The Complainant is Missoni S.p.A. of Sumirag, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is 米索尼股份有限公司/Missoni Limited of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2015. On May 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 18, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On May 19, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 in English and Chinese, and the proceedings commenced on May 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on June 25, 2015. 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 company known in the fashion field, with its goods marked and promoted across the world. The Complainant asserts that the trade mark MISSONI has, as a result of many years of extensive use, become globally well known.
The Complainant has many registrations for the trade mark MISSONI, including in China. The earliest registration dates from May 15, 1971. The Complainant has also registered numerous country-code and generic Top-Level domain names corresponding to its MISSONI trade mark, e.g., , , , , , , , , , , , , , and .
The disputed domain name was registered on January 5, 2015. It does not resolve to any active webpage. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to the MISSONI trade mark in which it has rights. The only difference between the disputed domain name and the Complainant’s MISSONI trade mark lies in the addition of the Chinese language generic Top-level Domain (gTLD) “.网址” which means “network address”.
The Complainant further asserts that the Respondent lacks rights and legitimate interests in respect of the disputed domain name. The bases for its contention are:
a) the Complainant did not agree to nor authorize the Respondent to use the former’s trade marks, trade name or company name;
b) the use of a domain name containing the Complainant’s trade mark in its entirety makes it difficult to infer a legitimate use of the disputed domain name by the Respondent;
c) there is no evidence that the Respondent has trade marks or company activities registered under the MISSONI brand;
d) the disputed domain name is not being used; and
e) the Respondent has never been known by the disputed domain name.
Lastly, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. There is reason to believe that the Respondent knew of the Complainant and its activities as well as its MISSONI trade mark when the disputed domain name was registered. MISSONI is a well-known trade mark and this has been acknowledged as such by other UDRP panelists in earlier UDRP cases (e.g., Missoni S.p.A. v. Domain Admin, Privacy Protection Service INC d/b/a Privacy P/ Bahadir Kuyucu,WIPO Case No. D2014-1816; Missoni S.p.A. v. Chen Zu, Chen Guang Yao, Cheng-Hong Wu, WIPO Case No. D2014-0420; Missoni S.p.A. v. Disappointments For Sale,WIPO Case No. D2013-0416; Missoni S.p.A. v. Song Beyung Su,WIPO Case No. D2012-1290; Missoni S.p.A. v. Hostlando,WIPO Case No. D2012-1256).
The disputed domain name was registered decades after the Complainant’s trade mark had been used and promoted. The registration of the famous MISSONI mark with the Chinese language gTLD “.网址” is a clear attempt by the Respondent to mislead Internet consumers into believing that the disputed domain name leads to the website of the Complainant.
Further, the WhoIs information relating to the disputed domain name suggests that the Respondent has tried to conceal its identity. The email address used is that of a well-known international law firm. The Respondent’s false email address is associated with 352 other domain names. For several of its domain name registrations, the Respondent has indicated the names of the legitimate holders of the corresponding trade marks as the registrant e.g., for , the registrant was indicated as Starbucks Corporation Company with an address in Seattle, Washington, United States of America; for , the registrant was indicated as Sony Co., Ltd. Hence, whilst using the same email address for its domain name registrations, the Respondent has been changing the other data of the registrant in order to conceal its real identity. This shows bad faith registration and use of the Respondent’s domain names.
There is no plausible explanation why the Respondent has selected the disputed domain name other than to trade on the goodwill of the Complainant’s famous trade mark MISSONI. The passive holding of the disputed domain name and the Respondent’s pattern of registering domain names which correspond to famous trade marks are also evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant filed the Complaint in English. However, the Registrar has indicated that the Registration Agreement was in Chinese. The Complainant requested that the language of the proceeding be English as to proceed in Chinese would create further difficulties and costs for the Complainant which is not familiar with the Chinese language. Further, the disputed domain name has been registered in Latin rather than Chinese script.
Paragraph 11(a) of the Rules stipulates that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Paragraph 10(b) and (c) of the Rules stipulate, respectively, the principles to be upheld, namely that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Panel determines that English should be the language of the proceeding in this case. The Respondent did not respond to the issue of the language of the proceeding although it was given the opportunity to. Neither did it respond in the administrative proceeding. On the other hand, requiring the Complainant to translate the Complaint and the supporting evidence into Chinese would go against the policy consideration of “due expedition” in the administrative proceeding. The Panel further notes that apart from the disputed domain name which contains Latin script, the Respondent appears to be associated with many other domain names which comprise English brand names and words. (See the examples mentioned above - and ). The WhoIs information provided in relation to these other domain names, namely the names and addresses of the registrants, are in English. It does appear therefore that the Respondent has sufficient knowledge of English.
In the circumstances, the Panel concludes that it is appropriate in this case for English to be adopted as the language of the proceeding. B. Identical or Confusingly Similar
The Complainant clearly has rights in the registered trade mark MISSONI. The said trade mark has been incorporated in its entirety in the disputed domain name. It is a well-established principle that the Top-Level Domain is to be typically disregarded when considering the issue of whether a domain name is identical or confusingly similar to a complainant’s trade mark. The disputed domain name is therefore identical to the Complainant’s MISSONI trade mark.
The first element of paragraph 4(a) of the Policy has been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, if found to be proved, would demonstrate a respondent’s rights or legitimate interests in a domain name in dispute:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name since:
(a) the Complainant did not authorize the Respondent to use its trade marks, trade name or company name and there is no relationship between the Complainant and the Respondent;
(b) there is no evidence that the Respondent has been commonly known by the disputed domain name; and
(c) the disputed domain name is not being used and there is no evidence of a bona fide offering of goods or services by the Respondent on a website corresponding to the disputed domain name.
The Respondent has not responded to the Complainant’s assertions and hence, in the absence of evidence which would prove to the contrary, the Panel finds that the Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy has been satisfied. D. Registered and Used in Bad Faith
The Panel finds the Complainant’s trade mark MISSONI to be a well-known mark. A situation as this one, where there has been an adoption of a well-known mark in a domain name which the Respondent has no apparent connection to nor any plausible reason why it should have chosen the disputed domain name , leads to an inference of bad faith. In this regard, the Panel finds it pertinent to refer to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states:
“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.”
The Panel agrees that there is no plausible explanation why the Respondent selected the disputed domain name other than for the purpose of “intentionally [attempting] to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location” (parapagraph 4(b)(iv) of the Policy). The Respondent’s passive holding of the disputed domain name indeed does not prevent the Panel’s finding of bad faith. The Panel has taken into consideration the following factors in arriving at a finding of bad faith registration and use: the Complainant’s mark is a well-known mark; the Respondent appears to have taken pains to conceal its identity by indicating false names and addresses including email addresses in the WhoIs information pertaining to the disputed domain name and numerous other domain names; the Respondent has not responded in the proceeding; and the Respondent has registered other domain names incorporating well-known trade marks of third parties. These are all negative inferences the Panel draws.
The Panel therefore finds that the disputed domain name has been registered and used in bad faith.
The third element of paragraph 4(a) of the Policy has been satisfied. 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.
Francine Tan
Sole Panelist
Date: June 27, 2015
Full & Egal Universal Law Academy