The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is e-Techknowledge of Manalapan, New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 19, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 19, 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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 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, Missoni S.p.A., is a company in the fashion field and its goods are marketed and promoted under the MISSONI trademark in almost every country. Complainant’s first trademark registration for MISSONI in Italy dates back to May 15, 1971. Complainant is also the owner of many international, community and national MISSONI trademark registrations, among which:
- United States Registration No. 1026807 for MISSONI & design registered on December 9, 1975, renewed and covering goods in class 25
- International Registration No. 586554 for MISSONI of June 19, 1992, renewed and designating various countries and covering goods in classes 3, 9, 24 and 25;
- Community Registration No. 001164987 for MISSONI of May 7, 1999, renewed and covering goods in classes 18, 24 and 25.
The Complainant operates many domain names incorporating MISSONI trademarks, including .
In September 2011, the Complainant collaborated with the Target department store to launch and sell a line of fashion called “Missoni for Target ” on Target’s website.
The disputed domain name was registered on October 25, 2011.
The Respondent has used the disputed domain name in connection with a parking page displaying sponsored links among which, some of them are related to third parties’ websites in the fashion field. 5. Parties’ Contentions A. Complainant
First, Complainant states that it is a leading company in the fashion field. As its goods are marketed and promoted in almost every country, Complainant states that its trade mark is well-known and has been extensively used for many years. Complainant thus asserts that the disputed domain name is confusingly similar to its trade mark MISSONI, as well as to its company name Missoni S.p.A., and to its domain name on which it has published information about the company. Complainant submits that the only difference between the disputed domain name and its trade mark MISSONI is that the disputed domain name consists of the addition of the generic term “linens”.
Second, Complainant asserts that no agreements, authorizations or licenses have been granted to Respondent to use Complainant's trademarks, trade name and company name and the use of the disputed domain name containing Complainant's entire mark makes it difficult to infer a legitimate use of the disputed domain name by Respondent.
Third, Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contents that the disputed domain name used to resolve to a page composed of sponsored links among which some of them redirected toward Complainant’s competitors until March 8, 2012 and then resolves to a page displaying an error message since March 15, 2012.
Finally, Complainant contends that Respondent registered the disputed domain name about one month after the launch of a special line of the Complainant’s products on the Target Stores’ website. Consequently, Complainant suggests that, given the circumstances, it is highly unlikely that Respondent registered the disputed domain name without knowledge of the MISSONI trademarks and chose to register such a domain name combining the renowned trademark MISSONI with the generic term “linens” in a clear intent to disrupt Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel is satisfied with the evidence adduced by Complainant in order to prove its trademark rights in the trademark MISSONI which also happens to be its company name. Complainant has also proven to be the owner of miscellaneous domain names comprising its trademark MISSONI, among which .
The Panel accepts that the disputed domain name is confusingly similar to Complainant’s MISSONI trademark. Indeed, the disputed domain name reproduces the trademark MISSONI in its entirety. Such term provides the dominant element of the disputed domain name. Indeed, the disputed domain name differs from the Complainant’s trademark MISSONI only to the extent of the mere adjunction of the generic word “linens” and the top-level domain suffix “.com”.
It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is typically insufficient to avoid a finding of confusing similarity (Missoni S.p.A v. Easy Shop Ping,WIPO Case No. D2012-0117 ()). Moreover, the addition of the word “linens” actually adds to the confusion because it directly describes the goods provided by the Complainant and its field of activities. When used in combination with the Complainant’s trademark, the word “linens” may indeed confuse Internet users into believing in affiliation or authorization of the disputed domain name with the Complainant.
Finally, it is well established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Second element under paragraph 4(a)(ii) of the Policy requires the Complainant to establish the Respondent lacks rights and legitimate interests in the disputed domain name.
The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use its trademarks in the disputed domain name. Moreover, the Panel finds no evidence that the disputed domain name corresponds to Respondent’s name.
Furthermore, the Respondent did not set out evidence of any use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant submitted screenshots of the page to which the disputed domain name used to resolve until March 8, 2012 and the evidence shows that the Respondent used the disputed domain name in connection with a website displaying sponsored links among which some of them directed toward Complainant’s competitors. Such use does not constitute a “bona fide offering of goods and services” in the meaning of the Policy.
The Complainant also asserts that the disputed domain name has resolved to an inactive page since March 15, 2012. Similarly, this Respondent’s subsequent use of the disputed domain name did not constitute use in connection with bona fide offering of goods or services either. The Complainant submitted screenshots of the inactive page to which the disputed domain name resolved on March 19, 2012. The evidence shows that the domain name resolved to a default page stating “ERROR. The requested URL could not be retrieved”. The domain name thus did not resolve to any website at all. This passive holding does not confer any rights to the Respondent in the disputed domain name in these circumstances.
Moreover, while checking the Complainant’s assertions, the Panel finds that the disputed domain name now resolves to a parking page displaying sponsored links, corresponding to the first screenshot provided by the Complainant.
Furthermore, Respondent did not file a Response to the Complaint. The Respondent has chosen neither to explain its conduct nor to set out evidence of any rights or legitimate interests in respect of the disputed domain name, and the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.”
The Panel acknowledged that Respondent most probably knew of the Complainant’s trademarks when it registered the disputed domain name. This inference can be drawn in the light of Complainant’s fame and grounded on UDRP decisions which considered the MISSONI trademark as a well-known trademark (See Missoni S.p.A v. BigD and Taeho Kim,WIPO Case No. D2002-0545 (); Missoni S.p.A V; Darrell Jordan,WIPO Case No. D2012-0349 () and ; Missoni S.p.A v. Easy Shop Ping, () supra: Missoni S.p.A v. William Song,WIPO Case No. D2012-0208 ( and ).
The lack of any explanation from respondent as to why it registered a domain name incorporating the trademark MISSONI, soon after Complainant launched its “Missoni for Target” collection, was already deemed as evidencing registrant’s bad faith in previous decisions involving Complainant (See Missoni S.p.A v. William Song,WIPO Case No. D2012-0208). As this new collection had notably to be sold on the Target United States of America retailer’s websites, the timing of the registration of the disputed domain name a short time after the launch of the “Missoni for Target” collection does not appear as a coincidence. Moreover, the combination of Complainant’s trademark with the generic word “linens” directly referring to the Complainant’s goods and field of activities shows in the Panel’s view that the Respondent was aware of the Complainant’s activities and registered the disputed domain name on purpose. Such a behavior reflects Respondent’s intent to capitalize on Complainant’s trademark. No other plausible explanation appears to the Panel as to why the Respondent selected the disputed domain name other than to trade on the goodwill of Complainant’s renowned trademark MISSONI by misleading Internet users and creating a likelihood of confusion with the Complainant.
Furthermore, the Complainant provided evidence showing that the disputed domain name resolved to a parking page displaying sponsored links first, before directing toward an inactive page. This last use suggests passive holding. Passive holding of a domain name does not necessarily constitute any rights of the registrant in a domain name and neither does it prevent a finding of bad faith. Indeed, the circumstances surrounding the registration of the domain name may allow inferring bad faith use of a domain name, while it is passively held (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, (1) the Complainant’s trademark has a strong reputation and is widely known, as notably evidenced by its use in United States where the Respondent is localized and (2) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Moreover, after having duly checked the Complainant’s submissions, the Panel finds that the disputed domain name is now used in connection with websites featuring sponsored links that relate to Complainant’s competitors in the fashion field. The Respondent previous, subsequent and recent uses of the disputed domain name thus clearly show, in the Panel’s opinion, an intention on the part of the Respondent to prevent Complainant from reflecting its trademark in the disputed domain name and also to exploit and profit from the Complainant’s trademark.
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy. 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.
Nathalie Dreyfus
Sole Panelist
Dated: May 10, 2012
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