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GA Modefine S.A. –v- Sparco P/L [2001] GENDND 890 (6 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is GA Modefine S.A, Represented by, Avvocato Mariacristina Rapisardi, Via Ariosto, 6-6901 Lugano, Switzerland.

The Respondent is Sparco P/L, 20 Nuwarra Road, Holsworthy, Sydney, NSW 21700, Australia

The Domain Name is <armaniexchange.net>

The Registrar is Network Solutions, Inc.

The Complaint was received by WIPO by email on March 12, 2001 and in hardcopy form on March 20, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that armaniexchange.net ("the Domain Name") was registered through Network Solutions, Inc and that Sparco P/L ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On March 23, 2001 WIPO issued a Deficiency Notification and the Amended Complaint was received on March 27, 2001.

On March 30, 2001 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was April 18, 2001. No Response was received, and WIPO issued a Default Notice on April 20, 2001.

The Panel was properly constituted. The undersigned Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is May 10, 2001.

The Complainant is the well known proprietor of the Giorgio Armani family of trade marks, including the trade mark AX ARMANI EXCHANGE (the "Trade Mark"), a trade mark which has been registered in a number of different jurisdictions since the early to mid 1990s. The Trade Mark has been used in relation to a variety of fashion goods such as clothing, spectacles and perfumes.

On January 27, 1999, the Respondent registered the Domain Name.

On May 11, 2000, the Complainant lodged a Complaint with WIPO in relation to the Domain Name. The Decision was issued on August 13, 2000 under case number D2000-0419. The Complaint failed. The Panelist in that case concluded that the Complainant had failed to prove that the Respondent had no right or legitimate interest in respect of the Domain Name.

In making his finding the Panelist had this to say, namely:-

"It must finally be noted that while nothing neither in the Policy, nor in the Rules, prevents the Complainant from submitting, for the same facts and circumstances, a new Complaint, the Panel considers that comity and fairness would deny a Panel from reversing a previous Decision on the merits issued by a brother or sister Panel. However, when the Panel has rejected a Complaint for failure to plead the case and thus without a specific finding on the elements under paragraph 4(a)(ii) and (iii) of the Policy, the Complainant should have the chance to file another Complaint where these elements are properly alleged and discussed. Such conclusion seems fair and appropriate in light of the fact that the Respondent, having being served a new and complete Complaint, is given the full possibility to reply on facts and circumstances previously not indicated."

Subsequently, the Complainant has undertaken further investigations into the Respondent and has discovered that the Respondent’s registered office appears to be a fictitious one, being the private residence of a married couple who claim to know nothing of the Respondent, or Mr Geoff Lucas, the Administrative Contact and Billing Contact for the Domain Name.

Furthermore, the Complainant has undertaken searches of the Australian Companies Register and the PAIG Products and Trade Marks Guide and has found no trace of the Respondent.

The Complainant relies on the similarity of the Domain Name to the Trade Mark.

The Complainant asserts that its investigations, conducted since the determination of its previous Complaint and detailed above, have been sufficient to demonstrate that the Respondent has no right or legitimate interest in the Domain Name, a name so closely referable to the Complainant.

The Complainant points to the circumstances and says that they clearly demonstrate registration and use in bad faith, with the intent to profit illegitimately in some way from the Complainant’s Trade Mark. The Complainant also points to the false information supplied by the Respondent on registration of the Domain Name.

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

The Panel’s attention has been drawn to the views of the distinguished Panelists in cases numbers D2000-0703 and D2000-1490 in relation to re-filed Complaints. The Panel endorses those views, the substance of which is that Panels should be slow to entertain re-filed Complaints and should only do so in exceptional circumstances. One of the circumstances identified is where new evidence comes to light, which was not available to the Complainant at the time of the original Complaint. Moreover, the Panel endorses, in particular, the view expressed in the latter decision that: "rather than dismissing the complaint without prejudice, the better approach is to utilize the provisions of Rule 12 of the Uniform Rules, and request further statements and/or documents from either or both of the parties. If, after being given this opportunity, the complainant still is unable to satisfy the panel that the complaint meets all the requirements of the Uniform Policy, then the complaint must be dismissed. Such a dismissal must be seen as being with prejudice to the re-filing of the complaint."

In the view of the Panel the practice of dismissing a complaint without prejudice is to be discouraged. The Panel understands (and is pleased to note) that the practice is on the decline.

In this case, the new "evidence" produced is, in the main, evidence, which was available at the time the original Complaint was filed. If, as appears to be the case, the information relating to the Respondent is false now, it is likely to have been false at the time of the original Complaint. The only changed circumstance identified by the Complainant is the nature of the website to which the Domain Name is connected. The evidence is that at the time of the previous Complaint there was nothing on the website attached to the Domain Name, whereas following the previous Decision, the Domain Name has been connected to the web page of a free domain registration service.

In the view of the Panel the "new" evidence, to the extent that it was not available at the time of the original Complaint, is not of great significance. The significant information as to the falsity of the information supplied by the Respondent on registration of the Domain Name was available and could have been produced in May last year at the time of the original Complaint, if the relevant investigations had been undertaken then.

Nonetheless, the Panel believes that it would be unconscionable for the Panel not to entertain this re-filed Complaint. The Panel has been powerfully influenced by the fact that the previous Panelist effectively encouraged the Complainant to conduct further investigations and re-file the Complaint. It appears that those further investigations have involved the Complainant in significant expense. Moreover, the Complainant submitted (and there being no mechanism for refusing a properly formulated complaint, WIPO accepted) the fee for the re-filed Complaint. The Panel also observes that the Respondent has not responded and is almost certainly non-existent - at any rate under its registered name.

In these circumstances, the Panel believes that it would be manifestly unjust for the Panel to refuse to entertain the Complaint.

The Domain Name is very similar to the Trade Mark (AX ARMANI EXCHANGE). The Trade Mark is an unusual one and the Panel takes the view that it is inconceivable that in selecting the Domain Name the Respondent intended to do other than bring to mind the Complainant and/or its products.

In the circumstances, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

The Complainant has asserted that the Respondent has no right or legitimate interest in respect of the Domain Name.

As the Panel has observed, the Domain Name is one, which is peculiarly referable to the Complainant and nobody else.

The Complainant has undertaken detailed enquiries which indicate that the Respondent does not exist under the name supplied to the registration authorities and neither the Respondent nor its administrative and billing contact is known at the address supplied. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name.

In the Panel’s view, the Complainant has done enough to demonstrate that the Respondent has a case to answer. Paragraph 4(c) of the Policy identifies a non-exhaustive list of circumstances that the Respondent can put before the Panel to demonstrate that it has rights or legitimate interest in respect of the Domain Name.

The Respondent has now had two opportunities to demonstrate that it has rights or legitimate interests in respect of the Domain Name, but on both occasions the Respondent has failed to take up that opportunity. If, as the Panel believes, the failure to respond has simply been because the Respondent failed to supply accurate and/or up to date information to the Registrar, then it has only itself to blame.

The Panel concludes from the evidence put forward by the Complainant and from the Respondent’s failure to respond, that either the Respondent does not exist (in which case it cannot by definition have any right or legitimate interest in the Domain Name) or that it has concluded that it cannot demonstrate that it has any such rights or legitimate interests.

While the obligation is on the Complainant to prove that the Respondent has no right or legitimate interest, the Complainant having made out a prima facie case, the obligation is upon the Respondent to answer that case. The Respondent has not done so.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

For broadly the same reasons the Panel concludes that the Domain Name was registered and is being used in bad faith.

The name can only sensibly be used in relation to the Complainant or its products. Any other use is bound to lead to deception or confusion. Anyone attempting to visit a website connected to the Domain Name will in all probability be expecting to visit a site relating to the Complainant or its products. The fact that the name was registered, as it appears to have been, by a non-existent entity at a false address leads the Panel to believe that the registration can only have been made with an abusive use in mind.

The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.

In light of the foregoing findings, namely that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: May 6, 2001