WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Disappointments For Sale
Case No. D2013-0416
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 Disappointments For Sale of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vittoriomissoni.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2013, the Registrar 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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 4, 2013. 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 holds a number of registered MISSONI trademarks, both word and figurative, for example the CTM trademarks:
- No. 001164987, MISSONI, registered on October 2, 2000, in classes 18, 24 and 25;
- No. 002823797, MISSONI, registered on December 17, 2003, in classes 4, 14, 20 and 21;
- No. 003773165, MISSONI, registered on August 8, 2005, in class 8; and
- No 002823813, MISSONI (figurative), registered on October 14, 2003, in class 4.
The disputed domain name was registered on January 5, 2013.
5. Parties’ Contentions
The Complainant is an Italian company within the field of fashion that markets and promotes its goods in almost every country in the world. The trade name and the family name of the designer Mr. Ottavio Missoni are well-known throughout the world, as is the name of Mr. Vittorio Missoni, the President of the Missoni company.
Due to exclusive and extensive use for many years, the Complainant has continually developed the goodwill and repute of the trademark. The first MISSONI trademark was filed in Italy on September 2, 1969. The Complainant is also a holder of a large number of domain names, including the domain name <missoni.com>, to which the official website is linked.
The disputed domain name is confusingly similar to the Complainant’s MISSONI trademarks, its company name Missoni S.p.A. and its registered domain names. The addition of the name “vittorio”, the name of the President of the Missoni company, increases the risk for confusion leading to consumers believing that the disputed domain name and the website linked thereto might be legitimate and authorized by the Complainant.
The Complainant has not authorized the Respondent to use the MISSONI trademark in the disputed domain name or to sell products or services under the Complainant’s trademarks in any form. The use of a domain name containing the Complainant’s trademark makes it difficult to infer a legitimate use of the disputed domain name by the Respondent. The Respondent has no trademarks or other registrations containing “Vittorio Missoni”, and has not been known under that name. The disputed domain name has never been used for a bona fide purpose, but is used present a website with sponsored links, including links redirecting visitors to the Complainant’s competitors. The Respondent has registered more than 900 domain names with, according to its name and website, the clear intent to sell them.
The Respondent knew about the Complainant’s activity, name and trademark when registering the disputed domain name, which is proven by the following facts. The MISSONI trademarks are worldwide renowned marks, and acknowledged as such by several prior UDRP panels. The Respondent registered the disputed domain name decades after the Complainant’s use and promotion of the trademarks. The disputed domain name features the name of the president of the Missoni company, clearly with the Complainant’s trademark, name and activities in mind. Company information of the Complainant has been published online since the year 2000. The registration of the disputed domain name was made one day after a plane with Mr. Vittorio Missoni disappeared. News of his disappearance was immediately spread all over the world. The Complainant is being hindered and penalized by the use of the disputed domain name which is misleading Internet users and creating a likelihood of confusion with the Complainant’s trademark and business and causes distress to the Missoni family.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, each of the three following elements must be satisfied:
(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.
Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights to a large number of registered MISSONI trademarks and domain names and that the Complainant’s trademark MISSONI has been considered an internationally well-known trademark in a number of prior UDRP cases. See for example Missoni S.p.A v. Hi Koo, WIPO Case No. D2012-0573 and Missoni S.p.A v. William Song, WIPO Case No. D2012-0208.
The disputed domain name was registered long after the first use and registrations of the MISSONI trademark. The disputed domain name consists of the Complainant’s MISSONI trademark with the addition of the name “Vittorio” and the generic Top Level Domain (“gTLD”) “.com”. According to well-established consensus among UDRP panels, the gTLD is not distinguishing.
The Panel finds, in the light of the well-known character of the Complainant’s trademark, that “Missoni” is the distinctive part of the disputed domain name. The Panel finds that the addition of the name “Vittorio” is not sufficient to avoid the risk for Internet user confusion in relation to the Complainant’s trademark.
Consequently, the Panel finds the disputed domain name confusingly similar to the trademark in which the Complainant has established rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In all cases including when a respondent fails to present a response the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1, and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to use the MISSONI trademark in the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed domain name which incorporates the Complainant’s trademark. Also, the Complainant has asserted that the disputed domain name is linked to a website used by the Respondent to present links to websites of the Complainant’s competitors.
Having considered the submissions of the Complainant, and the lack of response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name.
Further the Panel finds that MISSONI is used in the disputed domain name with an intention to derive commercial advantage thereof. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not provided evidence otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Having regarded the fact that the Complainant’s MISSONI trademark was registered and used many years before the disputed domain name registration and the well-known nature of the trademark, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The addition of the name “Vittorio”, a name the Complainant alleges to be closely related to the Complainant and its business activities, may further increase the risk of confusion. No proof of the connection between the Complainant and Mr. Vittorio Missoni has been submitted in this case. However, regardless of the existence of such connection, the Panel finds that the Complainant has proven that the disputed domain name was registered in bad faith in respect of the Complainant’s trademark. Should the Complainant and Mr. Vittorio Missoni have the alleged connection, this would be further evidence of bad faith registration.
The Complainant has inter alia alleged that the Respondent is using the disputed domain name to present a website where sponsored links redirects visitors to the Complainant’s competitors. The Panel finds it proven by the evidence submitted by the Complainant that the website linked to the disputed domain name does contain links to various websites presenting offers of the Complainant’s products as well as products of the Complainant’s competitors. However, no evidence of actual commercial gain of the Respondent has been submitted by the Complainant. Nevertheless, this Panel shares the findings of previous UDRP panels that a respondent may be found using a disputed domain name in bad faith, even if evidence of actual commercial gain of the respondent has not been proven by the complainant, when nothing indicates a noncommercial use. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing Gmbh v. Shanbei Fu a.k.a. fushanbei, WIPO Case No. D2012-0910 (“In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain”. In this Panel’s view, this is a clear indication of bad faith use.)
All in all, in the case at hand, nothing indicates that the Respondent has had any other purpose with the registration and use of the disputed domain name than improper commercial gain under the Policy. Therefore, this Panel finds that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled.
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 <vittoriomissoni.com> be transferred to the Complainant.
Date: April 17, 2013