The Complainant is Missoni S.p.A., Sumirago (Varese), Italy, of Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Darrell Jordan, Austin, Texas, United States of America, who is self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with DirectNIC, LTD 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 21, 2012, the Center transmitted by email to DirectNIC, LTD a request for registrar verification in connection with the disputed domain names. On February 22, 2012,
DirectNIC, LTD 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Response was filed with the Center on March 14, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on March 26, 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 is an Italian corporation which markets high-fashion clothing worldwide. Its corporate name is also the family names of its designer, Signor Ottavio Missoni.
The Complainant markets its clothing under the name Missoni. It owns trademarks Missoni either on its own or in combination with other words. These trademarks are registered in many different countries, including the United States of America where the Respondent is domiciled. They have been registered for many years. The first filing in Italy was in 1969.
The disputed domain names were registered on September 14, 2011. The Complainant gave the Respondent no rights to reflect its trademark in a domain name. The website accessed by the disputed domain names is composed of sponsored links, some of them redirecting to competitors of the Complainant.
The Complainant has registered numerous domain names reflecting its trademarks. It has successfully brought many proceedings under the Policy in respect of domain names which have included its registered trademark. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s trademark. The addition of the generic word “Knockoff”, in either the singular or the plural, does not diminish the dominance of the trademark. The addition of a generic word which signifies an unauthorized invitation or copy increases confusion and tends to divert customers who might be attracted to a website offering counterfeit products.
The Respondent has no rights or legitimate interests in the domain names and does not come within paragraph 4(c) of the Policy.
It is difficult to infer any legitimate use by the Respondent of the disputed domain names given the fame of the Complainant’s products.
The disputed domain names were registered and are being used in bad faith. The Complainant’s brand is well-known worldwide. The disputed domain names were registered on the day after the launch of a special line of the Complainant’s products on the Target Stores’ website. The Respondent must have known of the Complainant’s products and their fame and the registration of the disputed domain name on the day after the launch of the Target sale cannot be a coincidence. There is no plausible explanation for the Respondent’s use of the disputed domain names which must disrupt the Complainant’s business since they must mislead Internet users.
The Respondent’s passive holding of the disputed domain names creates an inference of bad faith registration and use. B. Respondent
The Respondent fails to deal with many of the Complainant’s contentions. He says that since June 2008 he has purchased domain names from the registrar of these disputed domain names. He has not sought to sell any of the domain names he has thus acquired. Nor has he made any financial gain from the disputed domain names which are controlled by the parking service. He has not developed the websites from the disputed domain names as yet because business decisions depend on financial means and time. Six months is a very short period to be construed as passive holding.
The Complainant has failed to prove bad faith registration and use. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests 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 disputed domain names are confusingly similar to the Complainant’s registered trademarks. The word Missoni is dominant on the disputed domain names. The generic words “knockoff” and “knockoffs” do not detract from the dominance of the trademarked word. Rather, they add to the confusion because the disputed domain names suggest a counterfeit version of the Complainant’s goods.
The Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to reflect its trademark in a domain name. The Respondent has not sought to invoke any of the three alternative provisions of paragraph 4(c) of the Policy which, if proved, would have provided him with a defence.
The Respondent must bear responsibility for the contents of the websites accessed by the disputed domain names, even if these are “parked” and controlled by an Internet provider. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”) at paragaph 3.8.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As in many similar cases, the Respondent’s very selection of the disputed domain names itself demonstrates convincing evidence of bad faith registration and use.
The addition of the word “knockoff(s)” to the name of a well-known fashion house betokens a willingness to entice Internet users to seek counterfeit versions of trademarked fashion garments. No plausible excuse has been offered by the Respondent for his choice of the disputed domain names. That he knew of the fame of the Complainant’s mark is an inescapable inference, given its worldwide fame. The coincidence of the Target promotion and the registration of the disputed domain names augments the inescapability of the inference of bad faith.
The fact that the Respondent may have made no financial gain is not relevant given the blatant nature of his conduct in registering such a well-known trademarked name.
As noted earlier, the Respondent cannot escape liability for the contents of the parked site. Because that site has links to competitors of the Complainant, the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy which speaks of “intentionally attempting to attract for commercial gain, internet users to your website… by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website…”.
Accordingly, paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Sir Ian Barker
Sole Panelist
Dated: April 4, 2012
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