WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. T.N.T. TerrificNTerry Inc.
Case No. DWS2008-0003
1. The Parties
The Complainant is Missoni S.p.A., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is T.N.T. TerrificNTerry Inc. of Canada.
2. The Domain Name and Registrar
The disputed domain name <missoni.ws> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 23, 2008, GoDaddy.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 May 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed Adam Taylor as the sole panelist in this matter on June 5, 2008. 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 company which has been trading worldwide under the mark MISSONI for many years. The mark is derived from the name of the designer Ottavio Missoni.
The Complainant owns a worldwide portfolio of registered trademarks for MISSONI including Italian trademark number 0000887295 dated September 2, 1969, in class 25, Canadian trademark TMA403492 dated September 26,1990, for clothing and other goods and Community Trademark 001164987 dated May 7, 1999, in classes 18, 24 and 25.
The Complainant has operated its own website at “www.missoni.it” since 2000.
The Respondent registered the disputed domain name on September 21, 2007.
As of April 11, 2008, the disputed domain name resolved to a GoDaddy parking page with links to fashion-related websites.
The Respondent has been found to have acted in bad faith in at least the following UDRP cases: Etro S.p.A, v. T.N.T. TerrificNTerry Inc, WIPO Case No. D2007-1080, Diners Club International Ltd. v. Luba Benson aka T.N.T. TerrificNTerry Inc., NAF Case No. 861598 and Enterprise Rent-A-Car Company v. Luba Benson c/o T.N.T. TerrificNTerry Inc., NAF Case No. 980709.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that the disputed domain name is identical to the well-known trademark MISSONI. The only difference is the domain name suffix.
The disputed domain name incorporates the trademark in its entirety.
Rights or Legitimate Interests
The Complainant contends that no licenses have been granted to the Respondent to use Complainant’s trademark.
It is difficult to conceive of a legitimate use of the disputed domain name, which is identical to Complainant’s entire mark.
There is no evidence that the Respondent has any trademarks registered for MISSONI.
The website at the disputed domain name consists of a list of sponsored links, including links to competitors of the Complainant.
The Respondent has never made any bona fide use of the domain name.
The Respondent has never been known by the MISSONI name.
All the above demonstrates, the Complainant submits, that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registered and Used in Bad Faith
The Complainant asserts that the Respondent knew of the Complainant’s business and trademarks when registering the disputed domain name. The MISSONI trademarks are worldwide renowned marks. The Respondent registered and used other domain names corresponding to well known trademarks such as ETRO and DINERS CLUB. According to the Respondent’s website at “www.terrificterry.net”, Ms. Benson, the administrative contact for the disputed domain name, is a designer with her own collection, the “Terrry Cloth Collection”.
The fact that the Respondent, despite having actual knowledge of the Complainant and its trademark, proceeded to register the disputed domain name demonstrates the Respondent’s bad faith.
The Complainant’s business is being disrupted by the use of the disputed domain name which is misleading Internet users and creating a likelihood of confusion with Complainant’s trademark.
The use of the Complainant’s mark in the disputed domain name makes it difficult to conceive of a legitimate use of the name by the Respondent. There is no plausible explanation as to why the Respondent selected the disputed domain name other than to trade on the goodwill of the Complainant’s famous MISSONI trademark.
The disputed domain name is merely used to advertise sponsored links.
The Respondent has been involved in at least three UDRP cases in which was found to have registered and used the domain names in bad faith.
Finally, the Complainant submits that in recent years the MISSONI trademarks have been used for spa-related services such as massages, body and facial therapies, and hair and nail care services. The Respondent’s products include specially designed robes for spas. The Respondent is clearly trying to use the Complainant’s well-known trademark to benefit its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established trademark rights in MISSONI by virtue of its many registered trademarks as well as its extensive worldwide trading activities under that name.
The disputed domain name is identical to the Complainant’s trademark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant in mind. The disputed domain name consists of the Complainant’s distinctive mark MISSONI. The Respondent appears to operate in the fashion business and in the Panel’s view it is inconceivable that it was unaware of the Complainant when it registered the disputed domain name. Also, the Respondent has been found to have registered and used domain names in bad faith in a number of other UDRP cases including in relation to “ETRO”, another Italian fashion brand.
Furthermore the disputed domain name has been used for a parking page with affiliate links to fashion related websites.
The fact that the parking page was provided by the registrar of the disputed domain name does not absolve the Respondent. See, eg, Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267 where the Panel stated:
“The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name. It would have been aware that the ‘parking company’ website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant’s name, it should have been of no surprise to the Respondent that links to prescription and pharmaceutical website would be generated.”
Nor is it relevant whether or not the Respondent has itself derived financial gain from the parking page. UDRP panels have held that paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from the diversion. See, eg, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857 (invoking Express Scripts Inc, supra) where the Panel said:
“The sponsored links appearing on the various websites to which the Domain Names resolve, have presumably not been provided for nothing. Someone has derived commercial gain from the advertising benefits provided by these links. On the authority of the Express Scripts Inc. case, it does not matter if that was someone other than the Respondent.”
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.
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 <missoni.ws> be transferred to the Complainant.
Dated: June 19, 2008.