WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.a. v. BigDoggie.com and Taeho Kim
Case No. D2002-0545
1. The Parties
The Complainant is Missoni S.p.a., a company organized under Italian law having its principal place of business in Sumirago, in Italy. Its address is Via Luigi Rossi, 52 Ė 21040 Sumirago, Italy. It is represented by Dr. Modiano & Associati S.p.a. of Via Meravigli, 16 Ė 20123 Milan, Italy.
The Respondent is BigDoggie.com (which administrative contact is Taeho Kim), Enamecorp.com, of 303-1304 Gumhobestvill, 808 Gumhodong, Seoku Ė Kwangju, Kwangju, Republic of Korea 502 - 154. The Respondent has taken no part in the proceeding, nor a lawyer or other agent represents him.
2. The Domain Name and Registrar
The domain name the subject of the Complaint is <missoni.net>. The registrar is OnlineNIC, Inc., 2315 - 26th Ave., San Francisco, CA 94116, United States of America.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") was submitted to the WIPO Arbitration and Mediation Center ("the Center") on June 13, 2002, by email and on June 17, 2002, in hardcopy.
On June 16, 2002, the Acknowledgement of Receipt of the Complaint was sent.
On June 16, 2002, the Center made an initial request for registrar verification.
On June 18, 2002, the Registrar responded that the domain name <missoni.net> was registered on June 14, 2001, through OnlineNIC, Inc and that the current registrant was BigDoggie.com, the Respondent at the address referred to above.
The administrative contact of the registrant, BigDoggie.com, is Taeho Kim at the address referred to above.
On June 25, 2002, the Notification of Complaint and Commencement of Administrative Proceeding took place and the administrative proceeding began.
No Response having been received from the Respondent, the Center sent the Notification of the Respondent Default by email on July 17, 2002.
On July 23, 2002, the notification of an appointment of the sole Panelist to both parties took place. The administrative Panel, consisting of a single member, Mrs. Isabelle Leroux was appointed. Mrs. Leroux has filed a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel understands that the requisite fees have been paid.
No interim orders have been made by the Panel.
As the language of the domain name registration agreement is the English language and as the Complainant has filed its Complaint in English, the proceeding will be conducted in English, pursuant to paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
The decision is issued within the time limit fixed by August 6, 2002.
4. Factual Background
The following facts have not been contested:
a) The Complainant MISSONI S.p.a. is a company in the fashion field, well known throughout the world. The Complainant gives evidence that it is the owner of numerous national, international and community trade marks "MISSONI", at Annex 1 to the Complaint are set out copies of the Complainant's trade mark certificates for the mark "MISSONI". One of these trade marks is a Korean national trade mark number 179974 in class 27, registered in September 27, 1989.
b) The Complainant owns the domain name <missoni.it> which was registered on January 1, 1999, and has been used by the Complainant since on or about that date for its official Website. It has also registered several country code and generic top level domain names, all mentioned in Annex 7, such as <missoni.com> on October 31, 2000, and <missoni.org> on August 3, 2000.
c) The Complainant exhibits a series of articles written in Italian, Japanese, German which refer to the advertising relating to the Complainantís trade marks. The Complainant also provides the copy of an affidavit attesting international renown of the MISSONI family of trade marks (Annex 5) and the fact that its goods are marketed and distributed in almost every country (Exhibit 1/E).
d) Printouts of websites characterized by erotic and pornographic contents to which users of the address <missoni.net> were redirected dated December 3, 2001, are exhibited at Annex 15 to the Complaint.
e) Printouts of websites characterized by erotic and pornographic contents to which users of the address <missoni.net> are redirected dated May 9, 2002, are exhibited at Annex 16 to the Complaint.
5. Partiesí Contentions
The Complainant states that the contested domain name is identical to the trade marks of the Complainant. This reproduction may be confusing.
The Complainant points out that MISSONI S.p.a.ís trade marks, which are also its trade name are, both internationally and nationally, and immediately refer to its company.
The Respondent has no right or legitimate interest in respect of the domain name litigious.
The domain name has been registered and used in bad faith. The site accessible with the domain name subject to the complaint leads to a website offering domain names for sale and posting advertisements of other web businesses such as pornographic, erotic and gambling sites.
Consequently, the Complainant concludes that the domain name litigious was registered exclusively with the intention of impeding the Complainant's ownership of it.
The Respondent did not file any Response to the Complaint and was notified of his default on July 17, 2002, without any later reaction.
The Respondent has not adduced any evidence to the contrary. Accordingly the Panel is prepared to accept the Complainant's evidence of its trade mark rights.
6. Discussion and findings
Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".
Paragraph 4(a) of the Policy states that, for a Complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trade marks or service marks in which the Complainant has rights; and,
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
1. Identity or Similarity
The prior trade marks of the Complainant "MISSONI" are identical to the domain name <missoni.net>. The addition of the gTLD ".net" would not affect the attractive power of the word MISSONI. Indeed, it does not confer to the whole a new meaning involving the absence of risk of confusion with the trade marks "MISSONI".
The registration of the domain name at issue could be considered as an infringement of the trade marks belonging to the Complainant.
The Panel finds that there is an inevitable high risk of confusion between the Respondent's domain name <missoni.net> and the Complainant's trade marks "MISSONI".
2. Rights or Legitimate Interests of the Respondent in respect of the Domain Name <missoni.net>
The Respondent has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trade marks or to apply any domain name incorporating the trade marks. Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy.
By not submitting a Response, the Respondent has failed to demonstrate that he has rights or legitimate interest in the domain name.
Furthermore, the Complainant submits that there is no license, consent or other rights by which the Respondent is entitled to register or use the domain name incorporating the mark "MISSONI". It points out that the Complainant has prior rights in the trade marks "MISSONI" which precede by many years the Respondent's registration of the domain name. The Panel accepts this evidence and finds that the Respondent has no legitimate interest in respect of the domain name <missoni.net>.
Thus, the Panel concludes that the Respondent had no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well known trade mark of a third party.
3. Registration and Use in Bad Faith
The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith.
The bad faith of the Respondent is established by the following elements:
(a) The Respondent has no prior right and no authorization given by the Complainant concerning the trade marks "MISSONI".
(b) The notoriety of the Complainant of its trade marks "MISSONI".
(c) The Respondent's intention to create a likelihood of confusion with the Complainant's trade marks.
Having considered the evidence referred to above, the Panel accepts the evidence of the Complainant that it is a well known fashion company and that the trade marks "MISSONI" are used in Korea and all over the world to designate the Complainant especially in the fashion press.
Given that the Complainantís trade marks have become internationally well-known, through massive advertising and the quality level of the products they designates, the Respondent could not have been unaware of the Complainantís trade marks. The Respondent knew of Complainant and its trade marks when he registered the domain name <missoni.net>.
It also points out that by knowingly choosing a domain name consisting of the Complainantís trade marks, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
The domain name <missoni.net> was also registered to create a likelihood of confusion with MISSONI S.p.a.ís trade marks as to the source, sponsorship, affiliation or endorsement on the website or of a product.
Furthermore, the Respondent has failed, since the registration of the domain name <missoni.net>, to make any commercial use of the website for any purpose: when calling the website "http://www.missoni.net", the user is sent to a different website offering domain names for sale and posting advertisements of other web businesses such as pornographic, erotic and gambling sites (Annex 16). The registration of the domain name <missoni.net> by the Respondent creates confusion and damages to MISSONI S.p.a.ís business and image, while capitalizing upon the Complainantís property rights and diminishing the value of the Complainantís trade marks.
The Panel accepts these submissions and finds that the Complainant has established that the domain name has been registered and used in bad faith.
It follows that the Complainant has succeeded in each of the elements set out in paragraph 4(a) of the Policy.
The Panel decides, based on its finding that the Respondent in default has engaged in abusive registration of the domain name <missoni.net> for the foregoing reasons:
(a) that the domain name registered by the Respondent is identical to the trade marks in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondentís domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has succeeded in its case. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name <missoni.net> be transferred from the Respondent to the Complainant.
Dated: August 6, 2002