WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Zhao Ke
Case No. D2011-1768
1. The Parties
The Complainant is Missoni S.p.A. of Sumirago, VA, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Zhao Ke of China.
2. The Domain Name and Registrar
The disputed domain name <hotelmissoni.net> is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2011. On October 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 20, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 21, 2011, the Complainant confirmed its request that English be the language of the proceeding. On October 22, 2011, the Respondent has objected the Complainant’s request and requested Chinese be the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the procedural update to both parties on November 14, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on November 23, 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.
Language of Proceedings
The Complainant requested that English be the language of proceedings on the following grounds:
(a) the Registrar of the disputed domain name supports the English and Chinese languages;
(b) from emails sent by the Respondent it appears the Respondent is familiar in English;
(c) the Complainant is not familiar with the Chinese language which will create difficulties; and
(d) the Respondent has not in the past in other cases objected to English being the language of proceedings.
The Respondent replied to this request with a short email stating in Chinese:
Please in accordance with ICAAN Rules, use the language used by the registration agreement, that is Chinese.
This panel does not consider that grounds (a) or (d) cited by the Complainant are relevant for determining the language of proceedings. Ground (a) relates to the Registrar and not the registrant. Ground (d) relates to other cases and, in any event, does not show the Respondent has a familiarity with English.
In its Language of Proceedings request, the emails relied upon by the Complainant as evidence of the Respondent’s familiarity with English (Annex 2 to the Complaint) were not sent from the registrant’s registered email address “[…]@gmail.com” but from “[…]@yeah.net”. The initial email (in English) was an unsolicited offer to sell the disputed domain name from Cindy at “[…]@yeah.net” addressed to Egontek, the internet service provider of the Complainant. Egontek in reply asked for verification that they were the seller. Cindy at “[…]@yeah.net” replied (in English) that they were the disputed domain name owner and said that the disputed domain name was for sale for USD 8,200 and could be purchased through Sedo.com. On the webpage which the disputed domain name currently resolves to, which is a parking page the disputed domain name is also listed as being for sale with Sedo.com as the agent for sale of the disputed domain name. Sedo.com also offers parking page services while the disputed domain name is pending sale.
The Panel is satisfied, however, that the Respondent is familiar with English and does business in English. As is set out below in the decision on merits, it is clear to the Panel that the disputed domain name has been registered in bad faith and this is a clear case of domain name hijacking. The Respondent has not given any reason to support its request that the language of the proceedings be in Chinese, nor has it filed a response to the complaint. Its unsupported request for Chinese to be used, particular given its subsequent default, is not enough to outweigh the other factors favouring using English as the language of proceedings.
In the circumstances, the Panel determines that English shall be the language of proceedings in this case.
4. Factual Background
The Complainant is Missoni S.p.A. of Italy which is a fashion company that has been in business for many years. It first filed for the trademark MISSONI in 1990 and has had a registration in China since May 1990.
It has also obtained a WIPO registration of the trademark HOTEL MISSONI in 2008.
The Complainant also has registered the domain names <missoni.com> and <hotelmissoni.com> as well as numerous other domain names.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant submits that the disputed domain name <hotelmissoni.net> is identical or confusingly similar to its registered trademarks MISSONI and HOTEL MISSONI and to, amongst others, its domain name <hotelmissoni.com>.
In relation to the trademark MISSONI , it submits that the addition of a descriptive word “hotel” is not sufficient to avoid confusion.
No rights or legitimate interests
The Complainant submits the Respondent has no rights and legitimate interests in the disputed domain name on the following grounds: (a) the Complainant has never licensed the Respondent; (b) the use of the Complainant’s entire mark in the disputed domain name makes it difficult to infer legitimate use; (c) the Respondent has no trademark registrations for the Missoni brand; (d) the disputed domain name resolves to a parking page; (e) the disputed domain name is for sale for USD 8,200; (f) there has been no bona fide use of the disputed domain name; and, (g) the Respondent has never been known as Missoni.
Registered and Used in Bad Faith
The Complainant submits the disputed domain name was registered and has been used in bad faith on, amongst others, the following grounds: (a) the MISSONI brand is well-known as has been confirmed by numerous UDRP decisions; (b) the Respondent has been involved in two proceedings were it abusively registered domain names, namely, <victoriasecretbikinis.com>, see Victoria Secret’s Stores Brand Management Inc, v Zhao Ke, NAF Claim No. FA1106001392705, and <morganstanleyhedgefunds.com>, see Morgan Stanley v Ke Zhao, NAF Claim No. FA1004001317816; (c) the Respondent appears to have registered more than 800 domain names, including domain names of famous brands, including <airfrance-usa.com>, <armanichildren.com> and <expedia-usa.com>; (d) the disputed domain name has been offered for sale for USD 8,200; and, (e) the disputed domain name resolves to a parking page with sponsored links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a very simple case of domain name hijacking that the UDRP was designed to prevent. Accordingly, the panel will make short findings as set out below.
A. Identical or Similar
The disputed domain name <hotelmissoni.net> is identical to the Complainant’s registered trademark HOTEL MISSONI which is registered for hotel services and its domain name <hotelmissoni.com>. It is similar to the registered trademark MISSONI. The addition of a descriptive word “hotel” does not change the meaning.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the disputed domain name to resolve to a parking page and the offer to sell the disputed domain name for USD 8,200 make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <hotelmissoni.net> was registered in bad faith and is being used in bad faith.
Most importantly, this case clearly falls with paragraph 4(b)(i) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where there are:
circumstances indicating that you have registered or you have 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 service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The disputed domain name was offered for sale for USD 8,200. This is clearly in excess of the normal cost for registering and maintaining a domain name.
For 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 <hotelmissoni.net> be transferred to the Complainant.
Dated: December 5, 2011