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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> GA Modefine SA v Queensborough Group [2006] DRS 3476 (21 April 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3476.html Cite as: [2006] DRS 3476 |
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Complainant: GA Modefine S.A.
Country: CH
Represented by UDL LLP
Respondent: Queensborough Group
Country: GB
armanihotel.co.uk ("the Domain Name")
The complaint was received by Nominet in full on 2 March, 2006. Nominet validated the complaint and informed the Respondent, by both letter and by email on 3 March, 2006 noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 27 March, 2006) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 28 March, 2006, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 31 March, 2006.
Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert with effect from 7 April, 2006.
None.
The Complainant, G.A. Modefine S.A. is the owner of the familiar luxury goods brands ARMANI and GEORGIO ARMANI.
The Complainant has numerous trade mark registrations for these marks, and other variants in the UK and elsewhere for various goods and services. A list of UK registrations was annexed to the Complaint, the earliest dating from 1976 and many more registered in the 1980s and 1990s.
None of these registrations was for ARMANI HOTEL(S) as such.
However, the Complainant's intention (through a related business, Georgio Armani S.p.A.) to launch a range of luxury ARMANI HOTELS AND RESORTS with EMAAR Hotel and Resorts LLC, starting with a development in Dubai was well publicised in 2005.
The Complainant has previously obtained transfer of the domain names armanihotel.com (WIPO D2004-1103) and hotelarmani.com (WIPO D2005-0090) from Korean domain name speculators using the UDRP.
The Respondent, Queensborough Group, promotes its services via the web address www.queensboroughgroup.com which resolves to www.queensboroughgroup.co.uk where the group's services are said to include web hosting and domain name registration, and car sales software, estate agents software and accommodation guides, the latter provided via www.hotels.uk.com.
From the WHOIS records, the Domain Name armanihotel.co.uk was registered for Queensborough Group on 4 June, 2001, by the Group themselves as Nominet tagholders. Contact details were provided at the domains queensboroughgroup.com and hotels.uk.com.
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of its Complaint, the Complainant made the following submissions:
The Complainant, GA Modefine S.A., is the owner of the world famous ARMANI and GIORGIO ARMANI brands. The Complainant holds numerous trade mark registrations worldwide, all of which use the ARMANI name as a major element. The Complainant is the registered proprietor of the following UK trade mark registrations, ARMANI, GIORGIO ARMANI, EMPORIO ARMANI, EMPORIO ARMANI CAFFE, EMPORIO ARMANI GA EXPRESS and AX ARMANI EXCHANGE.
In addition, the Complainant holds a number of equivalent Community Trade Mark Registrations, including ARMANI CASA.
[Full details of the various trade mark registrations were enclosed at Annex 1 to the Complaint.]
In addition, the Complainant is the registered proprietor of the domain names www.armani.co.uk, and www.armanihotel.com. [Details of these domain registrations were attached at Annex 2 to the Complaint.]
The Complainant has a worldwide reputation symbolised by the ARMANI and GIORGIO ARMANI trade marks. Referring back to Annex 1, it can be seen that these marks are used and registered in respect of "clothing, footwear and headgear", "bags, wallets and leather goods", "sunglasses, audio and visual equipment", "perfumes and cosmetics", "watches, timepieces and jewellery", "towels, napkins, table linen and bed covers", "household and kitchen utensils" and "restaurant, café and bar services".
The Complainant's reputation has been recognised by WIPO Independent Experts, in case No D2001-0537. Furthermore, the Expert in case No. D2000-0305 states that "ARMANI is a well known mark in the sense of Article 6bis of the Paris Convention". [Copies of each case were attached at Annex 3 to the Complaint.]
The Respondent is the Queensborough Group. Upon visiting the respondent's website at www.queensboroughgroup.co.uk, it is noted that they are a company who register and develop electronic booking websites for owners of hotels, and temporary accommodation. We also note from a commercial database search, that they are the registered proprietors of 574 .co.uk domains, most of which are variations on established hotel names, or names of public houses. [Evidence of this was attached at Annex 4 to the Complaint.]
The Respondent is also the registered proprietor of armanihotel.co.uk. [Annex 5 to the Complaint comprised a printout of from the Nominet WHOIS database.]
It is noted that this domain was registered on 4th June 2001. Annex 5 also includes the result of an attempt to visit this site. It can be seen that the domain is inactive, despite being over 5 years old.
The disputed domain incorporates the Complainant's trade mark in its entirety. The word "hotel" relates closely to the goods and services for which the Complainant holds earlier registered trade marks, such as "restaurant and bar services", "perfumery and cosmetics", "towels, napkins and bedcovers" and "household and kitchen utensils".
Furthermore, the inclusion of the non-distinctive term HOTEL in the domain, does not prevent any confusion between the marks and would invariably give the impression that the domain is an official site of the Complainant. The likelihood of the Complainant moving into the hotel and accommodation business, is further supported by a press release from the Complainant's website, detailing the Complainant's plans and intentions to launch such a business. [Details were provided in Annex 6 to the Complaint.]
It is confirmed that the Respondent has no connection or affiliation with the Complainant. The disputed domain does not resolve to a site which advertises or promotes the goods or services of the Complainant. In addition, the Respondent's organisation or business has never been known under the ARMANI name.
Clearly, therefore, the Respondent does not have any rights or legitimate interests in the ARMANI name.
In view of the foregoing, it is submitted that the domain was only registered because of the Complainant's reputation and fame in the ARMANI brand. This is supported by the fact that 5 years after the domain was registered, it is still inactive. Accordingly, it can be inferred that the Respondent purchased the domain to sell, rent or otherwise transfer it to the Complainant.
In the alternative, the domain was purchased to obtain traffic which would otherwise be directed to the Complainant.
In either case, the domain was obtained in bad faith. The Panel is directed to the High Court decision in Marks & Spencer plc v. One in a Million [1999], with which this dispute is analogous. It is submitted that because of the reputation and protection of the ARMANI brand, the Respondent's registration of the domain would also constitute an act of Trade Mark Infringement under section 10(2)(b), and 10(3) of the 1994 UK Trade Marks Act. The Respondent's use of the domain would also be prohibited by 56(2) of the same Act.
The Panel are also directed to WIPO case No.s D2005-0090 [attached as Annex 7 to the Complaint] and No D2004-1103, where WIPO ruled the transfer of the domains www.hotelarmani.com and www.armanihotel.com to the Complainant.
It is submitted that www.armanihotel.co.uk was obtained in bad faith, and contrary to the Complainant's registered trade mark rights, and reputation.
As a result, it is requested that the domain is also transferred to the Complainant.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted principally that it has rights in the name ARMANI and that this name is identical or similar to the Domain Name.
The Complainant has provided ample evidence of its rights, including in trade mark registrations for the ARMANI name and it is clear that such rights and use of the ARMANI name considerably predate the registration of the Domain Name at issue by the Respondent.
The Respondent has not challenged any of the submissions made by the Complainant regarding the Complainant's rights and world-famous reputation in the name.
Although the Complainant had no explicit prior rights in the combination ARMANIHOTEL prior to the date of registration of the Domain Name, and although ARMANI was not then known as a hotel operator, in the Expert's view, the undoubted repute of the ARMANI name for its luxury goods and services would inevitably lead consumers to expect that ARMANI HOTEL would be associated with or endorsed by the Complainant. The addition of the descriptive word "HOTEL" to the name "ARMANI" in the context of the Domain Name armanihotel.co.uk is plainly insufficient to break the expected association.
Accordingly, the Expert concludes that the Complainant does have Rights in this case in respect of the name ARMANI, which is also considered to be similar to the Domain Name for the purposes of the Policy.
Abusive Registration
The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations, where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain name is part of that pattern;
…
Paragraph 3b of the Policy states expressly that:
Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
The Complainant has made various assertions in support of its allegation that the Domain Name is an Abusive Registration.
As noted in the reference to Paragraph 3b of the Policy above, the fact that the Domain Name appears never to have been put to any active use for five years does not necessarily assist the Complainant's case. Arguably, the fact that the Complainant has itself done nothing about challenging the Domain Name for that length of time might even be taken to weaken the Complainant's case, particularly when one is aware of the number of challenges the Complainant has made against other domain names over the same period. Of course, it may well be that this unused Domain Name would have been a low priority until the recent business announcements.
There is no concrete evidence that the Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring it to the Complainant or another party for some unreasonable consideration. And, as the Domain Name has not been actively used, there is plainly no support for the Complainant's contention that the Domain Name was registered to divert traffic from the Complainant.
The fact that the Respondent appears to have many other domain names which may be associated with hotels is not conclusive of bad faith or abuse. There is no obvious evidence that any of the other domain names may be unauthorised and it is not unknown for a domain name registration business to hold many names itself.
It is also not appropriate for the Expert to decide whether or not registration of the Domain Name would amount to infringement under the Trade Marks Act 1994, as the Complainant has asserted would be the situation. That can only be a matter for the Court.
However, in this case, the Expert believes that there is some merit and relevance in the Complainant's drawing of an analogy with the leading UK case involving domain name registrations (British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61).
In the decision in that case, the Court of Appeal stated:
"The placing on a register of a distinctive name […] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name."
The Expert considers that statement is pertinent to the registration of a domain name incorporating a famous mark such as ARMANI and relevant to the assessment of abuse under the Policy.
In the absence of any defence or alternative explanation from the Respondent, in the present case the obvious inference must be that the Respondent has indeed taken the Complainant's name and incorporated it in the Domain Name for some unspecified speculative purpose, but with the knowing intent, one way or another, of ultimately obtaining some undue benefit through misappropriation of the Complainant's property – the goodwill in the ARMANI name – and ultimately by using that name in the Domain Name armanihotel.co.uk. at some later stage so as to profit (unfairly) from association with the Complainant's name and reputation.
The fact that the Respondent operates a Hotel guide site provides more circumstantial support for this inference.
The Expert therefore concludes that the Domain Name was registered or otherwise acquired in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that it is an Abusive Registration for the purposes of the Policy.
(It is also quite clear that, were the Domain Name to be put to active use by the Respondent, such use would inevitably take unfair advantage of or be unfairly detrimental to the Complainant's Rights. To adopt the words of Aldous LJ in the One in A Million judgement, in the hands of the Respondent, the Domain Name incorporating the famous ARMANI name is an "instrument of deception", and its registration by the Respondent can hardly be seen as anything other than abusive.)
Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, armanihotel.co.uk, should be transferred to the Complainant.
______________________ April 21, 2006
Keith Gymer Date
