WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Domain Manager
Case No. DCO2011-0043
1. The Parties
Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Domain Manager of California, United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <m-missoni.co> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 14, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On July 16, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on August 18, 2011. 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 Domain Name was created on February 18, 2011 and it was registered to the Respondent with GoDaddy.com, Inc on.March 29, 2011.
5. Parties’ Contentions
Complainant states that it is a leading company in the fashion field, operating under the laws of Italy and having its principal place of business in Sumirago (Varese, Italy). Its goods are marketed and promoted in almost every country. It states that as a consequence its trade mark, the trade name and the family name of the designer (Mr. Ottavio Missoni) are well-known and have been extensively used by Complainant for many years. Complainant’s trade mark MISSONI was registered in Italy on May 15, 1971 (filed on September 2, 1969) and in the USA on December 23, 1975, and that the M MISSONI trade mark was registered in Italy on July 21, 1998 and in the USA on June 30, 2009. Complainant contends that it is also the owner of many M MISSONI national, international and community registered trade marks and that for many years it has published its company information on its website “www.missoni.com”.
Complainant asserts that the Domain Name is confusingly similar to its trade marks MISSONI and M-MISSONI, as well as to its company name Missoni S.p.A., and to its domain names <missoni.com>, <missoni.it> and <missoni.eu>. Complainant submits that the only difference between the Domain Name and its trade mark M-MISSONI is that the Domain Name consists of the addition of the country code top level domain “.co”.
Complainant asserts that no agreements, authorisations or licenses have been granted to Respondent to use Complainant's trade marks, trade name and company name and the use of the Domain Name containing Complainant's entire mark makes it difficult to infer a legitimate use of the Domain Name by Respondent. Upon information and belief, Complainant suggests that there is no evidence that Respondent has trade marks or company activities registered under the M MISSONI brand and has never made any bona fide use of the Domain Name since registration, nor has ever been known under the M MISSONI name.
Complainant advises that until July 8, 2011 the website “www.missoni.com” presented solely a page containing exclusively sponsored links. Then on July 12, 2011, an almost empty website appeared, wherein on the home page there was an error message: “Not Found. Sorry, but you are looking for something that isn't here.”, while on the page “About” the following message: “Here you will find information about M Missoni.” was displayed. As of July 14, 2011 it showed a video of an artist called Missoni Lanza, taken from YouTube. Complainant states that it has no connection with Missoni Lanza and has not given Missoni Lanza any authorisation to use its trade marks. Missoni Lanza’s profile on her MySpace page, shows that her official website is/was “www.missonilanza.com”.
Complainant claims that Respondent has no rights or legitimate interests in respect of the Domain Name and suggests it is highly unlikely that Respondent registered the Domain Name without knowledge of the MISSONI trade marks. Complainant contends that Respondent appears to be a provider of services related to the domain names field, having registered more than 100,000 domain names and also appears to have been involved in numerous UDRP proceedings for having abusively registered domain names corresponding to and/or containing trade marks belonging to third parties.
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 trade marks and domain names. The use of Complainant’s mark in the Domain Name makes it difficult to infer a legitimate use of the Domain Name by Respondent and Complainant argues that no plausible explanation exists as to why Respondent selected the Domain Name other than to trade on the goodwill of Complainant’s renowned trade marks, which shows Respondent's bad faith in registering the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant’s trade mark MISSONI has been used in the fashion field, in at least Italy and was registered in that country in 1971. Likewise, Complainant registered the M MISSONI trade mark in Italy in 1998 and in the USA in 2009. Further, Complainant has used and is the owner of many M MISSONI national, international and community registered trade marks.
Complainant asserts that the Domain Name is confusingly similar to its trade marks MISSONI and M-MISSONI (Complainant’s Trade Marks), as well as to its company name Missoni S.p.A., and its domain names <missoni.com>, <missoni.it> and <missoni.eu>. Complainant notes that the only difference between the Domain Name and its trade mark M-MISSONI is that the Domain Name consists of the addition of the country code top level domain “.co”.
The Domain Name comprises the term “m-missoni” (which to the Panel’s knowledge has no obvious meaning other than as the name of a person or entity), accompanied by the top-level domain indicator “.co”. The Domain Name, in so far as the operative part is concerned, is identical and even with the “.co” extension is clearly confusingly similar to Complainant’s Trade Marks. Moreover, it incorporates Complainant’s Trade Marks in their entirety.
This, Complainant submits, is likely to mislead Internet users and create a likelihood of confusion with Complainant's Trade Marks and its domain names. There is merit in this submission as the Domain Name must convey the same overall impression as Complainant’s Trade Marks and it is at the very least confusingly similar to Complainant's Trade Marks.
Accordingly, the ground is made out by Complainant.
B. Rights or Legitimate Interests
Complainant contends that until July 8, 2011 Respondent presented a Web page containing exclusively sponsored links but that on July 12, 2011, an empty website appeared, accompanied by an error message. This suggests that Respondent was using the Domain Name on a registrar parking page and that the Domain Name diverted Complainant’s customers and potential customers to the registrar and its services which were not associated with Complainant. Complainant further contends that Internet users searching for Complainant’s various goods and services, who instead found the Domain Name, would be confused and think they were visiting a site of Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. These contentions are not disputed by Respondent and they are accepted by the Panel as valid.
Respondent was using the Domain Name for demonstrably commercial purposes. It is well established that rights or legitimate interests cannot be created where the user of the disputed domain name would not choose such a mark or name unless it was seeking to create a mistaken impression of identification or association with some other party. The Panel is of the clear view that the mere addition of the country code “.co” to Complainant’s Trade Marks does not create a new or different name or mark in which Respondent has legitimate rights.
Complainant makes out this ground.
C. Registered and Used in Bad Faith
For the reasons set out above and in the absence of any explanation as to what may have led Respondent to choose the Domain Name it is found that Respondent registered the Domain Name in bad faith, with knowledge (actual or imputed) that including Complainant’s Trade Marks as part of the Domain Name would be likely to cause an Internet user visiting Respondent’s web site (or through other means) to incorrectly assume that the Domain Name is somehow sponsored by or affiliated with Complainant.
Finally, Complainant contends that Respondent has registered large numbers of domain names which are likely to belong to others and has been involved in numerous UDRP proceedings for having abusively registered domain names corresponding to and/or containing trade marks belonging to third parties.
Assuming, in the absence of denial, that this contention has some basis, it supports the submission made by Complainant that the Domain Name was registered and was or is being used in bad faith and that Complainant is entitled to relief pursuant to the Policy.
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, <m-missoni.co> be transferred to Complainant.
Clive L. Elliott
Dated: September 5, 2011