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GA Modefine S.A. v. AMG

WIPO Case No. D2001-0320

Outcome
Transfer
Domain names
armani-on-line.com
Complainant
GA Modefine S.A.
Respondent
AMG (United Kingdom)
Panelist
Luca Barbero
Decided
21 Apr 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0320.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

GA Modefine S.A. v. AMG

Case No. D2001-0320

1. The Parties

Complainant is GA Modefine SA., having registered offices in 90, Avenue de

France – CH – 1004 Lausanne, Switzerland. The Complainant’s authorized representative

in this administrative proceeding is Mariacristina Rapisardi, Studio RAPISARDI

S.A., Via Ariosto, 6 – 6901 Lugano, Switzerland.

The Respondent is AMG, PO Box 67 – Farnham – Surrey GU9 8YR, United Kingdom.

The administrative contact is Mr. Matthew Wilkinson of Xclusive Sounds, 7 Priority

Court, 1 Fresham Road Farnham, Surrey GU9 8HA, United Kingdom.

2. The Domain Name and Registrar

This dispute concerns the domain name <armani-on-line.com>; hereinafter

referred to also as the "Domain Name". The registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received a complaint

(hereinafter the Complaint) by email on March 5, 2001 and in hardcopy and exhibits

on March 9, 2001. On March 8, 2001, the Center transmitted via email to

Network Solutions, Inc., a request for registrar verification in connection

with this case. On March 12, 2001, Network Solutions, Inc. transmitted via email

to the Center, Network Solutions, Inc.'s Verification Response, confirming that

the registrant is AMG and that the Domain Name registration is in "active"

status.

Having verified that the Complaint satisfied all the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules

for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules),

the Center transmitted on March 14, 2001, to AMG the Notification of Complaint

and Commencement of the Administrative Proceeding by post (with attachment),

and by fax and email (without enclosures). On the same day, the Center transmitted

via email, copies of the foregoing documents to the complainant’s representative

and to Network Solutions Inc.

On April 3, 2001, having received no Response from the Respondent, the Center

issued a Notification of Respondent Default. No reply by Respondent to the Notification

of Respondent Default was received.

On April 5, 2001, in view of the Complainant’s designation of a single member

panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted

to him the Request for Declaration of Impartiality and Independence and a Statement

of Acceptance.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration

of Impartiality and Independence, the Center transmitted on April 11, 2001 to

the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date for April 24, 2001, in which Mr. Luca Barbero was formally appointed

as the Sole Panelist. The Sole Panelist finds that the Administrative Panel

(hereinafter referred to also as the Panel) was properly constituted and appointed

in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Panel finds

that the Center has discharged its responsibility under Paragraph 2(a) of the

Rules "to employ reasonably available means calculated to achieve actual notice

to Respondent."

Therefore, the Panel shall issue the Decision on the basis of the Complaint,

the Policy, the Rules, the Supplemental Rules and any rules and principles of

law deemed applicable, without the benefit of any Response from Respondent.

4. Factual Background

The Complaint is based on a number of registrations for the trademarks GIORGIO

ARMANI, ARMANI and EMPORIO ARMANI.

The Respondent registered the domain name <armani-on-line.com> on March

2, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant "owns several trademarks worldwide known, the Armani Trademarks,

as GIORGIO ARMANI, ARMANI and EMPORIO ARMANI". Said trademarks are used

for different kinds of goods, such as clothes, glasses, perfumes in many classes

as 3, 8, 9, 14, 18, 20, 21, 24, 25, 34 with registrations in Europe, United

States of America, Canada, International Registrations and other registrations

in many countries.

The notoriety and diffusion of Armani trademarks are also proved by the several

articles, which constantly appear throughout the world on fashion magazines

and on the most important newspapers. The Panel is informed that "the right

of the Complaint has been confirmed by two positive decisions rendered by WIPO

Arbitration and Mediation Center (WIPO Case No. D2000-0305 GA Modefine SA v.

Armani International Investments and WIPO Case No. D2000-0306 GA Modefine SA

v. AES Optics)".

AMG has registered a domain name consisting in the name "ARMANI"

of one of the most famous Italian fashion stylist who designs and sells exclusive

products offered to selected customers. Complainant states that "the lack

of rights and lawful rights of the defendant in respect of the contested domain

name is proved by the fact that AMG has no right or legitimate interest in respect

of wording Armani".

The bad faith of the Respondent in the registration of the Domain Name is proved

by two circumstances.

Firstly, the registration of domain name consisting in a family name of a worldwide

famous fashion stylist reveals the intention of AMG to exploit the notoriety

and importance of said name and to take advantage from the unlawful use of the

trademarks comprehensive of that name owned by Modefine, provided that at the

time of the registration of the Domain Name AMG was certainly aware of the fame

and worldwide relevance of Armani trademarks.

The intention of AMG to exploit the trade marks of Modefine is confirmed by

the fact that AMG uses the name of one of the most fashion stylist in the world

in order to distinguish itself among the hundreds, if not thousands, of sites

which offer registration of domain names; in fact the site corresponding to

the domain name <armani-on-line.com> hosts the banner of another site

<domainvalet.com> trough which are sold domain names and internets spaces.

Complaint underlines that "in this way, the user who wants to visit the

site of the renowned fashion designer, visits also the defendant site which

offers domain names registrations that the user was not interested to visit.

Therefore, it is confirmed that the use made by the Respondent of the contested

Domain Name is unlawful and infringes our client’s rights."

Secondly, the bad faith is also proved by the fact that the Respondent has

registered several domain names with which it is likely that AMG has not any

relationship in particular names of famous actors like <liztaylor.org>,

<billcosby.org> and shops, banks like <disneybank.net>, <bankswisss24x7.com>,

<blockbusterchina.com>.

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described

above, the Complainant "requests the Administrative Panel appointed in

this administrative proceeding issue a decision that the contested Domain Name

be transferred to the Complainant".

B. Respondent

Respondent has not contested the allegations of the Complainant and is in default.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint

on the basis of the statements and documents submitted in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly

similar to a trademark or a service in which the Complainant has rights; and,

(ii) that the Respondent has no rights or legitimate interests in respect of

the Domain Name; and,

(iii) that the Domain Name has been registered and is being used in bad faith.

6.1. Domain name identical or confusingly similar

The Complainant has provided evidence of ownership of several trademark registrations

and applications for ARMANI in different countries, including the UK registration

n. 1287747 of October 1986 in class 25 for the word mark ARMANI.

In view of the above, the Panel finds that the Complainant has proved that

the Domain Name is confusingly similar to the trademark of the Complainant according

paragraph 4(a)(i) of the ICANN Policy.

6.2. Rights and legitimate interest

By not submitting a Response, the Respondent has failed to invoke any circumstance

that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights

or legitimate interests in the Domain Name.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent

and the Complainant and Respondent is not a licensee of the Complainant, nor

has the Respondent otherwise obtained an authorization to use Complainant’s

trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests

in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN

Policy.

6.3. Registration and Use in Bad Faith

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of the holder’s documented out-of-pocket costs

directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner

of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the holder has engaged in a pattern of such conduct;

or

(iii) the holder has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract,

for commercial gain, Internet users to the holder’ s website or other online

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 the holder’s website or location.

Panel finds the paragraph iv) applicable in the instant case since the Domain

Name pointed at a page where domain name registration and hosting services of

a Provider were advertised and sold (Annex F of the Complaint). It cannot be

excluded that such commercial activity was intentionally requested or authorized

by the Respondent and that a commercial gain was generated therein. Furthermore,

the Panel finds that such web site may have attracted Internet users seeking

information about the famous Italian fashion stylist and was likely to create

confusion as to the source, sponsorship, affiliation or endorsement by the Complainant.

It is noted that at the time of the drafting of the present decision the Domain

Name <armani-on-line.com> does not point to an active web page any more.

Pursuant to the interpretation of the ICANN’s Uniform Domain Name Dispute Resolution

Policy in a case of passive holding of the domain name first provided in Telstra

Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and

in a number of following decisions such as Ingersoll-Rand v. Frank Gully, d/b/a

Advcomren, (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric,

(WIPO Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO Case No. D2000-0055);

Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case

No. D2000-0468), the Panel has also taken into consideration the following particular

circumstances for the assessment of bad faith.

(a) Complainant’s trademark has a strong reputation and it is known in the

UK, where the Respondent is based, and in a number of different countries of

the world.

(b) Respondent knew or should have known of the existence of the Armani well-known

trademark.

(c) Respondent has provided no evidence of nor alleged any actual or contemplated

good faith use of the Domain Name.

(d) Respondent failed to respond to the Complaint at issue or to deny any of

its allegations.

(e) It is not possible to conceive of any legitimate, actual or contemplated,

active use of the instant Domain Name by the Respondent.

In view of the above, the Panel finds that Respondent registered and used the

Domain Name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.

7. Decision

In light of the foregoing, the Panel decides that the Domain Name registered

by the Respondent is confusingly similar to the Complainant's trademarks, that

the Respondent has no rights or legitimate interests in respect of the Domain

Name and that the Domain Name has been registered and used in bad faith. Accordingly,

the Panel requires that the registration of the domain name <armani-on-line.com>

be transferred to the Complainant.

Luca Barbero

Sole Panelist

Dated: April 21, 2001

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