WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Jonathan Downey
Case No. D2011-0855
1. The Parties
Complainant is Missoni S.p.A. of Sumirago, Varese, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Jonathan Downey of Elkton, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <missoniscarf.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 18, 2011. On May 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 19, 2011, 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” 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 Respondent of the Complaint, and the proceedings commenced on May 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on June 20, 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
In addition to other applications and registrations, Complainant is the owner of the following trademark registrations:
MISSONI, Italy, Reg. No. 0000251701, registered on May 15, 1971
MISSONI, United States of America, Reg. No. 73007315, registered on December 23, 1975
Complainant’s related official website is “www.missoni.com“. In addition, Complainant has registered quite a number of country and generic domain names corresponding to its trademarks including:
<missoni.asia>, <missoni.biz>, <missoni.ca>, <missoni.cc>, <missoni.co>, <missoni.co.uk>, <missoni.com>, <missoni.com.au>, <missoni.com.br>, <missoni.com.cn>, <missoni.com.es>, <missoni.com.mx>, <missoni.com.sg>, <missoni.eu>, <missoni.gr>, <missoni.hk>, <missoni.in>, <missoni.info>, <missoni.it>, <missoni.jp>, <missoni.mx>, <missoni.net>, <missoni.org>, <missoni.org.cn>, <missoni.se>, <missoni.sg>, <missoni.tel>, <missoni.us>, <missoni.ws>, <missonibags.com>, <missoniclothing.com>, <missonicollection.com>, <missonicollection.eu>, <missonicollection.it>, <missonidonna.com>, <missonifashion.com>, <missonikids.com>, <missonikids.eu>, <missonishoes.com>, <missoniuomo.com>, <missoniuomo.eu>
Complainant is a leading company in the fashion field, as is proven by the fact that its goods are marketed and promoted in almost every country.
As a consequence, the trademark, the trade name and the family name of the designer (Mr. Ottavio Missoni) are well-known throughout the entire world, also considering that these have been extensively used by the Complainant for many years.
5. Parties’ Contentions
Complainant alleges that the disputed domain name can be considered confusingly similar to Complainant’s renowned mark MISSONI and is also confusingly similar to Complainant’s company name MISSONI S.p.A and to Complainant’s domain names <missoni.com>, <missoni.it> and <missoni.eu>. Complainant argues that the only difference between the disputed domain name and Complainant’s trademark consists in the addition of the generic term “scarf” and of the Top Level Domain “.info”.
Complainant alleges that the addition of the generic term “scarf” to Complainant’s trademark i.e. coupling the renowned trademark MISSONI with a term indicating some of the products offered by MISSONI, namely scarves, increases confusion in the public misleading the consumers into believing that the disputed domain name, the related web site and the goods eventually offered, might be legitimate, original, authorized and/or linked to Complainant.
Therefore, it is Complainant’s opinion that the addition of the generic term is not sufficient to avoid confusion but, on the contrary, it increases the confusion.
Complainant asserts that no agreements, authorizations or licenses have been granted to Respondent to use Complainant’s trademark, trade name and company name.
Complainant informs that the use of the disputed domain name containing Complainant’s entire mark makes it difficult to infer a legitimate use of the disputed domain name by Respondent.
Complainant argues that there is no evidence that Respondent has trademark or company activities registered under the MISSONI brand.
Complainant also argues that appearing on the “www.missoniscarf.info” page there is an automatic message indicating that the web site is void, i.e. without contents.
Complainant informs that since registration of the disputed domain name, Respondent has never made any bona fide use of the disputed domain name.
Complainant asserts that upon information and belief, Respondent has never been known under the MISSONI name.
Complainant alleges that all the above shows a lack of interest and of legitimate use of the disputed domain name. Complainant thus claims that Respondent has no rights or legitimate interests in respect of the disputed domain name according to the aspects mentioned within the Policy.
Complainant argues that there are reasons to believe that Respondent knew of Complainant’s activity and trademark when registering the disputed domain name. This belief is supported by the following fact:
- The MISSONI trademark is a worldwide renowned mark.
- Respondent appears to have registered other domain names containing renowned trademarks and names, coupling them with generic terms, such as: <2011mustang.us>, <playstation3ylod.info>, <ps3-yellow-light-fix.com>, <delonghitoaster.info> and <quoizellamps.info>.
- The fact that Respondent chose to register domain names containing renowned trademarks coupled with generic terms that describe the products and/or the services related to those trademarks, is further inference that Respondent knew of the third parties’ trademarks and products when registering the domain names. Therefore, Complainant further infers that it appears evident that Respondent, when registering the disputed domain name, knew the Complainant, its trademark MISSONI and that “scarves” are one of the items sold by Complainant under the trademark MISSONI.
Complainant also argues that in view of all the above, it is clear that Respondent registered the disputed domain name with full knowledge of the MISSONI trademark. Thus, the fact that Respondent, though having actual knowledge of Complainant and its trademark, proceeded to register the disputed domain name shows Respondent’s bad faith in registering the disputed domain name.
Complainant informs that it is being hindered and penalized by the use of the disputed domain name which is misleading Internet users and creating a likelihood of confusion with Complainant’s trademarks and domain names.
Complainant concludes summing up the arguments in favor of a transfer of the disputed domain name from Respondent to Missoni S.p.A.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has trademark rights over the expression MISSONI.
The Panel finds that Complainant’s registered MISSONI trademark is well-known in its field of activity and has a strong reputation in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainant’s MISSONI trademark, as well as the company name MISSONI S.p.A and to Complainant’s previously registered domain names. The only difference between Complainant’s registered trademark and the disputed domain name consists in the addition of the generic term “scarf” and of the Top Level Domain “.info”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademark. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant”). Moreover, the Panel finds that adding a generic expression such as “scarf” is likely to increase the possibility of confusion amongst consumers since this expression indicates one of the products offered by the Complainant, namely scarves.
The Panel finds that this similarity can mislead Internet users who search for Complainant’s products and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that appearing on “www.missoniscarf.info“ there is an automatic message indicating that the website is void, i.e. without contents.
So, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, a respondent has registered and used a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent’s website or other online location by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s site or of a product or service offered on respondent’s site.
In this case, the Panel finds that Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s well-known trademark MISSONI. At the time the disputed domain name was registered, it is unlikely that Respondent was not aware of Complainant’s rights in the trademark MISSONI.
Moreover, Respondent appears to have registered other domain names containing renowned trademarks and names, coupling them with generic terms, such as: <2011mustang.us>, <playstation3ylod.info>, <ps3-yellow-light-fix.com>, <delonghitoaster.info> and <quoizellamps.info>.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its MISSONI registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark when it registered the disputed domain name.
Respondent used Complainant’s well-known trademark to attract Internet users. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of this, the Panel finds Respondent registered and used the disputed domain name in bad faith. Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <missoniscarf.info> be transferred to Complainant.
Date: July 4, 2011.