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GA Modefine S.A. v. Sparco P/L

WIPO Case No. D2001-0370

Outcome
Transfer
Domain names
armaniexchange.net
Complainant
GA Modefine S.A.
Respondent
Sparco P/L
Panelist
Tony Willoughby
Decided
11 May 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0370.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

GA Modefine

S.A. –v- Sparco P/L

Case No.

D 2001-0370

1. The Parties

The Complainant is GA Modefine

S.A, Represented by, Avvocato Mariacristina Rapisardi, Via Ariosto, 6-6901 Lugano,

Switzerland.

The Respondent is Sparco

P/L, 20 Nuwarra Road, Holsworthy, Sydney, NSW 21700, Australia

2. The Domain Name and

Registrar

The Domain Name is <armaniexchange.net>

The Registrar is Network

Solutions, Inc.

3. Procedural History

The Complaint was received

by WIPO by email on March 12, 2001 and in hardcopy form on March 20, 2001. WIPO

has verified that the Complaint satisfies the formal requirements of the Policy,

the Rules and the Supplemental Rules and that payment was properly made. The

Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly

notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed

that armaniexchange.net ("the Domain Name") was registered through

Network Solutions, Inc and that Sparco P/L ("the Respondent") is the

current registrant. The Registrar has further confirmed that the Policy is applicable

to the Domain Name.

On March 23, 2001 WIPO

issued a Deficiency Notification and the Amended Complaint was received on March

27, 2001.

On March 30, 2001 WIPO

notified the Respondent of the Complaint in the usual manner and informed the

Respondent inter alia that the last day for sending its Response to the Complainant

and to WIPO was April 18, 2001. No Response was received, and WIPO issued a

Default Notice on April 20, 2001.

The Panel was properly

constituted. The undersigned Panelist has submitted a Statement of Acceptance

and Declaration of Impartiality and Independence.

No further submissions

were received by WIPO or the Panel, as a consequence of which the date scheduled

for the issuance of the Panel’s Decision is May 10, 2001.

4. Factual Background

The Complainant is the

well known proprietor of the Giorgio Armani family of trade marks, including

the trade mark AX ARMANI EXCHANGE (the "Trade Mark"), a trade mark

which has been registered in a number of different jurisdictions since the early

to mid 1990s. The Trade Mark has been used in relation to a variety of fashion

goods such as clothing, spectacles and perfumes.

On January 27, 1999, the

Respondent registered the Domain Name.

On May 11, 2000, the Complainant

lodged a Complaint with WIPO in relation to the Domain Name. The Decision was

issued on August 13, 2000 under case number D2000-0419. The Complaint failed.

The Panelist in that case concluded that the Complainant had failed to prove

that the Respondent had no right or legitimate interest in respect of the Domain

Name.

In making his finding the

Panelist had this to say, namely:-

"It must finally be

noted that while nothing neither in the Policy, nor in the Rules, prevents the

Complainant from submitting, for the same facts and circumstances, a new Complaint,

the Panel considers that comity and fairness would deny a Panel from reversing

a previous Decision on the merits issued by a brother or sister Panel. However,

when the Panel has rejected a Complaint for failure to plead the case and thus

without a specific finding on the elements under paragraph 4(a)(ii) and (iii)

of the Policy, the Complainant should have the chance to file another Complaint

where these elements are properly alleged and discussed. Such conclusion seems

fair and appropriate in light of the fact that the Respondent, having being

served a new and complete Complaint, is given the full possibility to reply

on facts and circumstances previously not indicated."

Subsequently, the Complainant

has undertaken further investigations into the Respondent and has discovered

that the Respondent’s registered office appears to be a fictitious one, being

the private residence of a married couple who claim to know nothing of the Respondent,

or Mr Geoff Lucas, the Administrative Contact and Billing Contact for the Domain

Name.

Furthermore, the Complainant

has undertaken searches of the Australian Companies Register and the PAIG Products

and Trade Marks Guide and has found no trace of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant relies

on the similarity of the Domain Name to the Trade Mark.

The Complainant asserts

that its investigations, conducted since the determination of its previous Complaint

and detailed above, have been sufficient to demonstrate that the Respondent

has no right or legitimate interest in the Domain Name, a name so closely referable

to the Complainant.

The Complainant points

to the circumstances and says that they clearly demonstrate registration and

use in bad faith, with the intent to profit illegitimately in some way from

the Complainant’s Trade Mark. The Complainant also points to the false information

supplied by the Respondent on registration of the Domain Name.

B. Respondent

The Respondent has not

responded.

6. Discussion and Findings

According to paragraph

4(a) of the Policy, the Complainant must prove that

(i) The Domain Name

is identical or confusingly similar to a trade mark or service mark in which

the Complainant has rights; and

(ii) The Respondent

has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name

has been registered and is being used in bad faith.

Re-filed Complaints

The Panel’s attention has

been drawn to the views of the distinguished Panelists in cases numbers D2000-0703

and D2000-1490 in relation to re-filed Complaints. The Panel endorses those

views, the substance of which is that Panels should be slow to entertain re-filed

Complaints and should only do so in exceptional circumstances. One of the circumstances

identified is where new evidence comes to light, which was not available to

the Complainant at the time of the original Complaint. Moreover, the Panel endorses,

in particular, the view expressed in the latter decision that: "rather

than dismissing the complaint without prejudice, the better approach is to utilize

the provisions of Rule 12 of the Uniform Rules, and request further statements

and/or documents from either or both of the parties. If, after being given this

opportunity, the complainant still is unable to satisfy the panel that the complaint

meets all the requirements of the Uniform Policy, then the complaint must be

dismissed. Such a dismissal must be seen as being with prejudice to the

re-filing of the complaint."

In the view of the Panel

the practice of dismissing a complaint without prejudice is to be discouraged.

The Panel understands (and is pleased to note) that the practice is on the decline.

In this case, the new "evidence"

produced is, in the main, evidence, which was available at the time the original

Complaint was filed. If, as appears to be the case, the information relating

to the Respondent is false now, it is likely to have been false at the time

of the original Complaint. The only changed circumstance identified by the Complainant

is the nature of the website to which the Domain Name is connected. The evidence

is that at the time of the previous Complaint there was nothing on the website

attached to the Domain Name, whereas following the previous Decision, the Domain

Name has been connected to the web page of a free domain registration service.

In the view of the Panel

the "new" evidence, to the extent that it was not available at the

time of the original Complaint, is not of great significance. The significant

information as to the falsity of the information supplied by the Respondent

on registration of the Domain Name was available and could have been produced

in May last year at the time of the original Complaint, if the relevant investigations

had been undertaken then.

Nonetheless, the Panel

believes that it would be unconscionable for the Panel not to entertain this

re-filed Complaint. The Panel has been powerfully influenced by the fact that

the previous Panelist effectively encouraged the Complainant to conduct further

investigations and re-file the Complaint. It appears that those further investigations

have involved the Complainant in significant expense. Moreover, the Complainant

submitted (and there being no mechanism for refusing a properly formulated complaint,

WIPO accepted) the fee for the re-filed Complaint. The Panel also observes that

the Respondent has not responded and is almost certainly non-existent - at any

rate under its registered name.

In these circumstances,

the Panel believes that it would be manifestly unjust for the Panel to refuse

to entertain the Complaint.

Identical or confusing

similarity

The Domain Name is very

similar to the Trade Mark (AX ARMANI EXCHANGE). The Trade Mark is an unusual

one and the Panel takes the view that it is inconceivable that in selecting

the Domain Name the Respondent intended to do other than bring to mind the Complainant

and/or its products.

In the circumstances, the

Panel finds that the Domain Name is confusingly similar to a trade mark in which

the Complainant has rights.

Rights or legitimate interest

of the Respondent

The Complainant has asserted

that the Respondent has no right or legitimate interest in respect of the Domain

Name.

As the Panel has observed,

the Domain Name is one, which is peculiarly referable to the Complainant and

nobody else.

The Complainant has undertaken

detailed enquiries which indicate that the Respondent does not exist under the

name supplied to the registration authorities and neither the Respondent nor

its administrative and billing contact is known at the address supplied. The

Complainant asserts that the Respondent has no rights or legitimate interests

in respect of the Domain Name.

In the Panel’s view, the

Complainant has done enough to demonstrate that the Respondent has a case to

answer. Paragraph 4(c) of the Policy identifies a non-exhaustive list of circumstances

that the Respondent can put before the Panel to demonstrate that it has rights

or legitimate interest in respect of the Domain Name.

The Respondent has now

had two opportunities to demonstrate that it has rights or legitimate interests

in respect of the Domain Name, but on both occasions the Respondent has failed

to take up that opportunity. If, as the Panel believes, the failure to respond

has simply been because the Respondent failed to supply accurate and/or up to

date information to the Registrar, then it has only itself to blame.

The Panel concludes from

the evidence put forward by the Complainant and from the Respondent’s failure

to respond, that either the Respondent does not exist (in which case it cannot

by definition have any right or legitimate interest in the Domain Name) or that

it has concluded that it cannot demonstrate that it has any such rights or legitimate

interests.

While the obligation is

on the Complainant to prove that the Respondent has no right or legitimate interest,

the Complainant having made out a prima facie case, the obligation is upon the

Respondent to answer that case. The Respondent has not done so.

The Panel finds that the

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

Bad Faith

For broadly the same reasons

the Panel concludes that the Domain Name was registered and is being used in

bad faith.

The name can only sensibly

be used in relation to the Complainant or its products. Any other use is bound

to lead to deception or confusion. Anyone attempting to visit a website connected

to the Domain Name will in all probability be expecting to visit a site relating

to the Complainant or its products. The fact that the name was registered, as

it appears to have been, by a non-existent entity at a false address leads the

Panel to believe that the registration can only have been made with an abusive

use in mind.

The Panel finds that the

Domain Name was registered in bad faith and is being used in bad faith.

7. Decision

In light of the foregoing

findings, namely that the Domain Name is confusingly similar to a trade mark

in which the Complainant has rights, that the Respondent has no rights or legitimate

interests in respect of the Domain Name and that the Domain Name was registered

in bad faith and is being used in bad faith, the Panel directs that the Domain

Name be transferred to the Complainant.

Tony Willoughby

Sole Panelist

Dated: May

6, 2001

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