GA Modefine S.A. v. Riccardo B Kara-Mat

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GA Modefine SA v Riccardo

Bin Kara-Mat

Case No. D2002-0195

1. The Parties

Complainant is GA Modefine SA, represented by Avvocato Mariacristina Rapisardi, Studio Rapisardi S.A., Via Ariosto, 6-6901 Lugano, Switzerland, hereinafter "the Complainant".

Respondent is Riccardo Bin Kara-Mat, The Penthouse Flat, 14D Byron Road, Wembley, Middlesex HAO 3NU, United Kingdom, hereinafter "the Respondent".

2. Domain Names and Registrars

The domain names in dispute are:

<armanicollezione.com>

<emporioarmaniparfums.com>

<giorgioarmani-cosmetics.com>

The registrars for the disputed domain names are Network Solutions, Inc. for <armanicollezione.com> and Easyspace Ltd. for <emporioarmaniparfums.com> and <giorgioarmani-cosmetics.com>.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on February 27, 2002, by electronic mail, and in hard copy March 6, 2002. On March 5, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.

(b) On March 6, 2002, the Center transmitted Requests for Registrar Verifications to the Registrars, with the verification from Network Solutions Inc. received by the Center, March 11, 2002 and from Easyspace Ltd. on March 13, 2002, confirming that the domain names at issue were registered through the respective Registrars.

(c) On March 27, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant through its initial filing and later amendments had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").

(d) No Response had been submitted by the Respondent until April 19, 2002, and accordingly, the Center issued a Notification of Respondent Default.

The Center received however a letter from the Respondent prior to the commencement of the administrative proceeding in the case, disputing the Complainant’s assertions with regard to the domain names at issue. In this letter, Respondent claimed that he did not take the initial approach regarding sale of the domain names at issue, and that his intentions with the domain names are the establishment of non-commercial fan-pages.

As the letter did not comply with the Rules and the Supplemental Rules, it cannot be deemed as a Response pursuant to the Rules Paragraph 5. Irrespective of the status of said letter, the Panel finds that Respondent’s contentions were undocumented and of such a nature that they would not affect the outcome of this case.

(e) In view of the Complainant’s designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Sole Panelist and transmitted the case file to the Administrative Panel on May 8, 2002. The parties were notified of the Appointment of Administrative Panel the same day.

(f) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.

4. Factual Background

After the Complainant’s assertions, supported by the documents enclosed

as annexes to the complaint and undisputed by Respondent, the Panel finds

the following:

Complainant is the owner of the trade marks ARMANI, GIORGIO ARMANI, EMPORIO

ARMANI and ARMANI COLLEZIONI which are famous world wide. Said trade marks

are used for different kinds of goods, such as clothes, glasses and perfumes,

and are registered in many different classes in Europe, the United States

of America, Canada, and internationally through World Intellectual Property

Organization. The Complainant’s rights in said marks are furthermore confirmed

in several decisions rendered by the Center.

The Respondent has registered the domain names <armanicollezione.com>,

<emporioarmaniparfums.com> and <giorgioarmani-cosmetics.com>.

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

The domain names at issue are confusingly similar to the trademarks ARMANI,

GIORGIO ARMANI, EMPORIO ARMANI and ARMANI COLLEZIONI held by Complainant.

The Respondent has no right or legitimate interest in respect of the domain

names at issue.

The Respondent has not been commonly known by the domain names at issue.

There are no indications that Respondent would have bona fide interests

in relation to the contested domain names or the names corresponding to

these domain names.

The domain name was and is registered and used in bad faith.

Respondent registered the domain names identical or confusingly similar

to Complainant’s trade marks for the purpose of selling the same to the

Complainant for valuable consideration in excess of the out-of-pocket costs

directly related to the domain names. Respondent asked £ 65.000 for transferring

one of the domain names at issue to Complainant.

The Complainant requests the Administrative Panel issue a decision that

the contested domain name must be transferred to the Complainant.

5.2 Respondent

Respondent has failed to make any Response within twenty days of the date

of the commencement of the administrative proceeding. Hence, the Panel finds

that Respondent is in default, and that the Panel shall decide the dispute

based upon the Complaint, pursuant to Paragraph 5(e) of the Rules.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must

satisfy in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect

of such domain name; and

(iii) the domain name has been registered in bad faith and is being

used in bad faith.

6.1 Identical or Confusingly Similar to a Trademark or a Service

Mark

None of the domain names at issue are identical to any of Complainant’s

trade marks. The question is therefore whether the domain names are confusingly

similar to any of the trade marks.

The domain name <armanicollezione.com> is differing from the Complainant’s

trade mark ARMANI COLLEZIONI with only one letter. There is thus a strong

visual and sonic similarity between the two. Said domain name incorporates

in its entirety Complainant’s house mark ARMANI, which is to be considered

a famous mark, on the basis of its worldwide reputation in connection

with fashion and luxury consumer goods. ARMANI COLLEZIONI must be regarded

as a strong and distinctive trade mark, and the replacement of one

vowel with another at the end of the mark can in no way prevent a strong

likelihood of confusion between the domain name at issue and Complainant’s

trade mark ARMANI COLLEZIONI.

The domain names <emporioarmaniparfums.com> and <giorgioarmani-cosmetics.com>

incorporates entirely Complainant’s trade marks EMPORIO ARMANI and GIORGIO ARMANI

respectively. Also these marks must be regarded as strong and distinctive,

and contains Complainant’s famous house mark ARMANI. The addition

of the generic terms "parfums" and "cosmetics" – who

both gives strong associations to Complainant’s business activity and products

– cannot be deemed sufficient to prevent the risk of unfounded identity

between the contested domain names and Complainant’s trade marks.

Thus, the Panel finds that Respondent’s domain names <armanicollezione.com>,

<emporioarmaniparfums.com> and <giorgioarmani-cosmetics.com>

are confusingly similar to Complainant’s trade marks.

6.2 Rights or Legitimate Interest in the Domain Names

The Panel has considered the allegations and evidence set forth by the

Complainant as to the lack of rights or legitimate interests of the Respondent

in respect of the domain names at issue, including the contention about

the lack of any legitimate or fair use, or intellectual property or bona

fide right of the Respondent to the contested domain names.

As discussed above under section 3(d), Respondent has not produced any

documentation to contest said allegations and evidence.

The Panel has visited the relevant web sites of the Respondent in order

to investigate whether there could be found any evidence as to Respondent’s

rights or the legitimacy of interest of the Respondent in the contested

domain names. The Panel did however not find any such evidence.

Thus, the Panel finds that the Respondent has no rights or legitimate interest

in the contested domain names.

6.3 Registration and Use in Bad Faith

The evidence submitted by the Complainant shows that Respondent registered

the domain names at issue without any rights or legitimate interest and

attempted to selling the same to Complainant for valuable consideration

in excess of the out-of-pocket costs directly related to the domain names.

Respondent’s bad faith is furthermore demonstrated by his registration

of several other domain names confusingly similar to Complainant’s trade

marks after having received a cease and desist letter in relation to the

domain name <armanicollezione.com>.

Respondent has not invoked any circumstances which could invalidate Complainant’s

allegations and evidence with regard to the Respondent’s registration and

use of the domain names in bad faith.

Complainant’s trade marks are very well known throughout the world, and

have thus in all probability been known to Respondent when registering the

domain names at issue. The Panel finds Respondent highly unlikely to have

registered the domain names at issue without being familiar with Complainant’s

trade marks.

In light of the above, the Panel finds that the Respondent has registered

and is using the domain names at issue in bad faith.

7. Decision

The Panel has found that the domain names are confusingly similar to trade

marks held by the Complainant, and that the Respondent has no rights to

or legitimate interest in said domain names. The Panel has further found

that the domain names in dispute have been registered and are being used

in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules,

the Panel request that the domain names <armanicollezione.com>, <emporioarmaniparfums.com>

and <giorgioarmani-cosmetics.com> be transferred to the Complainant.

Peter G. Nitter

Sole Panelist

Dated:May 22, 2002

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