WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Oneandone Private Registration/Sophia Kilgore
Case No. D2010-2223
1. The Parties
The Complainant is Missoni S.p.A. of Sumirago, Varese, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondents are Oneandone Private Registration of Chesterbrook, Pennsylvania, the United States of America (the “first Respondent”) and Sophia Kilgore of Palm Bay, Florida, the United States of America (the “second Respondent”).
2. The Domain Name and Registrar
The disputed domain name <missonihometowels.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2010. On that day, the Center transmitted by email to 1&1 Internet AG (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On December 22, 2010, 1&1 Internet AG. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 10, 2011.
The Center verified that the Complaint together with the amendment to the Complaint/amended 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 Respondents of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. Neither of the Respondents submitted any response. Accordingly, the Center notified the Respondents’ default on February 3, 2011.
The Center appointed William P. Knight as the sole panelist in this matter on February 14, 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 an Italian fashion company, whose principal place of business is in Sumirago, Varese, Italy. It (and its predecessor in title, its founder, Sr. Ottavio Missoni) has registered a number of trademarks incorporating the word “missoni”, in Italy and elsewhere in the world, including the United States, in respect of a wide variety of goods and services, including clothing, leathergoods, eyeglasses, household utensils, cosmetics, furnishing and other fabrics, including the trademarks MISSONI HOME and MISSONI HOME COLLECTION. The Complainant’s principal English-language website is “www.missoni.com”, although it has also registered a number of country and generic domain names corresponding to its trademarks, such as <missonihome.eu>, <missonihome.asia> and <missonihomecollection.com>.
The disputed domain name was registered on August 27, 2010. It presently resolves to “an Error 404” Message, which states that the document you requested is not found.”
5. Parties’ Contentions
The Complainant contends:
1. The disputed domain name is confusingly similar to trademarks in which the Complainant has rights, namely MISSONI, MISSONI HOME and MISSONI HOME COLLECTION.
2. The Respondents have no rights or legitimate interests in respect of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith.
The Complainant requests transfer of the disputed domain name.
Neither of the Respondents replied to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has the claimed trademark rights. The Panel further finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks, notably MISSONI HOME, as the only difference with this trademark is the addition of the generic word ”towels” at the end of the disputed domain name.
B. Rights or Legitimate Interests
The Complainant maintains that no licences or otherwise have been granted to allow the Complainant’s trademarks, trade name and company name to be used by the Respondents or either of them and this is not denied by the Respondents.
Given the international reputation and registration of the trademarks of the Complainant, it is difficult without any explanation from the Respondents or either of them to infer a legitimate use of the disputed domain name by the Respondents. The Respondents have provided no evidence that either of them has trademarks or company activities registered under “Missoni” or “Missoni Home Towels” and/or any other similar name and neither of the Respondents is known by the name “Missoni”.
Furthermore, the fact that no use appears to have been made of the disputed domain name since its registration strongly suggests that the Respondents have acquired the disputed domain name with no proper business or other interest in it.
In view of the above, the Panel finds that neither of the Respondents has any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The most difficult to prove of the requirements set out in paragraph 4(a) of the UDRP, in the absence of any use by the Respondent (especially over the relatively short period since registration as in this case) or any reply to the Complaint, is that the Respondent has registered and is using the disputed domain name in bad faith. It is virtually impossible for a complainant to establish the state of mind or intentions of an unknown and remote respondent.
It is the consensus of UDRP panels that lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions at http://www.wipo.int/amc/en/domains/search/overview/index.html#32, and the decisions there cited.
The Complainant contends that the Respondents registered the disputed domain name in bad faith, basing the allegation on the following:
1. The Respondents’ likely actual knowledge of the Complainant and its trademarks. This is because the MISSONI trademarks are numerous and internationally-recognised, over a period stretching from at least the 1970’s, whereas the disputed domain name was registered last year.
2. The Respondents have a pattern of registering domain names in bad faith, already having been involved in at a number of prior UDRP proceedings in which the domain names in its name have been transferred. By this claim, it would appear that the Complainant is referring to the first Respondent only, there being no evidence of prior UDRP proceedings involving the second Respondent.
The Panel does not accept the second of these grounds. It is clear that the first Respondent is a privacy registration service used by the second Respondent to conceal its identity, as a consequence of which it is not surprising that it has been involved in a number of UDRP decisions. This does not mean that its use by the second Respondent to register the disputed domain name is not registration in bad faith; the agent must be affected by the bad faith of its principal, if that be the case.
As for the second Respondent, the Panel finds that, on the scant information before it, it did register the disputed domain name in bad faith. It is possible to speculate as to many legitimate purposes for registering a domain name such as this, but it cannot be denied that the second Respondent must have likely known of the Complainant’s trademarks and reputation in the area of fabrics and furnishings, would appear to have no connection with the Complainant or otherwise with the name “Missoni”, concealed its identity at the time of registration of the disputed domain name, has made no apparent attempt to use the domain name in a proper way and has not responded to the allegations of the Complainant. Furthermore, the passive holding of the disputed domain name must be regarded as use in bad faith, on the consensus view of UDRP panels.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <missonihometowels.com> be transferred to the Complainant.
William P. Knight
Dated: February 22, 2011