WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Nurinet
Case No. D2010-1068
1. The Parties
The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Nurinet of Gyeongju-si, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <missonicollection.com> is registered with Netpia.com. Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2010. On June 29, 2010, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the disputed domain name. On June 30, 2010, Netpia.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” 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”).
On July 2, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding on July 5, 2010. The Respondent did not respond to the Center’s Language of Proceeding notification. On July 9, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 2, 2010.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on August 11, 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 a well-known Italian entity, whose primary business is in the fashion industry. The Complainant has been conducting business under its MISSONI brand for over 40 years, and its fashion and luxury products are available worldwide. The Complainant owns trademark registrations for the mark MISSONI throughout the world, including in the Republic of Korea (“Korea”) where registration was first obtained in 1987.
The Respondent appears to be an individual (apparently using NURINET as an ID) who resides in Korea.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights. More specifically, the Complainant asserts that it has registrations in various countries throughout the world for the term MISSONI, including Korea, and that the disputed domain name is nearly identical and confusingly similar thereto.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant notes that the Respondent has made no bona fide use of the domain name. Rather, the disputed domain name is connected with a domain name parking service and expressly states on its homepage that the domain name is available for sale. Further, the MISSONI mark has been recognized as a well-known trademark in Korea, and so the Respondent must have known of the Complainant and its trademark when the Respondent obtained the registration. Additionally, the Respondent appears to have a history of bad faith registration and use of domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
Paragraph 11 (a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the default language of the proceeding is Korean, and the Complainant submitted arguments as to why English is more appropriate, citing a number of factors.
First, the Panel notes that English is not the mother language of either party. Given the fact that the Complainant is Italian and the Respondent is Korean, English would appear to be the fairest neutral language for rendering this decision. Besides, both parties were given the opportunity to submit arguments regarding the language of their preference, and the language in which to render the decision was reserved for the Panel in accordance with paragraph 11 of the Rules. Furthermore, the Panel notes that all of the Center’s communications have been transmitted to the parties in both English and Korean. Given that the Respondent has chosen to not participate in this proceeding, the Panel sees no justification for rendering the decision in Korean in view of the overall circumstances.
Therefore, the Panel finds it proper and fair to render this decision in English.
A. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds many trademark registrations throughout the world, including Korea, that consist solely or primarily of the term MISSONI. The disputed domain name <missonicolleciton.com> entirely incorporates the Complainant’s trademark MISSONI and merely adds the term “collection”. The addition of a generic term does not dispel a likelihood of confusion. Further, the generic term in this case is “collection” – a term that is commonly used in connection with a fashion brand. Thus, it is clear that the disputed domain name is at least confusingly similar to the Complainant’s trademark for MISSONI.
For the reasons mentioned above, the Panel finds that the first element has been established.
B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie finding that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. After all, the Respondent is in the best position to offer such evidence if it were to exist. However, the Respondent in this case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
C. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith on the part of the Respondent in this case. First, it cannot be disputed that the MISSONI trademark, which was first registered long before the registration date of the disputed domain name, is well-known in Korea. As the Complainant asserted and supported with evidence, the MISSONI trademark has been recognized as a widely known trademark in Korea by the Korean Intellectual Property Office. Therefore, it is highly unlikely that the Respondent innocently obtained the disputed domain name in good faith and without knowledge of the Complainant’s rights. Second, the disputed domain name is linked with a domain name parking service which contains pay-per-click links targeted at the fashion industry, and there is no evidence of any history of bona fide use or related preparations on behalf of the Respondent. Rather, there is a message indicating that the disputed domain name is available for sale. Third, the Respondent is apparently the owner of several thousand domain names, including some that incorporate other famous third-party trademarks (e.g., <nikecity.com>, <iphoneexpert.com>, <sonyshops.com>, <yahoofun.com> and <youtubewiki.com>). The Respondent also appears to have been involved in prior WIPO UDRP proceedings in which there were findings of the Respondent’s bad faith. (See L’AIR LIQUIDE Société anonyme pour l’Etude et l’Exploitation des Procédés Georges Claude v. NURINET, WIPO Case No. D2010-0122; Repsol Butano, SA v. NURINET, WIPO Case No. D2009-1636) Given these circumstances, there is little doubt that the Respondent was well aware of the Complainant and its rights, and thus registered and used the disputed domain name in bad faith.
For the reasons given above, the Panel finds that the third and final element has been sufficiently established.
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 <missonicollection.com> be transferred to the Complainant.
Dated: September 6, 2010