DOC

WIPO Domain Name Dispute Case D2006-1351

By Margaret Greene,2014-06-28 11:21
9 views 0
WIPO Domain Name Dispute Case D2006-1351 ...

    WIPO Arbitration and Mediation Center

    ADMINISTRATIVE PANEL DECISION

    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.

    page 1

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

    page 2

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

    page 3

    “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.

    page 4

    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

    page 5

Report this document

For any questions or suggestions please email
cust-service@docsford.com