GA Modefine SA v [-], Armanibeauty.com’s Administrative Contact
Case No. D2006-1351
1. The Parties
The Complainant is GA Modefine SA of Mendrisio, Switzerland.
The Respondent is [-], of Virginia, United States of America, armanibeauty.com’s
administrative contact Trung Truc Nguyen of Montreal, Canada.
2. The Domain Name and Registrar
The disputed domain name <armanibeauty.com> is registered with Tucows
Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2006 by email and in hard copy on October 18, 2006. On October 25, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. This was given on the same day with confirmation that the domain name was registered with Tucows Inc and that the current registrant of the domain name was [-], and Trung Truc Nguyen was the administrative and technical contact with an address in Virginia United States of America.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on October 27, 2006. A Response was received from the Respondent on October 28, 2006.
On November 22, 2006, the Center appointed Clive Duncan Thorne
as the Sole Panelist in this matter on November 24, 2006. The Panel finds that
it was properly constituted. The Panelist 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).
4. Factual Background
The Complainant is the owner of trademark rights in GIORGIO ARMANI, ARMANI, and EMPORIO ARMANI. The trademarks are registered and used for different kinds of goods and services such as clothes, glasses, perfumes, cosmetics, jewellery, confectionery, pubs, restaurants, hotels, beauty salons and spas in many classes including classes 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28, 34, 35, 42 and 43. The Complainant has trademark registrations throughout Europe, in the United States of America as well as many international registrations extended to a number of countries including Vietnam. Copies of certificates of registration for all three of the above marks are set out at Annex C to the Complaint.
The Complainant trades in the fashion industry. At Annex D to the Complaint are exhibited several articles of a type which appear frequently throughout the world in fashion magazines and in leading newspapers.
The Complainant relies upon a number of previous decisions issued by the Center, copies of which are annexed at Annex E to the Complaint, which support the Complainant’s contentions with regard to its trading activity and trademark rights.
The dispute arises from the use of the domain name in dispute by the Respondent. The Response was filed by Armanibeautycom’s administrative contact.
The domain name in dispute resolves to a website promoting five beauty salons and day spas located in the United States of America and in Vietnam details of which are set out in the extract from the Respondent’s website exhibited at Annex F to the Complaint.
The Complainant exhibits a chain of correspondence between the Complainant and Respondent beginning with a cease and desist letter sent to the Respondent on 3 October 2005 (Annex H) to the Complaint. The letter states:
“It comes to our Client’s attention that without license or permission, you are using the Armani trademarks to promote your activities consisting in the management of beauty-salon, day spa and medi spa in McLean, Virginia and Georgetown. In so doing, you are infringing our client’s famous trademarks, violating both trademark and unfair competition law and causing our client immediate and considerable harm and damage.”
The Respondent replied by email on October 7, 2005, indicating that it was not the Respondent’s intention to infringe the trademarks but that the business wished to use an Italian sounding name for marketing purposes and that the Respondent’s lawyer had informed the Respondent that as long as it used the word “Armani Beauty” as a word mark would not infringe the Complainant’s trademark, particularly since the Respondent’s business was that of a beauty salon. The Reply concludes that “obviously we were given a wrong advice in adopting such a name Armani Beauty and willing to work with you to correct any wrongful impressions. If that is the case, please accept our apology”.
Further correspondence is exhibited in Annexes L to P of the Complaint. The Respondent indicated that it was prepared to change the domain name in dispute and on December 27, 2005, that “the website ‘armanibeauty.com’ will cease to exist immediately, if not already”. In the same communication the Respondent told the Complainant that the Respondent itself had sold all the activities related to the beauty salons and spas to other subjects.
The Complainant’s present position is that after
the first cease and desist letter and despite further reminders, nothing has
happened, the domain name is still owned by the Respondent and the website has
the same content. In these circumstances, the current proceedings were brought
by the Complainant seeking a transfer of a domain name.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
The Armani trademarks are famous and well known all over the world. The domain name in dispute incorporates in its entirety the mark “ARMANI”. The addition of the generic term “beauty” is insufficient to prevent the risk of confusion. Moreover, the term “beauty” corresponds to goods and services for which the Armani marks are registered and have been using.
The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant relies upon the correspondence and the Respondent’s admission in the communication of October 7, 2005, to the effect that it was given wrong advice in adopting “Armani Beauty”.
The domain name is registered and being used in bad faith.
The Complainant contends that the factual circumstances together with the lack of rights or legitimate interest of the Respondent in the domain name lead to the conclusion that the Respondent registered and is using the disputed domain name in bad faith. In particular, the Complainant submits that the Respondent, by registering the domain name, and by using it for a site that promotes beauty salons and spas has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
The Respondent asserts that the domain name was properly and legally registered maintained and operated as a “real” business in Vietnam and the United States of America since 1999. The business activities of the Respondent appear to relate only to the operation of a beauty salon and medical spa i.e., beauty services and not beauty products. The Respondent submits that these business have been operated “professionally” under the trading name “Armani Beauty Salon and Spa” or “Armani Beauty Salon and Medi Spa”.
The Respondent indicates without exhibiting evidence that an application was made to register “Armani Beauty” as a word with the United States of America’s trademark office in 2002. No evidence is given as to the outcome of that application.
The Respondent states that in 2005 the two beauty
salon and medi spa businesses in the United States of America have been sold
to new owners who have no relationship whatsoever with the previous salon owners
nor the domain name nor the owners of the domain name dispute <armanibeauty.com>.
6. Discussion and Findings
Under paragraph 4(a) of the Policy the Complainant has the burden of proof in showing:
(1) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which without limitation are deemed to be evidence of the registration and use of the domain name in bad faith.
A. Identical or confusingly similar
The Panel has reviewed articles appearing in fashion magazines and in leading newspapers included in the Complaint from which it finds that ARMANI is widely known throughout the world in respect of fashion goods. In the Panel’s view there is clear evidence that Complainant has an international trading reputation and goodwill in respect of fashion goods sold under the marks GIORGIO ARMANI, ARMANI, and EMPORIO ARMANI.
The Panel accepts the Complainant’s evidence of its widespread trademark rights. It also accepts the submission, based upon the press evidence submitted, that the ARMANI marks are widely known throughout the world.
The question is whether the domain name in dispute, which consists of the word
“Armani” together with the word “Beauty”, is confusingly
similar to a trademark in which the Complainant has rights. There is evidence
that the Complainant has rights in respect of the word ARMANI. It also has trademark
rights in respect of beauty salons. It does not matter whether the word “beauty”
is essentially generic qualifying the mark ARMANI by reference to “beauty”.
Moreover, UDRP panelists in numerous cases have held that incorporating a trademark
in its entirety may be sufficient to establish that a domain name is identical
of confusing similar to the complainant’s registered trademark, see e.g.
Quixtar Investments, Inc. v. Dennis Hoffman, WIPO
Case No. D2000-0253. It does not matter whether the reference is to beauty
services or beauty products. The Panel finds that the disputed domain name is
confusingly similar to the trademark “Armani” owned by the Complainant.
Accordingly, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant draws attention to the fact that the Respondent has not been commonly known by the disputed domain name nor is there any evidence that the Respondent has any connection or affiliation with the Complainant and has not received any license or consent to use the ARMANI marks. Moreover, there is no evidence adduced by the Respondent that it has acquired any legitimate rights whatsoever in the disputed domain name or any name corresponding to that domain name. To the contrary the communication of October 7, 2005, (Annex I) makes it clear that the Respondent accepts that it was given wrong advice in adopting the name “Armani Beauty”.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant relies upon the worldwide fame of the ARMANI marks. The fact that the marks are widely known internationally is (as set out above) accepted by the Panel. The Complainant submits that the choice of the disputed domain name was not mere coincidence but was an intentional act to attract for commercial gain internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts this submission and again relies upon the evidence of the correspondence which shows that the Respondent was aware that it had made “a wrong choice” in relying upon earlier advice and continuing to use disputed domain name. Moreover, the Respondent appears to accept the need to change its use of the domain name in dispute. No substantive reasons are given in the Response as to why the disputed domain name was registered and is being used in good faith.
Accordingly, the Panel finds that the domain name was registered and is used
in bad faith.
7. Decision
For the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <armanibeauty.com> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: December 6, 2006
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