Owner of ARMANI mark awarded 'armani.com.tw'
In GA Modefine SA v Tai-Shin Management Consulting Co Ltd (STLC2003-004), a panellist from the Science and Technology Law Centre (STLC) of the Institute for Information Industry has ordered the transfer of 'armani.com.tw' to the complainant - the owner of the ARMANI mark. The panellist held that the registrant had no legitimate rights in the domain name, and had registered and used it in bad faith.
Tai-Shin Management Consulting, a Taiwanese company, registered 'armani.com.tw' with the registrar Net-Chinese on February 1 2003. Following the registration, GA Modefine SA, a Swiss company that owns rights in the famous GIORGIO ARMANI, EMPORIO ARMANI and ARMANI marks, filed a complaint with the STLC under the Taiwan Network Information Centre's (TWNIC) Domain Name Dispute Resolution Policy. Modefine argued that the domain name registration infringed its rights in its marks.
The STLC panellist agreed and ordered the transfer of 'armani.com.tw' to Modefine. Pursuant to TWNIC's dispute resolution policy, the panellist held that:
- the disputed domain name was likely to cause confusion;
- Tai-Shin had no rights or legitimate interests in 'armani.com.tw'; and
- Tai-Shin had registered and used the domain name in bad faith.
In deciding that Tai-Shin had no rights or legitimate interests in the disputed domain name, the panellist noted, among other things, that Tai-Shin (i) was not using it to host a website offering ARMANI-marked goods, and (ii) does not own any marks or registered names featuring the name Armani.
The panellist concluded that Tai-Shin had registered and used the domain name in bad faith on the grounds that:
- there was evidence that Tai-Shin had registered a number of famous marks as domain names without authorization, including 'gucci.com.tw', 'versace.com.tw' and 'sisley.com.tw';
- Tai-Shin had registered the domain name with the sole intention of selling or renting it; and
- Tai-Shin had registered it with the aim of inducing internet users into visiting its website as a result of confusion with Modefine's famous marks.
Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei
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