The Complainant is Missoni S.p.A of Sumirago, Varese, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is bing xie, xiebing of Zhuhai, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2016, 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 February 24, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 25, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016. The Respondent did not submit any response save for the email communication sent to the Center on March 16, 2016. Accordingly, the Center notified the Parties that it will proceed to Panel Appointment process on March 29, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on April 4, 2016. 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 a fashion company incorporated in Italy, with its principal place of business in Sumirago (Varese). Its corporate name and trade mark MISSONI is derived from the name of its founder and designer, Mr. Ottavio Missoni. The Complainant and its trade mark MISSONI enjoy a worldwide reputation.
The Complainant is the owner of numerous trade mark registrations around the world, including the following trade mark registrations:
Country
Trade Mark
Registration Number
Classes
Registration Date
International
MISSONI
405224
24, 25
January 21, 1974
International
MISSONI
457823
3, 9, 14, 34
December 2, 1980
International
MISSONI
463724
23
October 7, 1981
International
MISSONI
538371
20, 21
June 7, 1989
International
MISSONI
649152
24, 25
December 29, 1995
International designating China
MISSONI
555050
16, 18, 27
May 30, 1990
International designating China
MISSONI
586554
3, 9, 24, 25
June 19, 1992
International designating China
MISSONI
649152
24, 25
December 29, 1995
The Complainant also owns the following domain name registrations:
- registered on September 20, 2002;
- registered on January 25, 1999;
- registered on April 19, 2002;
- registered on October 30, 2012.
The disputed domain name was registered on August 27, 2015, long after the Complainant has registered the trade mark MISSONI (in 1974 at least). As at the date of this decision, the disputed domain name does not resolve to any active website. 5. Parties' Contentions A. Complainant
The Complainant claims to be a world leading company in the fashion field, and that its products are marketed and sold in almost every country worldwide. It asserts that its trade mark MISSONI is well-known throughout the world, and was first registered in Italy, as early as 1969.
The Complainant refers to its business, trade marks and registered domain names and claims that the disputed domain name is identical to its trade marks and confusingly similar to its domain names.
The Complainant affirms that the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark or trade name MISSONI. It contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, especially since the Respondent is not commonly known by the disputed domain name, nor has the Respondent registered any trade mark for "missoni". As the disputed domain name does not resolve to any active website, it is likely that the Respondent has never made any bona fide use of the same.
The Complainant contends that given the fame of the Complainant and its trade mark and its extensive Internet presence, the Respondent must have been aware of the Complainant's rights in the MISSONI trade mark and so the Respondent's choice of domain name cannot be a mere coincidence. The Complainant asserts that the Respondent's email address is associated with 136 domain names but the registrant's names (Xiebing, Bing Xie, bing jie, JieBing and gunning Guo) and phone numbers associated with these domain names are sometimes different, suggesting that the Respondent has provided false contact information. This suggests that the Respondent is seeking to conceal its real identity. The disputed domain name is not active but is being passively held. An inference can be drawn that the Respondent has registered the disputed domain name to divert Internet users looking for MISSONI products to third party unofficial websites. For all of these reasons, the disputed domain name has been registered and used in bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
Apart from an email of March 16, 2016 doubting the authenticity of the proceedings and claiming a lack of understanding of the contents of the Complaint, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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 requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) notwithstanding the Respondent's claim (in its email of March 16, 2016) of a lack of understanding of the contents of the Complaint and supporting materials which are in English, the Respondent's automatic email reply of March 8, 2016 to the Center's emails is partially in English; and
(c) according to the evidence submitted by the Complainant, the Respondent is associated with numerous other domain names comprising Latin characters, e.g., , , , , , based on a reverse WhoIs search using the Respondent's email address (anbss@[…].com).
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond formally to the issue of the language of the proceeding but failed to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English.
6.2 Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MISSONI mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant's trade mark MISSONI in its entirety. The addition of the generic Top-Level Domain ("gTLD") ".link" does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974)
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MISSONI trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "missoni".
The Panel is satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name.
The disputed domain name does not resolve to any active website. The Respondent has failed to provide any evidence to establish his rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites 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 websites or location or of a product or service on the Respondent's website or location.
The Panel notes that as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2).
The Complainant and its trade mark MISSONI enjoy a worldwide reputation. A cursory Internet search would have disclosed the MISSONI trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant's MISSONI trade marks and related domain names when it registered the disputed domain name. Registration of a domain name that incorporates the Complainant's long-established and widely known trade mark suggests opportunistic bad faith.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, there is a possibility that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Panel also notes that the Respondent's email is associated with numerous other domain names, some incorporating famous marks such as , , , which suggests that the Respondent is a engaged in pattern of cybersquatting conduct.
The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain name. Given the similarity between the disputed domain name and the Complainant's registered domain names such as , , , and , there is a strong possibility that the Respondent intends to take advantage of the fame of the Complainant's trade mark to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy may be applicable to the present case.
The Panel also notes that efforts by the Center to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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.
Sok Ling Moi
Sole Panelist
Date: April 22, 2016
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