s ARMANI Trademarks as to the source, sponsorship, affiliation, or endorsement of the website or the products on the website. The facts accordingly fit into the situation outlined in paragraph 4(b)(iv) of the Policy.
A domain name registrant has a duty to act honestly, including providing valid contact particulars. It has been established by previous UDRP panels that the deliberate failure to do so is a basis for finding bad faith registration and use (see Immobiliére Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, WIPO Case No. D2011-2106; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048/jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc v. David, WIPO Case No. D2009-1245). The Complainant has asserted and the Panel believes that the address and telephone number of the Respondent associated with the Disputed Domain Name are not valid. The Respondent’s address has no unit number, building name or street name.
Based on the above, the Panel holds that the third limb of the Policy is therefore established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <emporio-armaniwatches.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: July 13, 2012