Complainant is Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Switzerland.
Respondent is Min Zhi of Wuhan, Hubei, China.
The disputed domain name <armanijean.info> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2013, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 1, 2013.
The Center appointed Ross Carson as the sole panelist in this matter on February 7, 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.
Complainant is a company incorporated in Switzerland. Giorgio Armani is an Italian fashion designer known for his men’s wear as well as jewelry, bags, shoes and accessories for men and women. Stores licensed to use the Armani name in association with the sale of Armani goods are located in over fifty countries throughout the world including China. In addition, Complainant sells ARMANI goods over the Internet through a website associated with its <armani.com> domain name. Complainant registered the <armani.com> domain name on February 20, 1995.
Complainant is the owner of hundreds of trademarks for or including ARMANI registered and used in numerous countries throughout the world. The registered trademarks include the trademarks GIORGIO ARMANI, ARMANI, ARMANI JEANS and AJ ARMANI JEANS. Said trademarks are registered and used for different kinds of goods and services falling within International Classes 3, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 35 with registrations in Europe, United States of America, China and many other countries. The Armani trademarks have been registered and used in commerce since at least as early as the 1970’s. The ARMANI trademarks are well known throughout the world.
The disputed domain name <armanijean.info> was registered on July 31, 2012.
Complainant states that it is the owner of numerous trademark registrations for the trademarks ARMANI and ARMANI JEANS registered in relation to clothing and retail store services as more particularly described in Section 4 immediately above.
Complainant states that the disputed domain name is confusingly similar with Complainant’s well-known registered trademarks. The disputed domain name incorporates the entirety of Complainant's house mark ARMANI, and Complainant’s trademark ARMANI JEANS. The only difference with the latter trademark is the deletion of the letter “s” in the disputed domain name, but said slight difference is not sufficient to prevent the risk of confusion between the ARMANI trademarks and the disputed domain name. See, America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987. See also, GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090, where the panel stated that “the use of said domain name give the impression that the site is one of Complainants’ official sites and that its registration and use is authorised by the Complainants” and the panel decided that the transfer was to be ordered.
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent, whose name is Min Zhi, has not been commonly known (as an individual, business or other organization) by the disputed domain name.
Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the ARMANI trademarks in a domain name or in any other manner.
Respondent has not acquired any rights whatsoever (including trade/service mark rights) in the disputed domain name or in any name corresponding to the disputed domain name.
Complainant further submits that Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services. The disputed domain name resolves to a website containing a sort of blog, related to different topics in some way connected with the fashion field. But actually, throughout the contested website, there are different links to other websites, such as: “www.fakejackets.com” on which it is possible to buy online different products (such as clothing, jackets, boots) of Complainant and Complainant’s competitors bearing famous trademarks (such as Moncler, Gucci, Ugg, D&G and even Armani); or “www.fakearmani.com”, on which fake Armani products (clothing, shoes, watches, sunglasses) are offered on sale. The language used in all the pages is English and the currency automatically proposed by the seller is the US Dollar. Such use by Respondent, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i) (see The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. 1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).
Complainant submits that the worldwide fame of the ARMANI trademarks leaves no question of Respondent’s awareness of those at the time of the registration of the disputed domain name. In light of the aforesaid fame of Complainant’s trademarks, the choice of the disputed domain name by Respondent could not result from a mere coincidence.
The registration of a domain name consisting in a family name and/or trademarks of a worldwide famous fashion stylist, reveals the intention of Respondent to exploit the notoriety, the importance and the value of said name and to take advantage from the unlawful use of the trademarks comprehensive of that name owned by Complainant.
Complainant states that Respondent was certainly aware of the fame and worldwide relevance of ARMANI trademarks at the time of registration of the disputed domain name on July 31, 2012.
Complainant submits that Respondent has by registering the disputed domain name, that is confusingly similar to Complainant’s trademarks ARMANI and ARMANI JEANS and by using the disputed domain name to resolve to websites containing links to Complainant’s competitors and links to sites selling fake versions of Complainant’s goods Respondent clearly intended to profit from its use, diverting Internet users to its website in order to generate traffic on the web and to generate gain from its bad faith activity.
Complainant further submits that Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's name and marks as to the sponsorship, affiliation and endorsement of that website by the owner of the trademarks. It is clear that Respondent is using the ARMANI trademarks in the disputed domain name to exploit the goodwill of Complainant for its own purposes (see L’Oreal, Biotherm Lancome Parfums et Beaute & Cie v. Unasi, Inc. WIPO Case No. D2005-0623 in which it was stated that exploitation of the reputation of trademarks by diverting Internet users is a common example of bad faith).
Complainant further submits that as stated in several previous WIPO UDRP decisions, the registration, in absence of any rights or legitimate interests and lacking any contrary evidence, of a domain name confusingly similar to Complainant’s widely-known trademarks suggests opportunistic bad faith (see, Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 and MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412).
Complainant states that it sent a cease and desist letter to Respondent on September 17, 2012 and a subsequent reminder on October 16, 2012 requesting a voluntarily transfer of the disputed domain name and has received no response. According to previous UDRR decisions, “the failure of Respondent to respond to the letter of demand from Complainant further supports an inference of bad faith”, (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787, cited by Complainant) and such silence, ongoing cybersquatting, and dilution are further evidence of Respondent’s bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v.Ray Chen, WIPO Case No. D2001-1242).
Complainant submits that the aforesaid circumstances together with the lack of rights or legitimate interests of Respondent in the disputed domain name lead to the conclusion that Respondent registered and is using the disputed domain name in bad faith (see Produits Berger v. Romana Go, WIPO Case No. DPH2005-0001).
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for the trademarks ARMANI and ARMANI JEANS registered and widely used in relation to clothing and/or retail store services in China and throughout the world as more particularly described in Section 4 above.
The disputed domain name incorporates the entirety of Complainant’s house mark ARMANI, and the trademark ARMANI JEANS. The only difference with the latter trademark is the deletion of the letter “s” in the disputed domain name, but said slight difference is not sufficient to prevent the risk of confusion between the disputed domain name and the ARMANI trademarks. See, America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987. See also, GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090, where the panel stated that “the use of said domain name give the impression that the site is one of Complainants' official sites and that its registration and use is authorised by the Complainants” and the panel decided that the transfer was to be ordered.
The inclusion of the generic top-level domain (gTLD) “.info” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top-level domain such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top-level domain such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks ARMANI and ARMANI JEANS.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks ARMANI or ARMANI JEANS.
Given that the disputed domain name is confusingly similar to Complainant’s ARMANI and ARMANI JEANS trademarks and is being used in association with websites which resolve to blogs with links to Complainant’s competitors goods as well as websites offering fake goods of Complainant and its competitors, it is evident to the Panel that Respondent is trying to attract Internet users for click through income by creating a likelihood of confusion with Complainant’s trademarks. Such use is not a bona fide use of the disputed domain name (see, The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. 1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).
There is no evidence that before any notice of the dispute Respondent used or made demonstrable preparations to use the disputed domain name, in connection with a bona fide offering of goods or services.
There is no evidence that Respondent is known by Complainant’s trademark or has registered or used the disputed domain name as a trademark.
There is no evidence that Respondent is making any legitimate, noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.”
In this case, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name was created on July 31, 2012.
Complainant has been using its ARMANI trademark in relation to clothing designed by Giorgio Armani since the 1970’s and the trademark has become well-known throughout the world. Additionally, Complainant is also the owner of the corresponding URL “www.armani.com”. Complainant has owned and operated a business at this URL since early 1995.
The registration by Respondent of the disputed domain name which is a combination of the ARMANI trademark and the descriptive word “jean” creates a strong inference that Respondent was aware that ARMANI was a trademark used in association with clothing prior to the creation of the disputed domain name on July 31, 2012. The subsequent use of the disputed domain name to resolve to websites relating to Complainant’s and its competitors clothing strengthens the inference.
The Panel finds that Respondent registered the disputed domain name in bad faith.
Respondent has been using the disputed domain name in association with a website having links to Complainant’s and Complainant’s competitors goods as well as links to websites offering fake ARMANI goods. The Panel infers that Respondent is receiving pay-per-click remuneration from the owners of the websites associated with such links which constitutes using the disputed domain name in bad faith as set forth in paragraph 4(b)(iv) of the Policy (see L’Oreal, Biotherm Lancome Parfums et Beaute & Cie v. Unasi, Inc. WIPO Case No. D2005-0623 in which it was stated that exploitation of the reputation of trademarks by diverting Internet users is a common example of bad faith).
The registration, in absence of any rights or legitimate interests and lacking any contrary evidence, of a domain name confusingly similar to Complainant’s widely-known trademarks suggest opportunistic bad faith (see, Banca Sella S.p.A. v Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 and MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412).
Complainant sent a cease and desist letter to Respondent on September 17, 2012 and a subsequent reminder on October 16, 2012 requesting a voluntarily transfer of the disputed domain name and has received no response. According to previous UDRP decisions, “the failure of Respondent to respond to the letter of demand from Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc,, WIPO Case No. D2002-0787, cited by Complainant) and such silence, ongoing cybersquatting, and dilution are further evidence of Respondent's bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).
The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under 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 <armanijean.info> be transferred to Complainant.
Ross Carson
Sole Panelist
Date: February 19, 2013