Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. apichart hadpichai / namuan
Claim Number: FA1101001366962
Complainant is Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio (“Complainant”), represented by Anthony F. Lo Cicero of Amster, Rothstein & Ebenstein, New York, USA. Respondent is apichart hadpichai / namuan (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <giorgio-armani.us>, registered with Name.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 11, 2011; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2011.
On January 11, 2011, Name.com confirmed by e-mail to the Forum that the <giorgio-armani.us> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchruch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <giorgio-armani.us> domain name is identical to Complainant’s GIORGIO ARMANI mark.
2. Respondent does not have any rights or legitimate interests in the <giorgio-armani.us> domain name.
3. Respondent registered and used the <giorgio-armani.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the GIORGIO ARMANI mark in connection with men’s and women’s clothing, fragrances, cosmetics, and fashion accessories. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GIORGIO ARMANI mark (e.g., Reg. No. 1,156,891 issued June 9, 1981).
Respondent registered the <giorgio-armani.us> domain name on March 1, 2010. The disputed domain name currently resolves to an inactive website.
Paragraph 15(a) of the Rules instructs this Panel to "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 deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts rights in the GIORGIO ARMANI mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,156,891 issued June 9, 1981). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the GIORGIO ARMANI mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”). In addition, the Panel finds that it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends the <giorgio-armani.us> domain name is identical to its GIORGIO ARMANI mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely replaces the space between the words in the mark with a hyphen in the disputed domain name. Respondent also affixes the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark in the domain name. The Panel finds that Respondent’s slight alterations do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i)); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Consequently, the Panel concludes that Respondent’s <giorgio-armani.us> domain name is identical to its GIORGIO ARMANI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <giorgio-armani.us> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests once Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <giorgio-armani.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Furthermore, the WHOIS information lists “apichart hadpichai / namuan” as the registrant of the disputed domain name, which is not similar to the <giorgio-armani.us> domain name. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply).
Complainant alleges the disputed domain name fails to resolve to an active website. Based on the evidence in the record, the Panel finds the disputed domain name resolves to an inactive website. Accordingly, the Panel finds that Respondent does not use the <giorgio-armani.us> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that [UDRP] ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the [UDRP] is not an exhaustive list of bad faith evidence).
Panels have found that a respondent’s failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name after the complainant registered its trademark with the USPTO). In this case, Complainant registered the GIORGIO ARMANI mark with the USPTO approximately thirty years before Respondent registered the <giorgio-armani.us> domain name on March 1, 2010 (e.g., Reg. No. 1,156,891 issued June 9, 1981). Therefore, the Panel finds that Complainant acquired rights in the GIORGIO ARMANI mark before Respondent registered the <giorgio-armani.us> domain name, which is identical to Complainant’s mark. Accordingly, the Panel replies on precedent and holds that Respondent’s failure to make active use of the disputed domain name amounts to registration and use in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <giorgio-armani.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 21, 2011
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