WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lin jinqing

Case No. D2012-1412

1. The Parties

Complainant is Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Studio Rapisardi S.A., Italy.

Respondent is Lin jinqing of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <armani-emporio.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2012. On July 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 19, 2012, the Center transmitted an email to the parties in both the Chinese and English languages regarding the language of proceedings. On July 20, 2012, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on September 12, 2012. The Panel finds that it was properly constituted. The Panel 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. The decision due date has been subsequently extended by the Panel.

4. Factual Background

Complainant, Giorgio Armani S.p.A., is a company incorporated in Mendrisio, Switzerland. Giorgio Armani is a famous designer and producer of different kinds of goods and services, such as watches. Complainant is the owner of several ARMANI and EMPORIO ARMANI trademarks (the “ARMANI Marks”) registered worldwide, including registrations in Europe, United States of America, Canada and many Madrid international trademark registrations (registered since 1986, Annex C to the Complaint).

Respondent is Lin jinqing of Guangzhou, Guangdong, China. The disputed domain name <armani-emporio.com> was registered by Respondent on June 28, 2011 long after the ARMANI Marks became internationally famous (Annex A to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) Complainant owns several worldwide known ARMANI and EMPORIO ARMANI trademarks.

Said ARMANI Marks are registered and have been constantly used for several years, and registrations cover the European Union, United States, Canada, and many other countries.

The ARMANI Marks are well-known all over the world.

The disputed domain name <armani-emporio.com> incorporates entirely Complainant’s ARMANI Marks.

The mere inversion of the words “Emporio” and “Armani” is not sufficient to distinguish the disputed domain name from Complainant’s trademarks.

(b) The lack of rights or legitimate interests of the Respondent in respect of the disputed domain name.

Respondent has no legitimate interest in using the words “Armani” and / or “Emporio Armani” in the disputed domain name.

Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the ARMANI Marks in a domain name or in any other manner.

Respondent has not acquired any legitimate rights whatsoever in the disputed domain name or any name corresponding to the disputed domain name.

Respondent is making a commercial use of the disputed domain name and Complainant’s trademark with intent for commercial gain to misleadingly divert consumers.

Through the website at the disputed domain name, Respondent offers and puts on sale a wide range of non original watches distinguished by the trademarks EMPORIO ARMANI, and puts the sign Emporio Armani at the top of the relevant homepage.

Considering that Complainant has its own official website <emporioarmani.com>, it is very likely that the consumers will be misled by the adverse website and will be led to believe that it is one of the official websites authorized by Complainant.

(c) The bad faith of Respondent in the registration of the disputed domain name is found.

The worldwide fame of the ARMANI Marks leaves no question of Respondent’s awareness of those at the time of the registration of the disputed domain name.

Through the website at the disputed domain name it is possible to buy a wide range of not original products distinguished by Complainant’s ARMANI Marks.

Respondent, warned by Complainant on the illegality of his domain name registration and use, has never check complaint when requested to transfer the disputed domain name (Annexes H and I to the Compliant) and maintained the website to which the disputed domain name resolves, despite Complainant’s objection.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant, due to its nationality and the place of its registered office, has no familiarity with the Chinese language.

(b) Respondent has chosen to register a domain name with the unsponsored gTLD “.com”, typically not representing a specific community, and regulated by the policies established by the global Internet community directly through the ICANN process, ruled by the English language.

(c) The language used in the pages to which the disputed domain name resolves is English.

(d) These circumstances demonstrate that Respondent’s has for sure a great familiarity with the English language.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“[I]n certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company from Switzerland, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “Armani” and “Emporio” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <armani-emporio.com> is registered in Latin characters, rather than Chinese script; (b) The content on the website at the disputed domain name is in English. Respondent is apparently doing business in English through this website (Annex F to the Complaint); (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in several ARMANI and EMPORIO ARMANI trademarks acquired through registration. The ARMANI Marks have been registered worldwide including registrations in Europe, United States, Canada and many Madrid international trademark registrations.

The disputed domain name <armani-emporio.com> comprises the ARMANI and EMPORIO ARMANI Marks in their entirety. The disputed domain name only differs from the Complainant’s trademark ARMANI by the addition of the word “Emporio” and the hyphen “-” to connect the two words and only differs from Complainant’s trademark EMPORIO ARMANI by the inversion of the words “Emporio” and “Armani” and the addition of the hyphen “-” to connect the two words. This does not eliminate the identity or at least the similarity between Complainant’s registered trademarks and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKTDataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere inversion of the words “Emporio” and “Armani” and the addition of the hyphen “-” to connect the two words fail to distinguish the confusing similarity between the EMPORIO ARMANI trademarks and the disputed domain name. Consumers who visit “www.armani-emporio.com” are likely to be confused and may falsely believe that “www.armani-emporio.com” is operated by Complainant for selling Armani and Emporio Armani-branded products. (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768).

Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the ARMANI and EMPORIO ARMANI trademarks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has been known commonly by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the ARMANI Marks globally for several years (since 1986, Annex C to the Complaint) which long precedes Respondent’s registration of the disputed domain name (2011).

According to the Complaint, Complainant is one of the world’s leading producer of watches and its ARMANI marks have become world-wide famous. Moreover, Respondent is not an authorized dealer of ARMANI branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “Emporio” and “Armani” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ARMANI Marks or to apply for or use any domain name incorporating the ARMANI Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <armani-emporio.com> in 2011, long after the ARMANI Marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s ARMANI Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported ARMANI products on the website at <armani-emporio.com> (Annex F to the Complaint). The Panel also notes, as further discussed under the third element, that the website at the disputed domain name does not accurately and prominently disclose Respondent’s relationship with Complainant.

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ARMANI Marks with regard to its products. Complainant has registered its ARMANI Marks internationally, including registrations in Europe, United States, Canada and many Madrid international trademark registrations (Annex C to the Complaint). Moreover, the website advertises for sale various purported Complainant’s products. Respondent would not have advertised products purporting to be Complainant’s products on the website if he was unaware of Complainant’s ARMANI Marks’ reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the ARMANI trademarks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s ARMANI branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s ARMANI branded products and services without authorization. Complainant claimed that Respondent is doing a commercial use of the disputed domain name and Complainant’s trademark with intent for “commercial gain” to misleadingly divert consumers.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ARMANI trademarks (as well as the content on Respondent’s website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (Annex F to the Compliant). In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the ARMANI Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the website at the disputed domain name, potential partners and end users are led to believe that the website at the disputed domain name <armani-emporio.com> is either Complainant’s site or the site of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <armani-emporio.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 27, 2012