World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missoni S.p.A. v. Whois Privacy Services Pty Ltd / PeaceSearch LLC, Peter S. Chung

Case No. D2012-0567

1. The Parties

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

The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / PeaceSearch LLC, Peter S. Chung of Englewood, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwmissoni.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2012. On March 20, 2012, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On March 20, 2012, Fabulous.com 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 March 21, 2012, 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 March 21, 2012.

The Center verified that the Complaint together with the 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 26, 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, Missoni S.p.A., is a company in the fashion field and its goods are marketed and promoted under the MISSONI trademark in almost every country. Complainant’s first trademark registration for MISSONI in Italy dates back to May 15, 1971. Complainant is also the owner of many international, community and national MISSONI trademark registrations, among which:

- United States Registration No. 1026807 for MISSONI & design registered on December 9, 1975 and covering goods of class 25

- International Registration No. 586554 for MISSONI of June 19, 1992, designating various countries and covering goods of classes 3, 9, 24 and 25;

- Community Registration No. 001164987 for MISSONI of May 7, 1999 and covering goods of classes 18, 24 and 25.

The Complainant operates many domain names incorporating MISSONI trademarks, including <missoni.com>.

In September 2011, the Complainant collaborated with the Target department store to launch and sell a line of fashion called “Missoni for Target ” on Target’s website.

The disputed domain name was registered on September 14, 2011.

The Respondent has used the disputed domain name <wwwmissoni.com> in connection with a parking page displaying sponsored links related to third parties’ websites in the fashion field.

5. Parties’ Contentions

A. Complainant

First, Complainant states that it is a leading company in the fashion field. As its goods are marketed and promoted in almost every country, Complainant states that its trade mark is well-known and has been extensively used by for many years. Complainant thus asserts that the disputed domain name is confusingly similar to its trade mark MISSONI, as well as to its company name Missoni S.p.A., and to its domain name <missoni.com> on which it has published information about the company. Complainant submits that the only difference between the disputed domain name and its trade mark MISSONI is that the disputed domain name consists of the addition of the “www” letters.

Second, Complainant asserts that no agreements, authorizations or licenses have been granted to Respondent to use Complainant’s trademarks, trade name and company name and 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.

Third, Complainant claims that Respondent has no rights or legitimate interests in respect of the disputed domain name and suggests it is highly unlikely that Respondent registered the disputed domain name without knowledge of the MISSONI trade marks. Complainant contents that the disputed domain name was registered on the day after the launch of a special line of the Complainant’s products on the Target Stores’ website. Complainant also asserts that the disputed domain name is used for a website solely composed of sponsored links, some of them redirecting to Complainant’s competitors.

Finally, Complainant then contends that Respondent appears to have chosen to register the disputed domain name combining the renowned trademark MISSONI with the “www” letters in a clear intent to divert Internet users that make the common typo error of digitizing twice “www”. Complainant asserts that its business is being hindered and penalized by Respondent’s use of the Domain Name which is misleading Internet users and creating a likelihood of confusion with Complainant’s own trademark and domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights.

The Panel is satisfied with the evidence adduced by Complainant in order to prove its trademark rights in the trademark MISSONI which also happens to be its company name. Complainant has also proven to be the owner of various domain names comprising its trademark MISSONI, among which <missoni.com>.

The Panel accepts that the disputed domain name is confusingly similar to Complainant’s MISSONI trademark. Indeed, the disputed domain name reproduces the trademark MISSONI in its entirety. Such term provides the dominant element of the disputed domain name. Indeed, the disputed domain name <wwwmissoni.com> differs from the Complainant’s trademark MISSONI only to the extent of the mere adjunction of the “www” letters.

The addition of the “www” term is commonly known to be the abbreviation of World Wide Web. Such term does not prevent the Panel from finding confusing similarity with the MISSONI trademarks. Prior UDRP panel decisions have considered domain names that consist of the prefix “www” affixed to a trademark and have concluded that such domain names are confusingly similar to the relevant trademark (See Pi-Design AG v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2010-0462; Association des Centres Distributeurs E. Leclerc- A.C.D. Lec v. PrivacyProtect.org/ Private Registration, WIPO Case No. D2010-1529). Therefore, the Panel is of the opinion that the well known acronym for “world wide web”, “www”, at the beginning of the disputed domain name is not distinctive and should be disregarded.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Second element under paragraph 4(a)(ii) of the Policy requires the Complainant to establish the Respondent lacks rights and legitimate interests in the disputed domain name.

The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use its trademarks in the disputed domain name. Moreover, the Panel finds no evidence that the disputed domain name corresponds to Respondent’s name.

Furthermore, the Respondent did not set out evidence of any use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name imitates the Complainant’s official domain name <missoni.com> as it consists of Complainant’s trademark with the addition of “www” at the beginning of the disputed domain name. In these circumstances, it appears obvious to the Panel that the Respondent is using a common misspelling which confuses Internet users looking for the Complainant’s website. An unintentional and inadvertent typing error of digitizing twice “www” may indeed cause a consumer intending to reach the Complainant’s website at “www.missoni.com” to end up on the page associated with the disputed domain name. Consequently, the Panel considers that the registration of the disputed domain name corresponds to “typosquatting”.

Complainant also points out that Respondent has used the disputed domain name <wwwmissoni.com> in connection with a website featuring sponsored links of Complainant’s competitors. Such use which diverts Internet users who, via typosquatting, are looking for the Complainant’s products on the Internet to competing websites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the disputed domain name (See Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891; Pi-Design AG v. Above.com Domain Privacy / Transure Enterprise Ltd, supra). Thus, the Panel notes that there is no noncommercial or fair use of the disputed domain name given that the website contains sponsored links to third parties’ commercial websites offering fashion related goods that compete with those of the Complainant.

Furthermore, Respondent did not file a Response to the Complaint. The Respondent has chosen neither to explain its conduct nor to set out evidence of any rights or legitimate interests in respect of the disputed domain name, and the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 its website or location.”

The Panel acknowledged that Respondent most probably knew of the Complainant’s trademarks when it registered the disputed domain name. This inference can be drawn in the light of Complainant’s fame and grounded on UDRP decisions which considered the MISSONI trademark as a well-known trademark (See Missoni S.p.A v. BigDoggie.com and Taeho Kim, WIPO Case No. D2002-0545 (<missoni.net>); Missoni S.p.A V; Darrell Jordan, WIPO Case No. D2012-0349 (<missoniknockhoff.com> and <missoniknockoffs.com>; Missoni S.p.A v. Easy Shop Ping, WIPO Case No. D2012-0117 (<missonisale.com>); Missoni S.p.A v. William Song, WIPO Case No. D2012-0208 (<mmissoni.info> and <mmissoni.org>).

The lack of any explanation from a respondent as to why it registered a domain name incorporating the trademark MISSONI, the day after Complainant launched its “Missoni for Target” collection, was already deemed as evidencing registrant’s bad faith in previous decisions involving Complainant (See Missoni S.p.A v. William Song, WIPO Case No. D2012-0208). As this new collection had notably to be sold on the Target United States retailer’s websites, the timing of the registration of the disputed domain name close to the launch of the “Missoni for Target” collection does not appear as a coincidence. Moreover, the choice of the terms “missoni” associated with the “www” letters directly referring to the world wide web, shows in the Panel’s view that the Respondent was aware of the Complainant’s activities and registered the disputed domain name in order to capitalize on Complainant’s trademark.

Moreover, the Respondent is using a common misspelling of the Complainant’s website. Indeed, the disputed domain name imitates the Complainant’s official domain name <missoni.com> as it consists of the Complainant’s trademark with the addition of “www” at the beginning of the disputed domain name. This registration corresponds to “typosquatting”. Capitalizing on the probability that a certain number of Internet users will mistype the domain name of Complainant’s website (or actually its URL) when surfing the web, the Respondent is making a bad faith use of the disputed domain name (See Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855).

Furthermore, the Respondent has used the disputed domain name <wwwmissoni.com> in connection with websites featuring sponsored links that relate to Complainant’s competitors in the fashion field, whereas the Complainant has been operating fashion related goods for many years. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

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 <wwwmissoni.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Dated: May 10, 2012

 

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