WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Missoni S.p.A v. Colin Zhao Case No. DCC2010-0004 1. The Parties
The Complainant is Missoni S.p.A of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A. of Italy.
The Respondent is Colin Zhao of Guangzhou, Guangdong, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 8, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. 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 June 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2010. The Respondent did not file any formal Response by the specified due date. The Respondent did, however, sent an e-mail communication to the Center on June 16, 2010, requesting all the communications translated into Chinese.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 9, 2010. 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 which engages in the field of fashion. The Complainant goods are marketed worldwide.
The Complainant is the owners of multiple trademark registrations for the mark MISSONI around the world. For example: Italian registered trademark No. 0000621311 – MISSONI, with the registration date of June 9, 1994; Chinese trademark registration No. 1815437 – MISSONI logo, with the registration date of July 28, 2002; Italian trademark registration No. 0000887295, with the registration date of April 2, 2003; Community trademark registration No. 002823813 – MISSONI logo, with the registration date of October 14, 2003; Community trademark registration No. 002823797 - MISSONI, with the registration date of December 17, 2003, and others.
The Complainant has expended significant resources throughout the years in promotion and advertisement throughout the world of its MISSONI trademark.
The Complainant is the owner of several domain names, which contain the name “missoni”, for example: , , , , , , , , , , and many more. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on October 24, 2009.
The disputed domain name redirects users to a different URL at the domain name , which resolves to a website that posts a personal blog and contains, among other, articles of recent news and fashion. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the MISSONI trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that the Respondent is not making a legitimate non-commercial use of the MISSONI mark. The Complainant further argues that it did not license or otherwise permitted the Respondent to use the MISSONI mark.
The Complainant further argues that the Respondent had knowledge of the Complainant and of the Complainant's use of the MISSONI mark at the time he registered the disputed domain name.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin, and the public is likely to believe that the Complainant authorized or endorsed the Respondent.
The Complainant further argues that the Respondent engaged in “cybersquating” by registering many domain names, containing well known names and trademarks of different entities. The Complainant argues that this evidence the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not file any formal response with the Center by the due date.
The only communication made by the Respondent to the Center was an e-mail communication, requesting the translation of all communications to Chinese. The Center denied the Respondent's request for the reasons discussed below.
Nevertheless, the Panel has learned that the Respondent has uploaded an unofficial Response to the website operating under the domain name , to which the disputed domain name redirects.
In its unofficial Response, the Respondent argues that the word “Missoni” is a vocabulary word, and as such is generic. Thus, the Respondent argues that the Complainant cannot have exclusive rights in it.
The Respondent further argues that he did not use, nor is he using, the disputed domain name in bad faith. According to the Respondent, the disputed domain is used as a non-profit personal blog.
For these reasons the Respondent claims that its use of the MISSONI mark is legitimate. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11 of the Rules states the following:
“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.”
The disputed domain name was registered with GoD, Inc. The language of the Registration Agreement in this case is English.
The Respondent did not provide the Center with evidence to suggest that the Registration Agreement is in Chinese nor has he provided evidence to suggest an agreement with the Complainant, according to which UDRP proceedings will be handled in Chinese.
In addition, the Respondent did not file a formal request to change the language of the proceedings.
The Panel therefore asserts that the language of this proceeding will continue in English. B. Respondent's Unofficial Online Response
The Respondent uploaded a Response in the website at the domain name , to which the disputed domain name redirects.
The Rules do not include an express provision regarding unofficial statements by either party.
Nevertheless, paragraph 10(a) and (d) authorizes the panel to administrate the proceedings in a manner as it considers appropriate and determine the admissibility, relevance, materiality and weight of the evidence. Indeed, under the Rules, the Panel shall conduct the administrative proceeding in such as manner as it considers appropriate (see e.g. Al Ghurair Group LLC v. Ghurair Group,WIPO Case No. D2004-0532; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray,WIPO Case No. D2002-0624; Voigtländer GmbH v. John Voigtlander,WIPO Case No. D2003-0095).
The Panel finds that taking the Respondent's unofficial Response into consideration does not prejudice either party, but merely serves to clarify certain issues hitherto obscure. The Panel will award Respondent's unofficial Response the appropriate consideration in light of the fact that it was not filed with the Center but rather uploaded online and due to the fact that it lacks supportive evidence. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As stated above, the Complainant owns multiple trademark registrations, for example: Italian registered trademark No. 0000621311 – MISSONI, with the registration date of June 9, 1994; Chinese trademark registration No. 1815437 – MISSONI logo, with the registration date of July 28, 2002 and Community trademark registration No. 002823813 – MISSONI logo, with the registration date of September 14, 2003; and others.
The disputed domain name differs from the registered MISSONI trademark only by the additional ccTLD “.cc”.
Previous UDRP panels have asserted that the mere addition of a gTLD or a ccTLD to a disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the ccTLD “.cc” is without legal significance since the use of a ccTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MISSONI trademark, or a variation thereof. The Respondent did not submit a formal response nor has he provided evidence in his unofficial response to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. E. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which show that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant owns registrations for the MISSONI trademark at least since 1994. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name redirects Internet users to another URL address, which resolves to a website that posts a personal blog and contains, among other, articles of recent news and fashion as well as advertisements and other information regarding of the Complainant as well as links to apparently third party sites some displaying commercial content. This is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark MISSONI and subsequent intent to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
Further, the disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Panel also notes that the Respondent has engaged in a pattern of conduct known as “cybersquating”. The Panel sites the following with approval: A “pattern of infringing upon others' famous and registered trademarks is evidence of bad faith registration and use” (See The Antigua Group, Inc. v. Vanilla, Ltd.,WIPO Case No. D2004-0543 and Mars, Inorporated. v. Vanilla, Ltd.,WIPO Case No. D2000-0586).
Based on the evidence presented to the Panel, including the use of the MISSONI trademark in the disputed domain name and the content of the website to which users are redirected from the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 21, 2010
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