The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Chris Ditchfield of Joshua, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Disputed Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 1, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the Disputed Domain Name. On March 1, 2012, Wild West Domains, 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 March 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 3, 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 trade mark on which the Complaint is based is MISSONI. The Complainant is a company in the fashion field and its goods are marketed and promoted worldwide under the MISSONI trade mark. The Complainant’s first filing of trade mark registration for MISSONI in Italy dates back to September 2, 1969. In addition, the Complainant is the owner of many national, international and Community trade mark registrations for or incorporating the MISSONI mark. The Complainant is also the registrant of many domain names incorporating the MISSONI mark, including and .
In September 2011, the Complainant collaborated with the Target department store to sell a line of fashion called “Missoni for Target” on Target’s website.
The Respondent is an individual residing in Texas, United States of America. The Disputed Domain Name was registered on September 13, 2011, the day of the launch of the Missoni for Target collection. The Disputed Domain Name currently resolves to a website on which women’s apparel and accessories are sold using the MISSONI trade mark (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s MISSONI mark, in which the Complainant has rights:
(i) the Complainant is the owner of the famous and well known MISSONI trade mark (and numerous variations thereof) worldwide and uses the domain name (amongst others);
(ii) the Disputed Domain Name is confusingly similar to the Complainant’s MISSONI trade mark, company name and domain names;
(iii) the Disputed Domain Name refers to Missoni products designed for and sold by Target, thus misleading consumers into believing that the items sold on the Website are those designed for the Missoni for Target product line; and
(iv) the addition of the terms “for target” to the Complainant’s trade mark does not lessen the likelihood of confusion but on the contrary increases it.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant has neither entered into any agreements, nor granted any authorisations or licenses to the Respondent to use the Complainant’s trade marks, trade name or company name;
(ii) the use of a domain name containing the Complainant’s entire famous mark makes it difficult to infer a legitimate use of the disputed domain name by the Respondent;
(iii) there is no evidence that the Respondent has trade marks or company activities registered under the “Missoni” brand;
(iv) the Disputed Domain Name resolves to a website that sell products belonging to the Complainant’s competitors but offered for sale using the MISSONI mark;
(v) the Respondent has never made any bona fide use of the Disputed Domain Name since its registration; and
(vi) the Respondent has never been known under the “Missoni” name.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent knew of the Complainant’s activities and trade mark when registering the Disputed Domain Name:
- the MISSONI trade marks are worldwide renowned marks and this has been acknowledged by other WIPO UDRP panels in reported decisions;
- the Respondent registered the Disputed Domain Name on September 13, 2011, the day of the (long before announced) launch of the Missoni for Target collection;
- the Respondent appears to have chosen to register the Disputed Domain Name combining the renowned trade mark MISSONI with terms that refer to the Missoni for Target initiative, thus clearly having in mind the Complainant’s trade mark and activities;
- the Respondent appears to have chosen to register the Disputed Domain Name combining the MISSONI trade mark with terms that specifically refer to items sold by the Complainant;
- the Complainant’s MISSONI mark is distinctive and well known around the world. There are few if any plausible explanations for incorporating it into a domain name;
- the Respondent uses the Disputed Domain Name to sell alleged Missoni products together with products of the Complainant’s competitors;
- the fact that the Respondent chose to register a domain name containing the renowned trade mark MISSONI coupled with generic terms that refer to the Complainant’s latest initiative cannot be considered a coincidence;
- the fact that the Respondent registered the Disputed Domain Name to promote and offer for sale alleged Missoni products designed for Target on the same day of the official launch of the Missoni for Target initiative is proof that the Respondent knew of the Complainant’s famous Missoni brand, trade mark and activities; and
(ii) no plausible explanation exists as to why the Respondent selected the Disputed Domain Name other than to trade on the goodwill of the Complainant’s renowned trade mark MISSONI. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the MISSONI trade marks on the basis of its registrations in various countries across the world, dating from 1971, more than four decades before the Disputed Domain Name's registration in 2011.
The Disputed Domain Name incorporates the Complainant’s MISSONI trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the former’s inclusion of the words “for target” as suffixes. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim,WIPO Case No. D2009-0679; The Coca-Cola Company v. WhoIs Privacy Service,WIPO Case No. D2010-0088; and Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485). The Panel accordingly finds that MISSONI is the distinctive and prominent component of the foregoing Disputed Domain Name, such that the addition of “for target” does nothing to distinguish the Disputed Domain Name from the Complainant’s MISSONI mark.
Given that the Complainant had at the time of registration of the Disputed Domain Name, just launched an extremely successful “Missoni for Target” fashion line, the addition of the descriptive terms “for target” to the Complainant’s trade mark does not reduce but rather increases the likelihood of confusion, thereby misleading consumers into believing that the Website is offering goods that may have been authorised by or linked to the Complainant.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its MISSONI mark. Further, the Complainant submits that the Respondent has never been commonly known by the “Missoni” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that he does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant’s evidence.
The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the MISSONI trade mark. The Panel agrees that the use of the Complainant’s famous MISSONI trade mark in its entirety renders no plausible explanation as to why the Respondent selected the trade mark other than to trade on the goodwill of such a mark (see RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242). The Panel also accepts that there is no evidence to suggest that the Respondent is commonly known by either the Disputed Domain Name or the MISSONI mark, and that the use of the Website to offer for sale products under the Missoni brand which are in fact the products of the Complainant’s competitors precludes a finding of noncommercial use or fair use of the Disputed Domain Name. Accordingly, the Respondent needs to demonstrate that he has acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services. However, given the blatant bad faith attributable to the Respondent on the facts of this case (as discussed in relation to bad faith registration and use, below), the Panel is unable to find any such rights or legitimate interests on this basis.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Panel accepts that the Respondent knew of the Complainant’s MISSONI trade mark at the time of registering the Disputed Domain Name, based in part on the worldwide fame of the MISSONI trade mark as accepted by various WIPO UDRP panelists in previous domain name proceedings involving the Complainant (see Missoni S.p.A. v. BigD and Taeho Kim, WIPO Case No. D2002-0545 (); Missoni S.p.A. v Caribbean Online International Ltd., WIPO Case No. D2007-0885 (); Missoni S.p.A. v Liu Zhixian, WIPO Case No. D2010-0371 (); Missoni S.p.A. v. Nurinet, WIPO Case No. D2010-1068 (); Missoni S.p.A. v. Oneandone Private Registration/Sophia Kilgore, WIPO Case No. D2010-2223 (); Missoni S.p.A. v. CoAuction, WIPO Case No. DCO2010-0047 (); Missoni S.p.A. v. Jonathan Downey,WIPO Case No. D2011-0855 (); Missoni S.p.A. v. 仲裁域名/DomainJet, Inc./Jack Sun, WIPO Case No. D2011-1058 ().
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313). The Complainant provided evidence that its MISSONI trade mark is well-established worldwide and has been registered since 1969. On the contrary, the Disputed Domain Name was registered on September 13, 2011, the same day the Complainant launched its Missoni for Target collection on Target’s website. The Panel regards the chances of the Respondent incidentally registering the Disputed Domain Name on the same day as the launch of the Missoni for Target collection to be so small that it cannot reasonably be taken to be a coincidence. Given the overwhelming success of the launch of the Missoni for Target collection on Target’s website and the fact that the Respondent registered the Disputed Domain Name incorporating the entire name of this collection on the same day that it was launched, the Panel accepts that the Respondent registered the Disputed Domain Name intending to create confusion that the Website is associated with or authorised by the Complainant, in particular that the products offered for sale via the Website are part of the Missoni for Target collection.
Given the degree of fame that the MISSONI trade mark has acquired around the world throughout the many years since its registration and use, the Panel accepts that the Respondent was aware of the Complainant’s MISSONI trade mark at the time of registering the Disputed Domain Name and is using the Disputed Domain Name solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, by attracting Internet users who the Panel accepts would be drawn to the Website on the mistaken assumption that the Website was authorised by or connected with the Complainant. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.
Numerous WIPO UDRP panels have decided that the use of a domain name which is identical or confusingly similar to a complainant’s mark for a site that sells products of its competitors, constitutes an improper use of that complainant’s mark to attract Internet users to the respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site (see for example, Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728; and Missoni S.p.A. v. 仲裁域名/DomainJet, Inc./Jack Sun, WIPO Case No. D2011-1058). Accordingly, the Panel finds that the Respondent’s use of the Disputed Domain Name, which the Panel accepts to be confusingly similar to the Complainant’s MISSONI trade mark, to sell products of the Complainant’s competitors amounts to improper use of the Complainant’s mark to attract Internet users to the Respondent’s site for commercial gain and is therefore evidence of bad faith on the part of the Respondent.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: April 17, 2012
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