Complainant is Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio of Mendrisio, Switzerland, represented by Saba & Co. IP, Lebanon.
Respondent is Mr. Mahmoud Haidar, M Haidar of Paris, France, represented by Law Offices of A. Abboud and Associates, Lebanon.
The disputed domain name <أرماني.com> [xn--igbi3azfgy.com] is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. Respondent did not submit any response.
On December 6, 2012, Respondent’s counsel requested to the Center an extension of the Response due date under paragraph 5(d) of the Rules. Respondent’s counsel in its request stated that “[M]y client is constantly travelling and does not reside any longer at the address shown in said Notification, and . . . he will be present in my offices on Monday morning December 10, 2012.” On the same date, the Center invited Complainant to comment on Respondent’s request. On December 10, 2012, Complainant strongly opposed the request on the ground that no exceptional circumstances were in evidence, as required under paragraph 5(d) of the Rules. The Center did not grant any extension of the Response due date as no special circumstances were established. The Center informed the Parties that “any submission filed by the Respondent after the Response due date will be forwarded to the Administrative Panel, once appointed, who will decide in its sole discretion whether to consider it in deciding the case.”
Respondent did not file any further submission.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on December 20, 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.
Complainant is an international Italian fashion house, which designs, manufactures, distributes and retails haute couture and a variety of clothing, fashion goods and accessories. Complainant owns a large number of registrations worldwide for its widely known ARMANI marks, including for example ARMANI أرماني,Qatari Trademark Registration No. 15719 in Class 25, dated October 1, 1996, in English and Arabic characters.
The disputed domain name was created May 14, 2011 and routes to webpages promoting a variety of goods and services, including Complainant’s products and the products of competitors of Complainant in the fashion goods industry.1
Complainant contends that the disputed domain name “is confusingly similar to Complainant’s famous ARMANI Mark … because it contains the exact Arabic translation of the famous ARMANI Mark in its entirety. It also is identical to the Arabic part of the Complainant’s ‘ARMANI in English & Arabic’ trademark in Qatar …”
Complainant also alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, that Respondent has no authorization to use the disputed domain name and that Complainant’s marks are famous and have a history of broad use in Arabic speaking countries since well before registration of the disputed domain name.
As for bad faith, Complainant avers that Respondent was well aware of Complainant’s trademarks before registering the disputed domain name, based on the prior fame and widespread use of the marks. Complainant alleges that Respondent uses the Arabic version of the ARMANI mark to intentionally attempt to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s mark. Complainant notes that Respondent’s website also has links among other things to offerings of Complainant’s products, as well as to products of competitors in the fashion industry. Complainant further alleges that it sent two cease and desist letters to Respondent and that Respondent’s failure to respond or to stop using the disputed domain name is further evidence of bad faith.
On the basis of these allegations Complainant requests transfer.
Respondent did not formally reply to Complainant’s contentions.
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name 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.
The Complaint must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).2
The Panel agrees with Complainant that the disputed domain name is confusingly similar to the ARMANI marks, in which Complainant has rights.
UDRP panels may disregard the generic Top-Level Domain (“gTLD”) suffix in determining whether a domain name is identical or similar to a complainant’s mark. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the gTLD suffix, then, the disputed domain name is confusingly similar to Complainant’s ARMANI أرمانيmark, phonetically. Moreover, the disputed domain name is visually identical to the Arabic portion of Complainant’s Qatari-registered trademark.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy.
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant avers that Respondent is not commonly known by the disputed domain name and that Respondent has no authorization to use the ARMANI or أرمانيmarks. In the absence of a response, the Panel accepts these undisputed factual averments as true.
The record shows that the website to which the disputed domain name resolves displays commercial links to third parties offering goods and services. The Panel finds that it is fair to infer that Respondent receives revenue when users click through the links displayed on the parking page to which the disputed domain name resolves. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit ... in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. Therefore, the Panel agrees with Complainant that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
The Panel also concludes that Respondent has registered and is using the disputed domain name in bad faith, as explained below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, or other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent must have known of Complainant’s ARMANI marks when Respondent registered the disputed domain name, since the trademark had been in existence and widely used well before registration of the disputed domain name. On the website to which the disputed domain name resolves, the display of links to Complainant’s products and the usage of Complainant’s trademarks also confirms Respondent’s awareness of the trademarks. In the words of another panel, “[i]t seems [highly] unlikely ... that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236.
The Panel finds, therefore that the disputed domain name was registered in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Online screens from Respondent’s website show that the disputed domain name is used not only to promote Complainant’s products, but also to promote the products of other clothing and fashion accessory companies. The Panel concludes that this activity demonstrates bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; CasioKeisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. BartelsSystem GmbH, WIPO Case No. D2003-0088).
Respondent’s lack of a response to the Complaint and the failure to respond to Complainant’s cease and desist letters are also considered cumulative evidence of bad faith use. E.g., Telstra Corporation Limited, supra; Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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 <أرماني.com> [xn--igbi3azfgy.com] be transferred to Complainant.
Nasser A. Khasawneh
Date: January 3, 2013
1The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5.
2 As noted above, Respondent sought but was denied an extension of time to file a Response. In making the request, counsel made no statement that there was a delay in notification. The Panel agrees with the Center’s action to deny the request for extension on the basis that Respondent’s counsel offered no showing of exceptional circumstances under the Rules, paragraph 5(d).
In any case, it is Respondent’s obligation under the registration agreement to keep contact information updated. Perhaps most telling, Respondent failed to provide any material or response on a provisional basis after the Center denied the extension but offered the possibility of supplementing the record after the deadline had passed, subject to later consideration by the Panel.
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