The Complainant is Missoni S.p.A. of Varese, Italy, represented by Dr. Modiano & Associati S.p.A. of Italy.
The Respondent is William Song of Tennessee, United States of America. 2. The Domain Names and Registrar
The disputed domain names and (together the "Domain Names") are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Names. On February 8, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Response was filed with the Center on February 29, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 14, 2012. 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 Complainant produces fashion clothing and other goods under the Missoni brand. Its name is derived from its founder and designer Mr. Ottavio Missoni. Missoni branded fashion goods have been sold internationally for at least 40 years. One of the Complainant's sub-brands is "M Missoni"
The Complainant is the owner of numerous worldwide trademark registrations for both the MISSONI and the M MISSONI mark. These registrations for the trademarks include for example United States registrations No. 3647796 for M MISSONI and Nos. 3247794, 3405617, and 3242701 for MISSONI.
The Respondent registered the Domain Names on September 14, 2011 which was the day after the Complainant launched the "Missoni for Target" collection to be sold on the web site of a retailer called Target, which is an American retailing company headquartered in Minneapolis, Minnesota. It is the second-largest discount retailer in the United States, after Wal-Mart.
The Domain Names have been automatically "parked" on a holding page which contains various automatically generated links. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Names are identical to a name in which it has rights, namely M MISSONI, and confusingly similar to its Missoni name. It relies on a large number of previous UDRP decisions concerning its name – for example Missoni S.p.A. v. Domain ManagerWIPO Case No. DC02011-0043 in relation to , where the finding was: "The Domain Name comprises the term "mmissoni" (which to the Panel's knowledge has no obvious meaning other than as the name of a person or entity), accompanied by the top-level domain indicator ".co". The Domain Name, in so far as the operative part is concerned, is identical and even with the ".co" extension is clearly confusingly similar to Complainants Trade Marks”.
The Complainant says the Respondent has no legitimate interests in the names Missoni or MMissoni and there is no possible explanation for any legitimate basis for the Respondent registering the Domain Names.
It says the Domain Names were registered in bad faith and says it cannot be coincidence they were registered the day following the launch of its "Missoni for Target" promotion which was well publicized. The Complainant also alleges the Respondent has given false contact details. B. Respondent
The Respondent has filed a Response which makes a number of points. In essence, he says he is not a competitor of the Complainant, did not register the Domain Names to disrupt the Complainant's business or with a view to selling them and has made no financial benefit from holding them. He says they were parked automatically by GoD, LLC and he receives no benefit from any revenue that results. He denies giving false contact details. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the names Missoni and M Missoni. Although no details have been provided as to turnover or sales figures, the Missoni brand is clearly marketed on an international basis and is well known. Further, the Complainant has a wide range of registered trade mark rights in MISSONI and M MISSONI.
Since the gTLD suffixes may be ignored for the purpose of determining whether a domain name is identical or confusingly similar to a trademark, it is clear that the Domain Names are confusingly similar to the MMISSONI and the MISSONI trade mark.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Names. In the Panel’s view, none of these are directly relevant to the present facts. The Response filed by the Respondent comprises little more than a bare denial of various factors which are typically relevant under the Policy. However, there is no explanation in the Response of how or why the Respondent came to choose the Domain Names, and no attempt to explain why he claims to have a legitimate interest in them. The Panel takes the view that the trademark M MISSONI is highly distinctive and has no obvious meaning in any context other than in relation to the Complainant or its products.
In the circumstances, the Panel concludes the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which was not rebutted by the Respondent so the requirement under paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
It is not in dispute that the Domain Names are "parked" at a holding page. The Respondent says he has not made money out of this. That is in itself not sufficient to resolve the matter. The Panel agrees with the Complainant that the line of authorities going right back to Telstra Corporation Limited v. Nuclear MarshmellowsWIPO Case No. D2000-0003 establishes that the registration and passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith.
The consensus of UDRP panelists views on this issue, as published by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) accords with this view. It records that " with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”..
In the present circumstances, the confusingly similar nature of the Domain Names to the Complainant's mark M MISSONI, the highly distinctive nature of the mark in question and the fact that it is widely known in the fashion industry, and the lack of any explanation from the Respondent as to why he registered the Domain Names the day after the Complainant launched the “Missoni for Target” collection to be sold on the website of a well-known retailer in the United States called Target lead the Panel to conclude the registration and use was in bad faith.
In the light of the above, the Panel finds it not necessary to decide whether or not the Respondent provided false contact details.
The Panel therefore finds that the Domain Names have been registered and used in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant
Nick J. Gardner
Sole Panelist
Dated: March 27, 2012
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