World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missoni S.p.A. v. Amer Alkharabsheh

Case No. D2012-0078

1. The Parties

The Complainant is Missoni S.p.A. of Varese, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Amer Alkharabsheh of Amman, Jordan.

2. The Domain Name And Registrar

The disputed domain name <missonikuwait.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2012. On January 18, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 18, 2012, GoDaddy.com, LLC 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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2012.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on February 21, 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.

4. Factual Background

The Complainant is a leading Italian company in the fashion field utilizing the MISSONI trademark of the Complainant. The trademark has been extensively used by the company for many years and is consequently well known throughout the entire world. Accordingly, the Complainant has developed significant goodwill and reputation for its MISSONI trademark.

The first registration of the MISSONI trademark was in Italy dated September 2, 1969. In addition, the Complainant also has a number of international and community trademarks reflecting the MISSONI trademark.

The Complainant further registered a number of domain names incorporating the MISSONI trademark and websites associated with such domain names host, amongst other information, description of goods and services associated with the MISSONI trademark of the Complainant and further published company information.

The Respondent registered the disputed domain name on August 9, 2011.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain name <missonikuwait.com> can be considered confusingly similar to the MISSONI trademark of the Complainant. The disputed domain name is also confusingly similar to the Complainant’s company name “Missoni S.p.A” and to domain names owned by the Complainant, including but not limited to <missoni.com>, <missoni.it> and <missoni.eu>.

- The only difference between the MISSONI trademark of the Complainant and the disputed domain name <missonikuwait.com> is the addition of the geographic term “Kuwait” which is insufficient to avoid confusion between the MISSONI trademark of the Complainant and the disputed domain name.

- Further the addition of the suffix “.com” has to be disregarded as it is a necessary component of a domain name and thus irrelevant.

- Addition of the geographic term “Kuwait” to the Complainant’s trademark in the disputed domain name does not lessen the confusion, but in fact may increase it by misleading Internet users into thinking that the disputed domain name, the related website and goods that may be offered on it may be of legitimate, original or authorized nature and/or linked to the Complainant in any way. Since the Complainant has interests and does business in Kuwait (operating a hotel Salmiya-Kuwait), the inclusion of a geographic term “Kuwait” increases the likelihood of confusion.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant asserts that no agreements, authorizations or licenses have been granted to the Respondent for the use of the Complainant’s trademarks, trade names or Company name. It contends that the use of the entire MISSONI trademark of the Complainant in the disputed domain name makes it difficult to infer legitimate use of the disputed domain name by the Respondent.

- Upon information and belief of the Complainant, there is no evidence to show that the Respondent has trademarks or company activities registered under a “MISSONI” brand.

- Further, the disputed domain name is simply parked free – courtesy of the Registrar, GoDaddy.com, LLC, The Complainant asserts that upon its information and belief, since the registration of the disputed domain name, the Respondent has never made any bona fide use of the disputed domain name.

- The Complainant further asserts that based on its information and belief, the Respondent has never been known under the “missoni” name.

- All of the above shows lack of interest and legitimate use of the disputed domain name by the Respondent and leads to the conclusion that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith:

- The Complainant asserts that there are reasons to believe that the Respondent was aware of the Complainant’s activity and MISSONI trademark when registering the disputed domain name.

- MISSONI trademark of the Complainant is known worldwide and this is evidenced by numerous previous UDRP decisions.

- The Respondent appears to have registered other domain names containing renowned trademarks, such as <mercureabudhabi.com> and <movenpick-makkah.com> and others.

- The fact that the Respondent chose to register domain names containing renowned trademarks coupled with generic terms that describe the products and/or services related to those trademarks is further inference of the Respondent’s knowledge of the third party trademarks and services and/or products associated with them when registering the domain names. The Respondent also further targeted the domain names geographically by associating a trademark with a geographic indicator where the owner of the trademark is conducting business activity (Hotel Missoni in Salmiya – Kuwait; Hotel Mercure in Abu Dhabi and Hotel Movenpick in Makkah). It follows that the Respondent knew of the MISSONI trademark of the Complainant when registering the disputed domain name.

- The Complainant has been publishing company information via the Internet and through its websites since 2000.

- The Complainant has registered numerous domain names corresponding to and comprising the MISSONI trademark.

- Since the trademark of the Complainant is known worldwide, there are few possible explanations for incorporating it into the disputed domain name.

- The Respondent clearly shows bad faith in the registration of the disputed domain name since in light of the above the Respondent must have had knowledge of the Complainant’s MISSONI trademark.

- The Complainant is being hindered and penalized by the use of the disputed domain name by the Respondent by misleading Internet users and creating a likelihood of confusion with the Complainant’s trademarks and domain names. It is further confirmed that the Complainant has never authorized the Respondent to sell products or services under the Complainant’s trademark in any form.

- There is no plausible explanation as to why the Respondent would register the disputed domain name other than to trade on the goodwill associated with the Complainant’s trademark MISSONI.

- It also appears that the Respondent is not using the disputed domain name, but is passively holding it. It has been confirmed in previous UDRP decisions that passive holding of a domain name does not constitute any rights of the Respondent in the disputed domain name, but on the contrary, passive holding infers bad faith use and registration.

- Furthermore, as outlined above, the Respondent seems to have registered other domain names containing renowned trademarks, which constitutes a patter of conduct that can lead to a finding of bad faith use and registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion And Findings

A. Identical or Confusingly Similar

The Complainant has registered the MISSONI trademark in a number of jurisdictions, with a registration in Italy dating back to 1969. The Complainant submits that the disputed domain name is confusingly similar to its trademark as the disputed domain name incorporates the MISSONI trademark in its entirety. As the word “missoni” has no meaning in the English language, the Panel finds the Complainant’s MISSONI trademark to be highly distinctive. The Panel also notes that the Complainant’s MISSONI trademark is known worldwide and has acquired a substantial amount of goodwill associated with the products and/or services provided under the MISSONI trademark.

In relation to the incorporation in the disputed domain name of the generic or descriptive geographical indicator “Kuwait”, the Panel finds that the inclusion of a generic or descriptive geographical indicator together with a trademark cannot contribute to distinguishing the disputed domain name from the registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that due to the high level of distinctiveness of the MISSONI trademark of the Complainant and its prominence worldwide, the addition of the merely generic or descriptive geographical indicator “Kuwait” in the disputed domain name does not avoid a finding of confusing similarity in this case. This is further strengthened by the fact that the Complainant operates a business in Kuwait.

Indeed, the inclusion of a generic or descriptive geographical indicator together with a trademark in the disputed domain name may increase the risk of confusion for Internet users, leading Internet users to believe that the website associated with the disputed domain name is in fact a genuine operation of the Complainant in that country.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark. This is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Accordingly, the Panel finds that the incorporation of the merely generic or descriptive geographical indicator “Kuwait” in the disputed domain name <missonikuwait.com> does not prevent a finding of confusingly similarity to the Complainant’s trademark MISSONI.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel needs to consider whether the Respondent has rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.

A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing evidence under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests.

According to the evidence submitted by the Complainant, the disputed domain name is simply parked for free by GoDaddy.com LLC for the Respondent. Such passive holding cannot constitute a bona fide offering of goods or services.

The Panel further notes that there is no evidence before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services.

This use of the disputed domain name, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The disputed domain name was registered on August 9, 2011, while the Complainant has been trading and acquiring goodwill in its MISSONI trademark in Italy and internationally much earlier than the registration of the disputed domain name. It is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it. This is evidenced by the Respondent’s use of the MISSONI trademark of the Complainant in the disputed domain name in full.

The Respondent is using the disputed domain name to confuse Internet users and misleadingly divert customers away from the websites of the Complainant. Such confusion may lead to damage to the goodwill associated with the trademark of the Complainant. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds that the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainants, for valuable consideration in excess of its 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Panel finds that the Respondent's use of the disputed domain name has created a risk of confusion with the Complainant’s products and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

The registration of the disputed domain name may divert Internet users from the Complainant’s websites, which may lead to a disruption of the business of the Complainant and/or damage to the goodwill associated with the trademark of the Complainant. The Panel finds that the Complainant has presented evidence that the Respondent is in violation of the provisions of paragraph 4(b)(iii) of the Policy in respect of the disputed domain name.

The Panel also notes that the Respondent has engaged in a pattern of conduct in registering a number of domain names all incorporating well-known trademarks, especially those of hotels in and around the Middle East. Such pattern is a clear indication that the Respondent is targeting well-known trademarks and is preventing the owners of those trademarks from reflecting their trademarks in corresponding domain names. Such conduct is in a clear violation of the provisions of paragraph 4(b)(ii) of the Policy in respect of the disputed domain name.

The fact that the Respondent is passively holding the disputed domain name through the Registrar free parking service does not constitute any rights of the Respondent in the disputed domain name but may in fact infer bad faith use and registration of the disputed domain name. Under such circumstances the Panel, taking into account all relevant factors, such as the fact that the MISSONI trademark of the Complainant is well-known, the fact that the Respondent failed to respond to the Complaint and the fact that it would be impossible to conceive good faith use of the disputed domain name, may draw such inferences of existence or lack of bad faith use and registration as it finds appropriate.

Taking into account all of the facts of the dispute, the Panel holds that the Respondent has registered and used the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the MISSONI trademark of the Complainant. Therefore the registration and parking of the disputed domain name was carried out by the Respondent in order to prevent the Complainant from reflecting its well-known trademark in the disputed domain name, a pattern of conduct evidenced by other registrations carried out by the Respondent. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name.

These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel also draws inferences of bad faith from the lack of a formal response from the Respondent to the Complaint.

The Panel finds the Complainant has shown that the Respondent registered and using the disputed domain name in bad faith.

7. Decision

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 <missonikuwait.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Dated: March 6, 2012

 

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