The Complainant is Missoni S.p.A of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is CoAuction of New Delhi, Delhi, India. 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 November 25, 2010. On November 25, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 26, 2010, 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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 28, 2010
The Center appointed Geert Glas as the sole panelist in this matter on January 10, 2011. 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 renowned Italian company within the fashion industry, marketing and promoting its textile products in several countries around the world.
The Complainant owns numerous national, international and Community trademarks consisting of the word MISSONI, whose registration dates back as far as 1971 (Annex 3 to the Complaint), as well as several domain names containing this trademark (Annex 4 to the Complaint).
The disputed domain name was registered by the Respondent on July 20, 2010.
The disputed domain name appears to have been used by the Respondent for redirecting Internet users to a “GoD” web page showing sponsored links. Sponsored links on a printout of Respondent's web page furnished by the Complainant include “VINICIO boutique on line” and "Stock City Web Store”, which mentions several brands of the Complainant's competitors (Annex 5 to the Complaint).
The Respondent offered to sell the disputed domain name to the Complainant by email of September 21, 2010 (Annex 6 to the Complaint) and again during these arbitration proceedings, by emails of November 26, 2010 and December 23, 2010. The email of September 21, 2010 mentions the website of the disputed domain name "www." in the subject heading, from which it must be inferred that this domain name is offered for sale, while advising to "Secure, promote, and protect your brand globally now." In the email of November 26, 2010, the Respondent refers to talks with another interested party (Hotel Missoni) and suggests a minimum price for the disputed domain name of USD 1,000. 5. Parties’ Contentions A. Complainant
The Complainant requests that the disputed domain name be transferred on the basis that:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademarks that are widely-known throughout the world and that were registered prior to the disputed domain name;
2) the Respondent lacks rights and legitimate interest in respect of the disputed domain name given that:
a) the Respondent was not granted such right by the Complainant;
b) the Respondent has no trademarks or activities registered under the name “Missoni”, nor has it ever been known under this name; and
c) the Respondent has never made any bona fide use of the disputed domain name, considering in particular that the disputed domain name redirected Internet users to a web page containing several sponsored links to the Complainant’s competitors (Annex 5 to the Complaint); and
3) the Respondent registered and uses the disputed domain name in bad faith given that:
a) the Complainant’s trademarks are globally renowned and it is highly unlikely that the Respondent was unaware hereof at the time of registration of the disputed domain name without knowing this;
b) no plausible explanation exists as to why the Respondent selected the disputed domain name other than to trade on the goodwill of the Complainant’s trademarks;
c) the disputed domain name redirected Internet users to a web page containing sponsored links, some of which redirected to competitors of the Complainant (Annex 5 to the Complaint); and
d) the Respondent offered to sell the disputed domain name to the Complainant (Annex 6 to the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements that must be met to obtain relief. These elements are that:
(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.
Each of the aforesaid three elements must be proven by a complainant to warrant relief. A. Identical or Confusingly Similar
The requirement under Paragraph 4(a)(i) of the Policy is satisfied when the Complainant evidences that (i) it owns a registered trademark and (ii) the disputed domain name is identical or confusingly similar to the trademark of the Complainant.
The Complainant has provided evidence of ownership and use of a number of trademark registrations for the MISSONI trademark, such as the Italian trademark registration No. 887295, first filed on September 2, 1969, and registered on May 15, 1971, the Community trademark registration No. 3773165, registered on August 8, 2005 and the international trademark registration No. 586554, registered on June 19, 1992 (Annex 3 to the Complaint).
The disputed domain name incorporates in full the MISSONI trademark. Previous Panel decisions have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429). The disputed domain name must therefore be considered identical to the Complainant's MISSONI trademark.
For these reasons, the Panel finds that the requirement under Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant evidences that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, in line with previous panel decisions, the burden of proof in this regard shifts to the respondent once the complainant makes a prima facie showing that the respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Neusiedler Aktiengesellschaft v. Kulkarni,WIPO Case No. D2000-1769; and Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited,WIPO Case No. D2000-0704)
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that can demonstrate the existence of rights or legitimate interests of the respondent, namely (i) the use the domain name in connection with a bona fide offering of goods or services prior to the dispute; (ii) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or (iii) the legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The complainant has provided sufficient evidence to support a prima facie finding that the Respondent does not seem to use the disputed domain name in connection with a bona fide offering of goods or services is not commonly known by the disputed domain name and is not meeting a legitimate noncommercial or fair use of the domain name.
By the Respondent's failure to submit a response, no indications were provided which could prove that the Respondent does have rights or legitimate interests in respect of the disputed domain name.
On the contrary, the wording of the Respondent's email of September 21, 2010, referring to "your brand" (see Annex 6 to the Complaint), implies that the Respondent itself acknowledges not to have a right to the domain name. Furthermore, the provision of sponsored links to certain of the Complainant's competitors through the disputed domain name, which is identical to the Complainant's widely-known trademark, does not appear to constitute a bona fide offering of goods or a fair use of the disputed domain name (see Brink’s Network Inc v. Asproductions,WIPO Case No. D2007-0353).
For these reasons, the Panel finds that the requirement under Paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant evidences that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name”; or “(iv) by using the domain name, [the respondent has] intentionally attempted 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Considering the global activities of the Complainant, the worldwide reputation of its MISSONI trademarks and its presence on the Internet, it can be established that the Respondent was aware or should have been aware of the existence of the MISSONI trademarks prior to registering the disputed domain name (see also Missoni S.p.a v. BigD and Taeho Kim,WIPO Case No. D2002-0545; Missoni S.p.A v. Sanadiwen Limited,WIPO Case No. D2010-0437; Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
In line with previous panel decisions, the Respondent's use of the disputed domain name to redirect Internet users to a web page containing several sponsored links to the Complainant's competitors is to be considered as an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark, as described in Paragraph 4(b)(iv) of the Policy (see amongst others O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; Brink’s Network Inc v. Asproductions,WIPO Case No. D2007-0353; and Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082);
In addition hereto, the fact that the Respondent has offered to sell the disputed domain name to the Complainant only a few months after its registration and that by email of November 26, 2010, the Respondent suggested a minimum price of USD 1,000, sufficiently indicates that the disputed domain name was registered to sell it for valuable consideration exceeding out-of-pocket costs directly related to the domain name, as described in Paragraph 4(b)(i) of the Policy (see BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms,WIPO Case No. D2001-1409; and DHL Operations B.V. v. Karel Salovsky,WIPO Case No. D2006-0520).
For these reasons, the Panel finds that the requirement under Paragraph 4(a)(iii) of the Policy is satisfied. 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.
Geert Glas
Sole Panelist
Dated: January 24, 2011
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