Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Hi Koo of Xiamen, Fujian, China. 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 20, 2012. On the same date, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name and GoD, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 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.
On May 14, 2012, the Center notified the parties of the Administrative Panel Procedural Order in which the Panel requested Complainant provide the Panel with a signed document of support from an authorized representative of the HAVAIANA third party trademark holder, and indicating support for the filing of this Complaint and consent should the Panel issue any decision transferring the disputed domain name to Complainant. Complainant submitted the document requested by the Panel on May 18, 2012. 4. Factual Background
The Complainant, Missoni S.p.A., is an Italian company in the fashion field and its goods are marketed and promoted under the MISSONI trademark in almost every country. Complainant’s first trademark filing for MISSONI in Italy dates back to September 2, 1969, which registration dates from 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 of class 25.
- International Registration No. 586554 for MISSONI, of June 19, 1992, renewed, designating various countries and covering goods of classes 3, 9, 24 and 25.
- Community Registration No. 001164987 for MISSONI, registered on May 7, 1999, renewed and covering goods of classes 18, 24 and 25.
Complainant was present very early on the Web and is particularly committed to communicating about its brand on the Internet. To meet this end, the Complainant operates many domain names incorporating MISSONI trademark, including:
Domain name
Date of creation
April 13, 1999
January 25, 1999
July 6, 2006
In May 2011, the Complainant collaborated with Alpargatas Europe S.L., Sao Paulo Alpargatas S.A. and Alpargatas USA inc. (the “Alpargatas Entities”), the famous maker of the HAVAIANAS “flip-flops” to launch and sell a line of sandals and espadrilles. A co-branded HAVAIANAS-MISSONI collection is born from this collaboration labeled “Missoni loves Havaianas”.
The disputed domain name was registered on July 26, 2011.
The disputed domain name resolves to an inactive page at the moment of issuing this Decision. 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 trademark is well-known and has been extensively used for many years. Complainant thus asserts that the disputed domain name is confusingly similar to its trademark 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 trademark MISSONI is that the disputed domain name consists of the addition of the term “havaianas”.
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 contends that the disputed domain name resolves to a page displaying an error message informing that “the requested URL could not be retrieved”. Moreover, Complainant points out that Respondent has never replied to Complainant’s cease and desist letters.
Finally, Complainant then contends that Respondent registered the disputed domain name two months after the launch of the MISSONI-HAVAIANAS collection. Consequently, Complainant suggests that, given the circumstances, it is highly unlikely that Respondent registered the disputed domain name without knowledge of the MISSONI trademarks but also of the Missoni S.p.A. and Alpargatas Entities joint initiative. In Complainant’s opinion, Respondent chose to register the disputed domain name combining these two well-known trademarks with a clear intent to trade on the goodwill of Complainant’s trademark. Moreover, Complainant stated that Respondent registered 168 domain names incorporating third parties’ well-known trademarks in the fashion field. 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 names; 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 various domain names comprising its trademark MISSONI.
The disputed domain name reproduces the trademark MISSONI in its entirety with the adjunction of the term “havaianas”. The trademark MISSONI has been deemed to be well-known by the Panel and even in recent UDRP decisions (See Missoni S.p.A v. William Song,WIPO Case No. D2012-0208 and Missoni S.p.A v. Easy Shop Ping,WIPO Case No. D2012-0117). The incorporation of a well-known trademark in a domain name has been deemed to be sufficient to show that a domain name is identical or confusingly similar to a complainant’s registered trademark (See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017).
The term “havaianas” is also the undisputed trademark of Alpargatas Entities which is not a party to the present proceeding but with which the Complainant has business relations. Indeed, as shown by the evidence submitted within the Complaint, Complainant designed sandals for this “flip-flops” maker. In the light of the existing business partnership between the Complainant and the owner of the HAVAIANAS trademark, the adjunction of the trademark HAVAIANAS heightens inevitably the risk of confusion.
Moreover, as it was already stated in previous UDRP decision, the adjunction of a third party trademark in a domain name does not circumvent the finding of similarity between a disputed domain name and the Complainant’s trademark (See Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 and ACCOR, SoLuxury HMC v. Whois privacy services Domain protect LLC/Alex Gusev,WIPO Case No. D2012-0389: ”the addition of other marks does not create a distinct mark/domain name, capable of overcoming a claim of confusing similarity, it merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the Domain Name”).
In a recent UDRP decision where Complainant was a party, the Panel found that the domain name was confusingly similar to the trademark MISSONI: “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 authorized by or linked to the Complainant” (See Missoni S.p.A v. Chris Ditchfield,WIPO Case No. D2012-0417).
Similarly here, given the relationship between Complainant and the owner of the trademark HAVAIANAS, the combination of the two renowned trademarks MISSONI and HAVAIANAS in the disputed domain name may confuse Internet users into believing in affiliation or authorization of the disputed domain name with Complainant.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. 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 Complainant to establish that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent is not a licensee of Complainant, nor has Complainant granted to Respondent an authorization to use their trademark in the disputed domain name. Moreover, the Panel finds no evidence that the disputed domain name corresponds to Respondent’s name.
Furthermore, 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, Complainant submitted screenshot of the page to which the disputed domain name resolves and the evidence shows that the disputed domain name resolves to a default page stating that “the requested URL could not be retrieved”. The disputed domain name thus does not resolve to any website at all. This constitutes passive holding. Such use does not confer any rights to Respondent in the disputed domain name.
Moreover, the records provided by Complainant reflect Respondent is stockpiling of domain names. Indeed, Respondent registered 168 domain names incorporating well-known trademarks in the fashion field. Multiple registrations of domain names incorporating third-party marks cannot amount to a bona fide offering of goods or services (See IG Index Plc v. Fruit Group Inc.,WIPO Case No. D2000-1413).
Finaly, Respondent did not file a Response to the Complaint. 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 Respondent’s silence corroborates Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name.
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 acknowledges that Respondent most probably knew Complainants’ trademarks when it registered the disputed domain name. This inference can be drawn in the light of Complainant’s fame and grounded on very recent 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>; Missoni S.p.A v. Easy Shop Ping,WIPO Case No. D2012-0117; Missoni S.p.A v. William Song,WIPO Case No. D2012-0208.
The lack of any explanation from Respondent as to why it selected the disputed domain name incorporating the trademarks MISSONI and HAVAIANAS, soon after Complainant launched its “Havaianas-Missoni” collection, can be seen as evidencing Respondent’s bad faith (See Missoni S.p.A v. Chris Ditchenfield,WIPO Case No. D2012-0417; Missoni S.p.A v. William Song, supra). Indeed, the registration of the disputed domain name a short time after the launch of the HAVAIANAS sandals designed by MISSONI does not appear as a coincidence and shows in the Panel’s view that Respondent was aware of Complainant’s trademark and activities. This fashion event seems to have led Respondent to register the disputed domain name intending to capitalize on Complainant’s trademark. No other plausible explanation appears to the Panel as to why Respondent registered the disputed domain name other than to trade on the goodwill of Complainant’s well-known trademark MISSONI by misleading Internet users and creating a likelihood of confusion with Complainant.
Moreover, Respondent seems to be engaged in a pattern of stockpiling domain names as it owns not less than 168 domain names. Stockpiling nearly two hundred domain names corresponding to third-party marks mirrors that Respondent registered the disputed domain name in bad faith as it was already held by previous Panel decisions (See American Management Association International v. Mode L,WIPO Case No. D2007-0418).
Besides, using a well-known trademark in order to bait Internet users on a website which has not received any endorsement from the trademark owner cannot amount to a fair or legitimate use of the domain name.
The content of the website to which the disputed domain name resolves is an error page and suggests passive holding. Passive holding of a domain name does not 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 the latter is passively held (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In this case, (1) Complainant’s trademark has a strong reputation and is widely known, as notably evidenced by its various trademark registrations, (2) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name and (3) Respondent did neither respond to Complainant’s cease and desist letter nor to the Complaint to avail itself of its rights.
Such use of the disputed domain name thus clearly shows, in the Panel’s opinion, an intention on the part of Respondent to prevent Complainant from reflecting its trademark in the disputed domain name.
For the reasons set out above, the Panel finds that Respondent has registered and used the disputed domain name in bad faith, and that Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.
Besides, the Panel duly notes that the disputed domain name includes the trademark HAVAIANAS which is owned by Alpargatas Entities that is not a party to the current proceeding. In other cases under the UDRP procedure, Complainants have presented evidence of the consent of other trademark owners with a potential interest in the domain name (See inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 and Yahoo! Inc. v. M & A Enterprises,WIPO Case No. D2000-0748). In this case, in receipt of the Panel order requesting the Complainant to do so, Complainant provided the Panel with documents indicating its business relationships with Alpargatas Entities, the third party trademark holder, but did not supply a letter of authorization to the Complaint from this latter. However, the Panel is satisfied with the documents provided in support. 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 22, 2012
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