WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GA MODEFINE SA V. AES OPTICS
Case No. D2000-0306
1. The Parties
The Complainant is GA Modefine SA a Swiss corporation, 90 Avenue de France, CH- 1004 Lausanne. The Complainant’s Representative is Avvocato Mariacristina Rapisardi, Studio RAPISARDI SA, Via Ariosto, 6 – CH- 6901 , Lugano.Telephone: (+41)091-9220585; Fax: (+41)091-9220558, e-mail: [email protected]
The Respondent is AES Optics, Address: 4389 getwell – Memphis Tn 38118 – USA; Adminstrative contact: Whitley Wade, Telephone: 901 7947171; Fax: 901 7947171.800; e-mail: [email protected] and [email protected] . Without representative in the administrative proceeding.
2. The Domain Name and Registrar
The dispute concerns the domain name ARMANI-SUNGLASSES.COM. The Registrar with which the domain name is registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on April 18, 2000, in hardcopy .On April 20, 2000, the Center sent a Complaint deficiency notification and on April 21, 2000, the Complaint was submitted in electronic format.
On April 24, 2000, the acknowledgement of receipt of the Complaint and a request for Registrar verification were sent. The answer to that request was received from Network Solutions on April 26, 2000.
On May 14, 2000, the notification of the Complaint took place and the administrative proceeding began on May 15, 2000. The compliance with the formal requirements of the Policy, Rules and Supplemental Rules has been checked. The payment in the required amount to the Center has been made by the Complainant.
The Respondent should have sent his response before June 3, 2000 but the Center did not receive any response in this time limit.
On June 8,2000, the notification of Respondent Default was sent by e-mail and on the same date the Respondent replied by a short e-mail .
The sole Panelist accepted his appointment on June 15, 2000, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On June 17, 2000, the sole Panelist received from the Center the hard copy of the file.
This dispute is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement pursuant to which the domain name was registered incorporates the Policy. The domain name was registered on March, 1, 1999.
As the language of the domain name registration agreement is the English language , the proceeding will be led in English, according paragraph 11 (a) of the Rules.
The decision is issued within the time-limit fixed by June 30, 2000.
4. Factual Background
The following facts are not contested:
(a) The Complainant has rights on the following trademarks:
International:
GIORGIO ARMANI ( May 1, 1986) , 502877 (more than 20 countries) (Holder Codefine SA )
EMPORIO ARMANI (May 22, 1989) , 536698 (12 countries) (Holder Giorgio Armani SPA)
GIORGIO ARMANI (March 17, 1988), 522094 (more than ten countries) (Holder Codefine SA)
ARMANI (May 1, 1986) , 502876 (more than 20 countries) Holder Codefine SA)
GIORGIA ARMANI ( April 20, 1998), Renewal, R437479 ( more than 25 countries)( Holder GA Modefine SA)
USA :
GIORGIO ARMANI ( October 1, 1997) 2,288,471 ( Holder GA Modefine SA)
Canada:
EMPORIO ARMANI & DESIGN ( February 3, 1999) 650497 (Holder GA Modefine SA).
These trademarks have been and are used and the products and services designed are those of classes 3, 8, 9, 14, 18, 20, 21, 24, 25, 34, 35
(see Annex C of the Complaint).
(b) The Respondent has registered on March 01, 1999, the domain name: "ARMANI-SUNGLASSES.COM".
5. Parties’ Contentions
(a) Complainant
The Complainant points out that "he owns several trademarks worldwide known, the Armani Trademarks, as GIORGIO ARMANI, ARMANI and EMPORIO ARMANI. Said trade marks are used for different kinds of goods , such as clothes, glasses, perfumes in many classes with registrations in Europe, United States of America and many international registrations at the WIPO. Provided that AES Optics certainly knew at the moment of the registration of the Domain name at issue the importance and the notoriety of all the ARMANI trade marks, the company certainly registered the Domain Name in bad faith to the purpose of taking advantage from an unlawful use of the Modefine world famous trademarks".
(b) Respondent
The Respondent has not filed any response to the Complaint and has been notified of his default on June 8, 2000 , but on the same day, has made an unformal response by e-mail. The content of this response is: "I would be happy to just give them the domain if they let me sell Armani sunglasses. Rather than going through this garbage I would like to make you money. Just call me on my dime at 1.800.846.0013".
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
(a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(b) that the respondent has no rights or no legitimate interests in respect of the domain name; and,
(c) the domain name has been registered and used in bad faith.
1. Identity or similarity
The prior trademarks of the Complainant in their distinctive part – "Armani"-, are identical to the domain name "Armani-sunglasses.com" of the Respondent, as the adjunction of the word "sunglasses" cannot modify the attractive power of the word "Armani", and, on the contrary, precisely designs products claimed by the Complainant’s trademarks . In addition, the Complainant has for several decades successfully been using the Armani mark in the area of clothing and fashion articles, sunglasses,etc., and it can be said that "Armani" is a well-known mark in the sense of art.6 bis of the Paris Convention. Thus the Domain Name "Armani-sunglasses.com" generates confusion with the marks "Armani".
2. Rights or legitimate interests of the Respondent in respect of the domain name.
The Respondent has not filed any response to the Complaint in the time limit
and has not alleged any facts or elements to justify prior rights or legitimate interests in the domain name at issue. Moreover, his short response of June 8, 2000 ("I would be happy to just give them the domain if they let me sell Armani sunglasses") demonstrates his absence of legitimate interests in the said domain name.
Thus the Panel concludes that the Respondent had no right or legitimate interest to register a domain name consisting of the notorious trademark of a third party.
3. Registration and use in bad faith
The Panel considers that bad faith can be presumed in the registration and use of a domain name consisting wholly or partly of the notorious trade mark of a third party . In this particular case, the response expressed by the Respondent in his e-mail of June 8, 2000 demonstrates that the said Respondent was quite aware of the notoriety of Armani sunglasses ; of the fact that his registration of the domain name had prevented the owner of the trade mark from reflecting it in a corresponding domain name and should disturb the business of the Complainant.
At the same time, the Respondent has not alleged any circumstance under the provisions of Section 4 c) of the Policy.
For the above reasons, the Panel decides as follows:
7. Decision
In light of the foregoing, the Administrative Panel decides that the domain name registered by the Respondent is identical to the trademark to which the Complainant has rights, and that the Respondent has no right or legitimate interest in respect of the domain name at issue. The Panel also decides that the circumstances demonstrate that the Respondent’s domain name has been registered and is being used in bad faith,
Accordingly, pursuant to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name "Armani-sunglasses.com" be transferred to the Complainant: GA MODEFINE SA ( Switzerland).
