Giorgio Armani S.p.A., the well known fashion stylist (the Complainant) recently obtained the transfer of the domain names <armaniwatches.com.au> and <emporioarmaniwatches.com.au> (the Domain Names) under the .AU Dispute Resolution Policy (the auDRP). .AU is the country code top level domain (ccTLD) of Australia.
The auDRP is a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP). The auDRP applies to domain names that are identical or confusingly similar, not only to a trade mark or service mark, but to any name in which the complainant has rights, including the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority, or the complainant's personal name. In addition, under the auDRP, it is sufficient to prove that either registration or subsequent use of the domain name by the registrant occurred in bad faith, whereas the UDRP requires the complainant to prove both elements.
To achieve the transfer of a domain name under the auDRP, a complainant therefore needs to establish all of the three following circumstances:
- the domain name registered by the respondent is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered or subsequently used in bad faith.
After the Complainant became aware of the use of the Domain Names by Essential Mall Pty Ltd, a company based in Australia (the Respondent), the Complainant's representative sent a cease and desist letter to the Respondent. The Respondent replied stating that it would be selling Giorgio Armani watches using the Domain Names and that such activity was allowed under Australian law. The Complainant's representative then wrote back to the Respondent requesting the immediate withdrawal of the Domain Names. The Respondent replied claiming that the Australian Domain Name Administrator had confirmed that Australian domain names were allocated on a first come first served basis, provided that the eligibility rules were satisfied.
The complaint was filed with the World Intellectual Property Organisation (WIPO). Upon receipt of the complaint, the Respondent wrote to WIPO to ask whether it could ask for compensation as it had spent AUD 15,000 (approximately USD 15,000) on building and marketing the Domain Names. WIPO replied that it could not provide legal advice. The Panel ordered the transfer of the Domain Names in a decision dated 13 May 2011.
The Complainant sells a wide range of products, including clothes, glasses, perfumes, jewellery and watches and also operates restaurants and hotels. The Complainant is the owner of trade marks in the terms ARMANI and EMPORIO ARMANI in many countries, including Australia, which were first registered in the 1980s. The Complainant's trade marks are widely known all over the world.
In respect of the first limb of the auDRP, the Complainant relied on articles relating to the notoriety and diffusion of the ARMANI trade marks as well as on previous decisions relating to the Complainant under the UDRP. The Complainant contended that the Domain Names incorporated the Complainant's trade marks in their entirety and that the addition of the term WATCHES was not sufficient to prevent a risk of confusion between the ARMANI trade marks and the Domain Names, especially as the ARMANI trade marks covered the sale of watches.
To address the second requirement, the Complainant contended that the Respondent was not commonly known by the Domain Names and had never been authorised to use the Complainant's trade marks. Further, the Complainant claimed that the Domain Names were being used to misleadingly divert consumers and to promote the Respondent's activities, and thus that the Respondent was using the Domain Names with the intent for commercial gain.
As to the third limb, it was alleged that the Respondent's intention was to exploit the notoriety, the importance and the value of the ARMANI name and to take advantage of the unlawful use of the Complainant's trade marks. In addition, the Complainant asserted that the Respondent was using the Domain Names to intentionally attract internet users to its website for commercial gain. Indeed, according to the Complainant, the Respondent was undoubtedly aware of the ARMANI trade marks as the choice of the Domain Names could not be a mere coincidence.
In response to these allegations, the Respondent stated that it had complied with all Australian laws and that "this case was not one of buying a domain name, using it in bad faith and trying to sell it back to the trade mark holder for a substantial amount of money". Important weight was allegedly given by the Respondent to the Australian Domain Name Administrator's statements according to which .AU domain names were allocated on a "first come first served" basis subject to eligibility rules. The Respondent also submitted that it had the very best intentions to grow business of selling Armani watches and that this would benefit the Complainant.
Further, the Respondent explained that it would be fair for it to be compensated in the amount of AUD 15,000 if it had to hand over the Domain Names. The Respondent also alleged that it wished to become an Australian authorised reseller of Armani watches and asked how it could do so. In this respect, the Respondent submitted that all watches sold on its websites were genuine and that it never attempted to "corner the market". Finally, the Respondent offered to display a disclaimer on the websites at the Domain Names.
The Panel accepted the Complainant's contention that the Domain Names were identical or confusingly similar to the trade marks in which it had demonstrable rights. The Panel also agreed with the Complainant that the Respondent was trying to benefit from the reputation of the Complainant's widely known trade marks.
As far as the respondent's lack of rights or legitimate interests in the Domain Names was concerned, the Panel noted that the view reflected in the Second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions is that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements.
In this case, according to the Panel, two of the requirements were missing, namely that the Respondent did not use the website to sell only the Complainant's goods and the website did not accurately disclose the Respondent's relationship with the Complainant. The Panel therefore found that the Respondent had chosen to use Domain Names containing the distinctive element of the Complainant's trade marks in its entirety without authorisation. The Panel thus concluded that the Respondent had no rights or legitimate interests in respect of the Domain Names. Given this, the Panel also found that the Respondent was intentionally attempting to attract internet users to its website for commercial gain by creating a likelihood of confusion, and so concluded that the Domain Names had been registered and used in bad faith. The Complainant's request to obtain the transfer of the Domain Names was therefore granted.
Before concluding, the Panel addressed the issues of the advice received by the Respondent from the Australian Domain Name Administrator as well as the Respondent's request for compensation.
The Panel found that the Australian Domain Name Administrator's statements were somewhat confusing but were not a valid justification for registering the Domain Names. Indeed, although domain names are actually allocated on a "first come, first served" basis, the eligibility rules referred to by the Australian Domain Name Administrator included a warranty by registrants that the registration of a domain name would not violate the rights of any third parties.
Concerning the Respondent's request to obtain compensation, the Panel considered that this did not suggest that the Respondent purchased the Domain Names for the purpose of selling them to the Complainant or its competitors, but reminded the Respondent that the available remedies under the auDRP were limited to the transfer or cancellation of domain names.
To read the decision please go to: http://www.wipo.int/amc/en/domains/search/text.jsp?case=DAU2011-0011