WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Li Ye
Case No. D2011-1924
1. The Parties
Complainant is Missoni S.p.A., Sumlrago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Li Ye, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <hotelmissoni.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 4, 2011, the Center transmitted by email to GoDaddy.com, Inc.
a request for registrar verification in connection with the disputed domain name. On November 4, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2011.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 4, 2012. 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.
The languages supported by the Registrar are English and Chinese. Complainant submitted the Complaint in English and requested English to be the language of the proceeding.
The Registrar confirmed that the language of the registration agreement is English.
Therefore, the language of the proceeding is English, pursuant to the Rules, paragraph 11.
4. Factual Background
Complainant is an Italian fashion company. Complainant has established prior rights in the registered trademark MISSONI by appending evidence of international registrations MISSONI No 720019, No 586554 protected in China, Community trademark No 001164987 and United States trademark registration No. 73007314.
As to the trademark of Complainant in Italy, the first filing for MISSONI dates back to September 2, 1969, in the United States, the MISSONI trademark has been registered since December 23, 1975.
Complainant also based its complaint on the international registration HOTEL MISSONI No 984104 registered on August 5, 2008 and on the Community trademark HOTEL MISSONI No 0984104, registered on December 11, 2008, both protected in Class 43 for “services for providing food and drink; temporary accommodation (services on behalf of third parties)” .
Complainant claims to be the registrant of numerous domain names composed with “Missoni” or “Hotelmissoni”.
The disputed domain name <hotelmissoni.info> has been registered on June 9, 2011 and is being used for a parking website.
5. Parties’ Contentions
A.1. The domain name is confusingly similar to several trademarks in which Complainant has rights
The disputed domain name <hotelmissoni.info> can be considered identical to the trademark HOTEL MISSONI and confusingly similar to the trademark MISSONI rightfully registered by Complainant. The disputed domain name <hotelmissoni.info> integrates the trademark MISSONI in its entirety with a description of the nature of the service provided, that is “hotel” as a prefix. The mere addition of a descriptive term to an identical trademark has been repeatedly held in previous panels as not sufficient to avoid confusion between the domain name and the trademark. This is especially true considering that, for several years it has been quite common for trademarks particularly renowned in the fashion field to use their trademarks (directly or through licenses) also for hotels and related services.
It is then more than likely that consumers will be led to think of <hotelmissoni.info> as Complainant’s domain name for a hotel chain linked to Missoni.
Complainant finds support in Missoni S.p.A. v. Ahmed Salman, WIPO Case D2007-1485 (<hotelmissoni.com>), where the panel’s finding was “The difference between the MISSONI trademarks and the Domain Name is the addition of the word “hotel” at the beginning. The word “hotel” is descriptive of services that the MISSONI trademark has been registered for and the Complainant holds the domain names <missonihotel.it>, <missonihotels.it>, <missonihotel.com> and <missonihotels.com>. The Panel is of the opinion that the addition of the word “hotel” does not reduce the likelihood of confusion. As a result the Panel considers the Domain Name <hotelmissoni.com> to be confusingly similar to the Complainant’s MISSONI trademarks”.
A.2. The Respondent has no rights or legitimate interests in respect of the domain name
Complainant asserts that no agreements, authorizations or licenses have been granted to Respondent to use Complainant’s trademarks, trade name and Company name, that there is no evidence that Respondent has trademarks or company activities registered under the MISSONI and/or HOTELMISSONI brands and that he has never been known under “Hotel Missoni”.
The website “www.hotelmissoni.info” presents solely a page containing exclusively sponsored links and the ad “Il dominio hotelmissoni.info è in vendita!” (The domain name hotelmissoni.info is for sale!). According to Complainant, Respondent is selling the domain name for EUR 6.200. Since the registration of the disputed domain name, Respondent has never made any bona fide use of this domain name.
A.3. The domain name was both registered and used in bad faith
The MISSONI trademarks are worldwide renowned marks. This has been acknowledged by other WIPO UDRP panels in many decisions some of them are here below reported.
Complainant started to publish company information via Internet through its official website at the URL “www.missoni.it” in the year 2000.
Complainant has registered numerous domain names corresponding to and or comprising its trademarks MISSONI and HOTEL MISSONI.
Respondent appears to have already been involved in at least the following proceedings for having abusively registered the related domain names: Morgan Stanley v. Li Ye, NAF Claim No. 1328819 (<morganstanleyhedgefund.com>); American Life Insurance Company v. Ye Li c/o Dynadot Privacyand, NAF Claim No. 1354354 (<metlife-alico.com>), The Royal Bank of Scotland Group plc v. Li Y,e NAF Claim No. 1378750 (<rbsbank.info>).
Respondent appears to have registered hundreds of domain names, some of them corresponding to and/or containing renowned trademarks belonging to third parties, such as: <abercrombiekid.com>, <cesarepaciotti.info>, <chaneln5.info>, <dolce-gabbana.co>.
Respondent has offered the domain name <hotelmissoni.info> for sale for EUR 6.200 on the parking platform of Sedo.inc.
In view of all the above, it is highly unlikely that Respondent registered the disputed domain name without knowledge of the HOTEL MISSONI and MISSONI trademarks.
Actual knowledge of Complainant’s rights on the trademark is a factor that has been repeatedly considered in previous UDRP decisions as supporting bad faith.
Regarding whether the domain name was registered primarily for the purpose of disrupting the business of a competitor, it is confirmed that Complainant 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.
As regards to Respondent’s use of the disputed domain name, the website “www.hotelmissoni.info” presents solely a page containing exclusively sponsored links and the advertise “Il dominio hotelmissoni.info è in vendita!” (The domain name hotelmissoni.info is for sale!).
MISSONI trademarks are worldwide renowned trademarks. Complainant has established that Respondent has engaged in a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name.
Complainant alleges that Respondent’s main purpose is to sell domain names and that is shown by the fact that the domain names: <cesarepaciotti.info>, <chaneln5.info>, <dolce-gabbana.co> and <hotelmissoni.info> are all presented for sale.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The disputed domain name incorporates the distinctive trademark MISSONI and merely adds the descriptive terms “hotel”. Since Complainant has rights on the trademarks MISSONI and HOTEL MISSONI, Panel finds that the disputed domain name is confusingly similar to the trademark MISSONI and identical to the trademark HOTEL MISSONI. The Panel finds that the condition of the paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent does not make a bona fide offering of goods and services under the disputed domain name and has not been commonly known under the disputed domain name.
Respondent has no connection of affiliation with Complainant, and the latter asserts it has not consented to Respondent’s use of the trademark in the disputed domain name.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has 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; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on your web site or location.
The MISSONI trademark enjoys worldwide reputation for fashion.
In view of the reputation of the trademark MISSONI and of the activity developed under the trademark HOTEL MISSONI, the Panel is of the opinion that Respondent must have been aware that the disputed domain name is identical to the protected trademarks HOTEL MISSONI and confusingly similar to the protected trademarks MISSONI of Complainant.
Registering a domain name, offering it for sale and using it for parking services presenting relevant links in order to generate Pay-per-click (PPC) revenues is a popular and common domain name monetization tactic.
According to the provided screenshot of the website “www.hotelmissoni.info”, the ads are targeting Complainant’s customers, either for fashion or for hotels.
Respondent’s tactic is based on the registration of a domain name and on the use thereof, which is identical or confusingly similar to worldwide trademarks.
The Panel finds that the disputed domain name was registered intentionally primarily for the purpose of selling it and with the objective of financial gain, both through the sale of the disputed domain name and through the pay per click landing pages.
The Panel finds also that the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, since Respondent has engaged in a pattern of such conduct.
This constitutes bad faith registration of the disputed domain name in application of paragraph 4(b)(i) and (ii) of the Policy.
Respondent appears to use the disputed domain name to intentionally attempt to divert Internet traffic to its website by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith registration and use of the disputed domain name in application of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that Complainant has established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) 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 <hotelmissoni.info> be transferred to Complainant.
Dated: January 18, 2012