WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A v. Song Beyung Su
Case No. D2012-1290
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 Song Beyung Su of Seoul, Republic of Korea (“Korea”).
2. The Domain Name and Registrar
The disputed domain name <missonicafe.com> is registered with Gabia, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. On June 25, 2012, the Center transmitted by email to Gabia, Inc. a request to register verification in connection with the disputed domain name. On June 26, 2012, Gabia, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 26, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 27, 2012, the Complainant submitted a request that English be the language of the proceeding. On June 26, 2012, the Respondent indicated its inability to communicate in English. On July 2, 2012, the Center notified the Respondent via email that, although the Panel has the authority to determine the language of proceedings, the Center had decided to accept the Complaint as filed in English, to accept a Response in either English or Korean, and to appoint a Panel familiar with both Korean and English.
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 proceeding 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 Thomas P. Pinansky as the sole panelist in this matter on July 27, 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 company in the fashion field, and its trademark, the trade name, and the family name of the designer (Missoni) are well-known throughout the world. The Complainant owns several domain names incorporating its MISSONI mark, including <missoni.com>, <missoni.it>, and <missoni.eu>.
The MISSONI trademark was first registered on September 2, 1969 in Italy and on September 27, 1989 in Korea. The Respondent registered the disputed domain name on October 9, 2010.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the MISSONI mark as the disputed domain name incorporates the entire well-known MISSONI mark.
The addition of the generic term “cafe” is not sufficient to avoid confusion but rather increases it, as “cafe” services are provided under the Complainant’s MISSONI trademark.
The Respondent is fully aware of the MISSONI trademark and the value of the disputed domain name.
The Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Respondent acquired the disputed domain name primarily for the purpose of selling, renting or transferring it to its rightful owner for an amount in excess of the registration cost.
While the Respondent sent numerous informal email communications to the Center, the Respondent did not provide any proper substantive Response to the Complainant’s contentions.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language, whereas the language of the Registration Agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ levels of comfort with each language, the expenses to be incurred, the possibility of delay in the proceeding in the event that translations are required, and other relevant factors.
While noting that the Respondent has notified the Center via email of its inability to communicate in English, the Panel considers that the email correspondences exchanged between the parties and between the Respondent and the Center appear to demonstrate the Respondent’s sufficient ability to understand the English language. Further, the message that was displayed on the website to which the disputed domain name was linked was in the English language (“THIS DOMAIN IS FOR SALE”). It is also noteworthy that the Center has communicated with the parties in both English and Korean and appointed a panel familiar with both English and Korean.
Thus, under paragraph 11 of the Rules, in consideration of the above circumstances, and in the interest of fairness to both parties, the Panel concludes to issue a decision in English.
B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires that the Complainant prove each and all of the following three elements in order to prevail in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a proper substantive Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default”, the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b) the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
C. Identical or Confusingly Similar
The Complainant registered various trademarks that incorporate its company name Missoni S.p.A. The disputed domain name wholly incorporates the Complainant’s distinctive MISSONI trademark. The addition of the generic term “cafe” creates a technical difference that is considered insufficient to avoid confusion. This finding is consistent with a number of previous UDRP decisions (see e.g. Grupo Televisa, S.A. Televisa S.A. de C.V. Comercio Mas, S.A. de C.V. Estrategia Televisa, S.A. de C.V. Videoserpel, Ltd. v. Registrant email@example.com 9876543210, WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) firstname.lastname@example.org +1.25255572, WIPO Case No. D2005-1143).
The Panel, therefore, finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with this element, several UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that no agreements, authorizations, or licenses have been granted to the Respondent to use its mark. The Panel also notes that there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven, provided that they have not been denied by the Respondent.
As evidenced in the complaint, the disputed domain name previously resolved to a website that displaced a message indicating that the disputed domain name was for sale. At the time of notification of the Complaint, it redirected its visitors to the website “www.linkcare.co.kr” where a welcome message (“welcome to ibstar.com”) together with various photographs were displayed. Both domain names, <linkcare.co.kr> and <ibstar.com> appear to be registered by the Respondent. Considering the fact that the sole purpose of the latter website seems to be to display pictures of an unknown individual, the Panel finds that the Respondent has not used the disputed domain name for any legitimate purpose, or in connection with a bona fide offering of goods or services at any time.
The Respondent has not submitted a formal Response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). It is noted that on January 9, 2012, the message “THIS DOMAIN IS FOR SALE” was displayed on the website “www.missonicafe.com”. The Complainant sent an email to the Respondent on January 25, 2012, offering USD 80 for the disputed domain name. On January 26, 2012, the Respondent replied, refusing the USD 80 and proposing USD 10,000. The Complainant sent another email to the Respondent on February 14, 2012, offering to raise its initial offer to a few hundred dollars, and when there was no reply from the Respondent, the Complainant sent an additional email on March 14, 2012, asking for acknowledgement of its offer. On the same day, the Respondent replied, expressing its unwillingness to negotiate. The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of paragraph 4(b)(i).
The fact that the disputed domain name later resolved to another website “www.linkcare.co.kr”, does not change the Panel’s findings.
The Complainant has also asserted with sufficient evidence that the Respondent registered the disputed domain name with full knowledge of the renown of the Complainant’s trademark. The MISSONI trademark was first registered in Italy on September 2, 1969, and in Korea on September 27, 1989. The Respondent registered the disputed domain name on October 9, 2010, by which time the Complainant’s trademark had been known throughout Korea. The Complainant cites Missoni S.p.A v. Liu Zhixian WIPO Case No. D2010-0371 in which the finding was that, since the Complainant’s mark is distinctive and well-known around the world, there are few if any plausible explanations for incorporating it into a domain name other than to benefit from its fame. Knowledge of the Complainant’s mark at the time of registration of the disputed domain name implies use in bad faith (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
Moreover, it is noted that the Respondent has apparently previously registered several other domain names such as <missonicoffee.com>, <missonicoffee.net>, <missonicoffee.co.kr>, and <missonicoffee.kr>, all of which wholly incorporate the trademark MISSONI. The Respondent’s apparent registration of five domain names containing the trademark MISSONI further shows the Respondent’s bad faith in registering the disputed domain name.
For all of the reasons above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a) of the Policy has been met.
For the foregoing reasons, the Panel orders that the disputed domain name <missonicafe.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: August 16, 2012