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Longs Drug Stores California, Inc. v. Seung Nam Kim [2005] GENDND 446 (23 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang

Case No. D2005-0090

1. The Parties

The Complainants are GA Modefine S.A. and Giorgio Armani S.p.A; GA Modefine S.A. is located in Mendrisio, Switzerland and Giorgio Armani S.p.A. is located in Milano, Italy.
They are represented by Studio Rapisardi S.A., Via Ariosto, Lugano, Switzerland.

The Respondent is Yoon-Min Yang, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <hotelarmani.com> is registered with Communigal Communications Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2005.

On January 27, 2005, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue.

On February 10, 2005, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

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 February 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2005.

The Center appointed Jérôme Huet as the sole panelist in this matter on March 15, 2005. 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.

4. Factual Background

The Complainants, GA Modefine S.A. and Giorgio Armani S.p.A., own several trademarks on which their complaint is based:

ARMANI
GIORGIO ARMANI
EMPORIO ARMANI

The registration of said trademarks is not disputed.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they own several trademarks known worldwide, in particular GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, and that said trademarks are registered and used for different kinds of goods and services, such as clothes, glasses, perfumes, jewellery, confectionery, pubs, restaurants and hotels in many classes such as 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28, 34, 35, 42, 43 with registrations in Europe, the United States of America, Canada and many international registrations at WIPO as well as other registrations in numerous countries including the Republic of Korea.

The Complainants stress that:

- the notoriety and diffusion of these ARMANI Trademarks are proved by the several articles which constantly appear throughout the world in fashion magazines and in major newspapers,

- their notoriety and the rights of the Complainants have been confirmed by several positive decisions rendered by WIPO UDRP Panels,

- it is unanimously recognized that the Armani Trademarks are well-known all over the world.

The Complainants underline that the disputed domain name <hotelarmani.com> incorporates entirely the Complainants’ trademark ARMANI, contend that the addition of the generic term “hotel” is not sufficient to prevent the risk of confusion between the ARMANI trademarks and the disputed domain name and stress that said domain name gives the impression that the website is one of the Complainants’ official sites and that its registration and use is authorized by the Complainants.

In these conditions, the Complainants request that, in accordance with Paragraph 4(b) (i) of the Policy, the Administrative Panel appointed in this administrative proceeding issue a decision that the contested domain name be transferred to the Complainants.

B. Respondent

The Respondent did not reply to the Complainants contentions.

6. Discussion and Findings

The Panel has reviewed the claim of the Complainants and taken into account the lack of response by the Respondent.

It has also taken into account the fact that Complainants have already addressed twelve UDRP Complaints and obtained a transfer of domain name in ten instances, and that they did not obtain such transfer in two instances where either Respondent had a legitimate interest in using the word “Armani” (respondent name being A.R.Mani, G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537), or Complainants failed to prove that Respondent had no such interest (GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2000-0419).

The Panel also noticed that, recently, in GA MODEFINE S.A., Giorgio Armani S.p.A. v. Jung Dong Kwon, WIPO Case No. D2004-1103 where the domain name in dispute was <armanihotel.com>, the panel decided that the transfer was to be ordered.

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

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants 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.

A. Identical or Confusingly Similar

The Panel observes that the domain name <hotelarmani.com> incorporates Complainants’ major trademark ARMANI and that the word “hotel” is related to some of the products and services for which the trademarks of the Complainants; GIORGIO ARMANI, ARMANI, EMPORIO ARMANI, are registered and used, such as clothes, glasses, perfumes, jewellery, confectionery, pubs restaurants and hotels.

The Panel also notices that, in the domain name <hotelarmani.com>, the addition of the generic term “hotel” is not sufficient to prevent the risk of confusion between the ARMANI trademarks and the domain name in dispute, and that the use of said domain name gives the impression that the site is one of Complainants’ official sites and that its registration and use is authorized by the Complainants.

In these circumstances, the Panel believes that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

The Panel has considered the following facts in order to decide whether it was demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name:

- the Respondent, whose name is Yoon-Min Yang, has not apparently been commonly known, as an individual, business or other organization, by the name “Armani” used in the said domain name;

- the Respondent has no connection or affiliation with the Complainants 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;

- there is no website by means of which the Respondent proposes products and/or services and/or information corresponding to the contested domain name.

The Panel finds that the Respondent’s lack of legitimate interest in the disputed domain name is evidenced by the fact that Respondent did not respond to Complainants Complaint.

According to earlier decisions (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493) “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.

In view of these facts, the Panel is convinced that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.

C. Registered and Used in Bad Faith

1) Registered in bad faith

The Panel has taken into consideration the circumstances in which the registration of the disputed domain name has taken place and which evidences the Respondent’s bad faith, in fact, at the time of the registration of the disputed domain name, February 2004, the media announced that the Armani Group signed a deal with an important middle-east company, the Emaar Properties to build and develop ten Armani luxury hotels and four vacation resorts placed in the most important towns all over the world. In such a context, the choice of the domain name <hotelarmani.com> by Respondent cannot be a result of mere coincidence.

By registering the domain name the Respondent clearly was intending to sell, rent or otherwise transfer the domain name registration to the Complainants, who are the owners of the corresponding renowned trademarks for valuable consideration, obviously in excess of the out-of-pocket costs directly related to the domain name.

This circumstance together with the lack of rights or legitimate interests of Respondent in the domain name contributes to prove that Respondent is in bad faith.

2) Used in bad faith

As several decisions of UDRP Panels have ruled, the Panel considers that the lack of any link from the domain name to an “active” website together with other indications of bad faith, as present in this case make it possible to conclude that Respondent is using the disputed domain name in question in bad faith.

In view of the above, the Panel concludes that he domain name <hotelarmani.com> was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Panel considers that the domain name is confusingly similar to trademarks in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Domain Name was registered in bad faith and is being used in bad faith.

The Panel, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, orders that the domain name <hotelarmani.com> be transferred to the Complainants.

Jérôme Huet
Sole Panelist

Dated: March 30, 2005