WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Rob Mayer
Case No. D2012-1250
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 Rob Mayer of Casselman, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <missonishop.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 20, 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 July 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on July 31, 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 an Italian company which claims to be a leader in the fashion field for a variety of goods. It has a website “www.missoni.com” which features the range of goods which have carried the Missoni name for nearly 60 years. Whilst the product range is predominantly clothing or clothing related it extends to materials, fabrics, shoes, fragrances and a relatively newly launched hotel association.
The name Missoni derives from the name of the founder of the Complainant Ottavio (Tai) Missoni. It continues to be a family-run company. The website chronicles the history and achievements over the past more than half century.
The Complainant is a household and leading name in the fashion industry, based in the Italian fashion capital of Milan. The website “www.missoni.com” features a series of drop-down menus, one of which “info” opens an online shop window. This takes the visitor to another website which appears to be a third party website “www.net-a-porter.com” and in particular “www.net-a-porter.com/shop”. This enables visitors to purchase online. The online shop displays a large variety of Missoni products. Whilst it also features a number of other designer brands, they are all well-known brands able to be purchased along with the Complainant’s goods online using Internet links and connections for those purposes. It is clearly a website for online shopping authorized by the Complainant.
The Complainant has a number of registered trade marks (including in Canada) as well as domain names which include <missoni.ca> (for Canada) and several with the word “shop” incorporated in them.
As a result the Complainant contends it has acquired a significant and protectable goodwill in its trade marks, whether those trade marks are registered or exist at common law. The first trade mark registration dates from 1969 and in Canada from 1990 and the United States of America from 1973. The Respondent’s address as registered with the concerned Registrar is stated to be in Casselman, Ontario, Canada, which is relatively close to the United States border.
The disputed domain name is said to default to an active website but that website appears to have ceased or is inactive. It is currently not operative. The Complainant sent an email to the Respondent on June 19, 2012 advising of the lodging of the present Complaint and requesting that the Respondent transfer the disputed domain name to the Complainant. The Respondent replied on June 20, 2012 advising that “the account <missonishop.info> has been terminated”. There was no indication of a willingness to transfer the disputed domain name to the Complainant as requested. The request was repeated but apparently again ignored. The email indicating the account had been terminated would provide some explaination why the website can no longer be accessed. Nevertheless the disputed domain name remains registered in the name of the Respondent.
The Respondent has not filed a formal Response. Nevertheless screen shots from the then functioning website are in evidence. These would suggest the website previously operated as an online shop for purchase of Missoni products (and other unrelated goods). Although it is assumed the Missoni products were genuine, some of the text in the screens is stilted and grammatically incorrect. The banner at the top of some of the screens proclaims “Missoni Shop Get All You Need at Missoni Shop!”. The operator of such an online shop would be in competition with the Complainant’s own online shop operated through <net-a-porter.com>.
5. Parties’ Contentions
The Complainant relies upon its trade mark registrations, domain names, common law goodwill and its activities over more than half a century marketing and selling high quality clothing and related items under and by reference to the MISSONI name and trade marks. Its recent collaboration with Target testifies to its recognition and success. It is a sought-after brand.
The Complainant contends that any domain name which incorporates the name Missoni will be linked or associated with the Complainant, and any domain name or website which uses that name in conjunction with the descriptive word “shop” would be assumed to be an online shop associated with or licenced or approved by the Complainant. It further contends that the suffix “.info” is purely the addition of a generic Top-Level Domain (gTLD) suffix which does nothing to differentiate or distinguish. Thus the gTLD suffix can be disregarded.
As further discussed below, the Complainant contends that the Respondent has no rights of legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Respondent, having defaulted, has not put anything before the Panel. Nevertheless, as set out in Section 4 above, the screenshots from the website are in evidence. From those it would appear that the Respondent was operating as some form of online shop purporting to sell Missoni branded products together with other branded products. Whether that in fact was so may be impossible to tell.
As the Respondent emailed the Complainant on June 20, 2012 advising “the account <missonishop.info> has been terminated” that can in the circumstances be taken as an acknowledgement by the Respondent of no lawful entitlement to use the name MISSONI in the domain name or associated website.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must first establish that it has such rights either to common law or registered trade marks or service marks.
The disputed domain name incorporates the word “Missoni”. That, as set out in Section 4 above, is the family name of the Design House Missoni. It is not a descriptive or generic name. Moreover, it is a well-known name used for decades to refer to the Complainant’s business and fashion house and has been registered as a trade mark by the Complainant.
The suffix “shop” is no more than a purely descriptive word that aptly describes the nature or function of the website, associated with the disputed domain name, namely the operation of an Internet shop where MISSONI branded goods can be purchased.
The “.info” suffix is irrelevant. It is no more than characterizing the domain name as a gTLD. Visitors to the website would not likely assume anything from the adoption of a gTLD suffix.
Further, as the Complainant has its own online shop, any person seeing or reading the disputed domain name or visiting any associated website may immediately think that the disputed domain name and the website belongs to or is associated with the Complainant or alternatively were in some way authorised by it.
As the suffixes “shop” and “.info” add nothing of relevance to the Panel and the disputed domain name incorporates the exact word mark MISSONI within it, it therefore must be virtually identical and certainly confusingly similar.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground that there are no rights or legitimate interests possessed by the Respondent, the Complainant contends that no agreements or licenses have been granted to the respondent to use the Complainants’ marks, that there is no evidence that the Respondent has any trademarks in or is commonly known by “missoni”, and that the Respondent has not made any bona fide use of the disputed domain name.
The Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade marks in suit thereby justifying a proprietary right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
It is unclear whether the Respondent used the default website to offer for sale genuine or other than genuine Missoni products. On the assumption that the products on offer were genuine in certain circumstances there may be legitimate interests in the Respondent’s offering such goods or products for sale and (trade mark, contractual, licencing and competition issues aside) advertising that genuine Missoni branded products can be purchased from the website: See Oki Data Americas Inc v ASD Inc, WIPO Case No. D2001-0903. However, what the Respondent cannot do is register the domain name in a style or incorporating the MISSONI mark which would suggest to a visitor to the website that it is a genuine or licenced or MISSONI online shop and therefore part of or associated with or licenced by the MISSONI Fashion House, contrary to the fact.
The Complainant says it has not licenced or authorised the Respondent to use the MISSONI trade mark. The Panel finds the Respondent does not have any entitlement of its own under the circumstances to use the MISSONI trade mark as it has never been known under the Missoni name (which is a family name). The family name of the Respondent reveals no association with the Missoni family.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be found to be registered and used in bad faith by the respondent. As has previously been said in other UDRP decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The disputed domain name was registered by the Respondent on September 24, 2011. That was more than half a century after the establishment of the Missoni Fashion House in Milan. It was more than 40 years after the registration of the first MISSONI trade mark and more than 20 years after the registration of the MISSONI trade mark in Canada, where the Respondent resides.
The conclusion is ineluctable that the Respondent registered the disputed domain name for the purposes of enabling it to advertise for sale (and profit) Missoni products but without any licence or authority to do so from the Complainant. It is therefore easy to find on the facts that there has been registration in bad faith.
The Complainant must also establish use in bad faith. As the disputed domain name defaulted to a website (albeit now terminated) and the historical screens in evidence show actual use or apparent actual use, consistent with paragraph 4(b)(iv) of the Policy, there is clearly also use of the disputed domain name in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 <missonishop.info> be transferred to the Complainant.
John Katz QC
Date: August 14, 2012