WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Ahmed Salman
Case No. D2007-1485
1. The Parties
The Complainant is Missoni S.p.A., Varese, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Ahmed Salman, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <hotelmissoni.com> is registered with Go Daddy.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2007. On October 12, 2007, the Center transmitted by email to Go Daddy.com Inc. a request for registrar verification in connection with the domain name at issue. On October 12, 2007, Go Daddy.com 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”), 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 October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on November 19, 2007. 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 fashion house of the designer Ottavio Missoni. It holds, inter alia, the following trademarks:
- the Italian MISSONI device mark of May 15, 1971 (no. 887295), registered for goods and services in class 25;
- the Community MISSONI word mark of October 2, 2000 (no. 1164987), registered for goods and services in classes 18, 24 and 25;
- the international MISSONI device mark of January 30, 2006 (no. 883773), registered in class 43 for, inter alia, “hotels”;
- the Canadian MISSONI device mark of March 31, 1983 (no. TMA278270), registered for goods in class 1.
Furthermore, the Complainant holds a long list of domain names containing the MISSONI trademark, which includes:
The Domain Name was registered on July 31, 2007. The Domain Name leads to a page that displays the text “This domain is for sale” and a contact-sheet where one can leave its name, e-mail address and a message.
5. Parties’ Contentions
The Complainant has put forward the argument that the addition of the generic term “hotel” is insufficient to avoid confusion between the Domain Name and the MISSONI trademark.
The Complainant has asserted that:
a) no agreements, authorisations or licenses have been granted to the Respondent to use its trademark, trade name or company name;
b) since the Domain Name is almost identical to its MISSONI trademark, it is difficult to infer a legitimate use thereof by the Respondent.
c) there is no evidence that the Respondent has trademarks or company activities registered under the MISSONI brand;
d) the Respondent has only placed the words: “this domain name is for sale” on the website linked to the Domain Name;
e) since the registration of the Domain Name the Respondent has never made any bona fide use thereof;
f) the Respondent has never been known under the MISSONI name.
Consequently, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has claimed that the MISSONI trademarks are worldwide renowned. The MISSONI trademark has been registered for hotel services. The Complainant has published company information on the Internet via its website at “missoni.it” since the year 2000. Taking all this into account, the Complainant is of the opinion that it may reasonably be assumed that the Respondent knew of the Complainant and its trademarks when registering the Domain Name.
Furthermore, the Complainant has stated that no plausible explanation exists as to why the Respondent has selected the Domain Name other than to trade on the goodwill of the Complainant’s trademark. According to the Complainant this is shown by the fact that the Respondent offers the Domain Name for sale and has requested the Complainant USD 50,000 and USD 24,500 for the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several MISSONI trademark registrations. The Panelist finds that the Complainant has rights in the MISSONI trademarks.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the MISSONI trademarks in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component. The difference between the MISSONI trademarks and the Domain Name is the addition of the word “hotel” at the beginning. The word “hotel” is descriptive of services that the MISSONI trademark has been registered for and the Complainant holds the domain names <missonihotel.it>, <missonihotels.it>, <missonihotel.com> and <missonihotels.com>. The Panel is of the opinion that the addition of the word “hotel” does not reduce the likelihood of confusion. As a result the Panel considers the Domain Name <hotelmissoni.com> to be confusingly similar to the Complainant’s MISSONI trademarks.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the Complainant should prove that the Respondent has no right or legitimate interest in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show rights or legitimate interests.
The Complainant has contended that it has not authorized the Respondent to use its trademarks and the Respondent has not disputed the Complainant’s claim to that effect. Nor could the Panel establish any indications that the Respondent was previously known under the Domain Name or is using the Domain Name for bona fide offering of goods or services, or for non-commercial or fair use. For these reasons, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant has asserted that the MISSONI trademark is renowned worldwide. This has been acknowledged by other Panels in Missoni S.p.A. v. Caribbean Online International Ltd., WIPO Case No. D2007-0885 and Missoni S.p.A. v. BigDoggie.com and Taeho Kim, WIPO Case No. D2002-0545. The Domain Name is composed of the distinctive Italian family name “missoni”, which is identical to the MISSONI trademarks of the Complainant, and the descriptive word “hotel”. For these reasons, in accordance with ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, the Panel finds it reasonable to conclude that only someone who was familiar with the MISSONI trademarks could have registered the Domain Name. Consequently, the Panel finds that the Domain Name was registered in bad faith.
The Complainant must also prove that the Respondent uses the Domain Name in bad faith. In accordance with paragraph 4(b)(i) of the Policy, an indication of use in bad faith is if circumstances indicate that the Respondent has registered or has 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 to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
The Respondent offered the Domain Name for sale and requested the Complainant payments of USD 50,000 and USD 24,500 for the Domain Name. Taking these circumstances into consideration, the Panel concludes that the Respondent’s holding of the Domain Name sufficiently satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is also being used in bad faith.
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, <hotelmissoni.com> be transferred to the Complainant.
Dated: December 3, 2007