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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missoni S.p.A. v. gong jian

Case No. D2016-1072

1. The Parties

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

The Respondent is gong jian of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <missoni.世界> (missoni.xn--rhqv96g) (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016 against “Ma Zheng Gang” of Beijing, China (the “original Respondent”). On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the original Respondent is listed as the registrant and providing the contact details.

On June 2, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 6, 2016, the Complainant confirmed its request that English be the language of the proceeding. The original Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the original Respondent of the Complaint in both Chinese and English, and the proceedings commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The original Respondent did not submit any response save for its email communications in English and Chinese on June 14 and 15, 2016, claiming identity theft and identifying the Respondent as the registrant and providing its contact details. The Center notified the parties that it would proceed to Panel Appointment process on July 5, 2016. On the same day, the Center sent an email to the Registrar flagging the change of registrant information previously confirmed by the Registrar in its reply to the Center’s verification email of June 1, 2016. The Registrar responded on July 6, 2016.

The Center appointed Karen Fong as the sole panelist in this matter on July 12, 2016. 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.

On July 26, 2016, the Panel issued a Procedural Order to the original Respondent and the Respondent (together with a copy of the Complaint) requesting: (1) the original Respondent to provide further evidence to substantiate the claim that it is not the registrant of the Domain Name; (2) the Respondent to confirm if it wishes to participate in the proceedings; (3) the Complainant to submit further comments strictly on the submissions made by the original Respondent and the Respondent. Neither the original Respondent nor the Respondent replied by the specified due date.

On July 26, 2016, the Center also contacted the Registrar asking for clarification on the WhoIs in connection with the Domain Name. The Registrar replied on July 27, 2016.

4. Factual Background

The Complainant is a leading Italian fashion house with its goods promoted and marketed globally. The goods are sold under the trade mark MISSONI which is also the trade name and the family name of the designer and founder, Mr. Ottavio Missoni. By virtue of its extensive use world wide, the MISSONI trade mark has acquired goodwill and reputation in the trade marks. The Complainant has a global trade mark portfolio for the MISSONI trade mark, the earliest of which in Italy dates back to September 2, 1969. The Complainant also has a portfolio of domain name registrations corresponding to the MISSONI trade mark. The official website of the Complainant is “www.missoni.com”.

The Respondent registered the Domain Name on March 10, 2016. The Domain Name previously resolved to a pay-per-click (“PPC”) parking page as of May 20, 2016. From at least June 14, 2016, the Domain Name was connected to a beauty website called “missonly.世界” which is connected to <yaotiao.com>. It is still connected to this website (the “Website”) at the time of this decision. The Domain Name was also offered for sale through the Sedo’s Domain Marketplace.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to the trade mark MISSONI, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

6.1. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The 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 Domain Name was registered and is being used in bad faith.

6.2. Procedural

The Complaint was filed against the original Respondent with an address in the city of Rancho Dominguez in Beijing, China. There is no city in China called Rancho Dominguez which is in fact in California, United States of America. It would appear that this is a fake address. The Registrar had on June 1, 2016 verified the details of the original Respondent. The original Respondent responded by email on June 14 and 15, 2016, claiming identity theft and identifying the Respondent as the registrant and providing the email contact for it. On July 5, 2016, a WhoIs search revealed the Respondent to be the registrant. In response to the Center’s query on that same date, the Registrar replied on July 6, 2016 stating that: “Because there is no record of the transfer domain name holder, May be the whois-info was not updated before”.

The Center made further inquiries with the Registrar to clarify the identity of the registrant of the Domain Name. The Registrar basically confirmed that there was a technical error in the updating of the database and that the original Respondent was never connected to the Domain Name and so the verification email of May 31, 2016 was in error. By way of the Procedural Order of July 26, 2016, the Respondent was given until August 5, 2016 to indicate its wish to participate in the proceedings. It did not respond by the deadline. The Rules, paragraph 10, provide that the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. The Panel is satisfied that the Respondent is the correct respondent in the proceeding and the ten (10) days given for it to respond was sufficient notification of the proceeding in these circumstances. The Panel also considered that it did not need the Complainant to re-file or amend the Complaint.

6.3. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.

The Complainant submits in Paragraph IV of the Complaint and confirmed in an email of June 6, 2016 that the language of the proceeding should be English. To proceed in Chinese will impose a disproportionate burden on the Complainant in terms of additional costs and inconvenience. The second level Domain Name is in English characters which is evidence of the Respondent’s knowledge of the English language and also shows that it is targeting an English speaking market.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to understand the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, in accordance with paragraph 11(a) of the Rules, the Panel determines that English is the language of the proceeding.

6.4. Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the MISSONI trade mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant’s distinctive trademark MISSONI in its entirety which is identical to the trade mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.世界”.

The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it 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 trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.

The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.

The Respondent is not affiliated to the Complainant in any way nor has he been authorised by the Complainant to register and use the Domain Name. It has no independent right to the Domain Name. MISSONI is the widely known trade mark of the Complainant and it would be difficult to infer a legitimate activity in connection with the Domain Name by the Respondent without authorisation. The Respondent has also not shown that it is making legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The MISSONI trade mark is a widely known mark used and registered by the Complainant extensively and for a substantial period of time all over the world including in China (where the Respondent appears to be based) before the Domain Name was registered. It would be inconceivable that the Respondent had no knowledge and actual notice of the MISSONI trade mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.

The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Complainant’s trade mark as the Domain Name in relation to beauty services under the name “missonly.世界” which has no connection to the Complainant is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website is calculated to confuse Internet users into believing that the Respondent is part of the Complainant’s group of companies, an authorized agent or somehow connected to the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website and the products on display are authorized or endorsed by the Complainant.

The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP.

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 Domain Name <missoni.世界> (missoni.xn--rhqv96g) be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: August 12, 2016

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