WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Domain Admin, Privacy Protection Service INC d/b/a Privacy Protect.org / Bahadir Kuyucu
Case No. D2014-1816
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 Domain Admin, Privacy Protection Service INC d/b/a Privacy Protect.org of Queensland, Australia / Bahadir Kuyucu of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <fxmissony.com> is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 3, 2014.
On October 30, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On October 30, 2014, the Complainant requested English to be the language of the proceedings. The Respondent sent to the Center an informal email communication on October 31, 2014, stating in Turkish that he does not need any assistance in language matters.
The Center verified that the Complaint together with the amended 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 November 14, 2014. The Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. The Center received an informal email communication in Turkish from the Respondent on December 4, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on December 5, 2014.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 10, 2014. 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 company in the field of fashion marketing clothing and other goods under the famous Missoni brand. The brand derives from the founder of the company, Mr. Ottavio Missoni. Goods under the brand Missoni have been sold worldwide for more than 40 years.
The Complainant is the owner of numerous trademark registrations for the mark MISSONI. The first MISSONI trademark registration dates back to September 2, 1969. In addition, the Complainant is also the owner of registered trademark rights in Turkey since the year 1999.
The Complainant further owns and operates several domain names like <missoni.it> and <missoni.com>.
The true identity of the Respondent remains unclear. It appears that the Respondent is a company or an individual from Turkey.
The disputed domain name was created on July 19, 2013.
At the time of the decision, the disputed domain name resolved to a website offering women's fashion.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's MISSONI trademark.
The Complainant argues that the main differences between the disputed domain name and the Complainant's trademark are the addition of the initial letters "fx" and the replacement of the letter "I" by the letter "y". The Complainant is of the opinion that these differences do not negate the confusing similarity with its trademark, particularly as the letters "i" and "y" are phonetically still identical.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the MISSONI trademark in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the MISSONI trademark, the Respondent was or should have been aware of the trademark when registering the disputed domain name.
Furthermore, the Complainant believes that the Respondent is trying to delay the administrative proceedings by masking its true identity by way of cyberflight. In view of the Complainant, this conduct is a clear indication for the Respondent's bad faith.
The Respondent did not submit a formal Response.
However, the Center received two email communications on October 31, 2014 and December 4, 2014 from the Respondent in Turkish language.
In its first email communication, the Respondent confirms that it does not need any assistance in language matters, apparently because it is able to read and understand the English language.
In its second email communication, the Respondent argues that it would be more appropriate to suspend the administrative proceedings until the Turkish Patent Institute (the competent authority for granting trademarks in Turkey) renders a final decision on what appears to be a pending opposition proceeding against a word and device trademark consisting of F.X. MıSS.NY.
No further communications have been filed by the Respondent.
6. Discussion and Findings
A. Language of the administrative proceedings
The Panel determines in accordance with the Complainant's request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint. In its email communication from October 31, 2014, the Respondent explicitly stated that it does not need any language assistance. The Panel assesses this email communication as a consent by the Respondent to carry on the administrative proceedings in the English language.
In any event, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language. This is particularly likely as the Respondent not least has registered the disputed domain name initially with a privacy shield service located in Australia, where the official language is English.
After the Complaint was filed with the Center, the Respondent changed its contact details. This conduct raises concern of cyberflight.
"Cyberflight" is an attempt to delay or even escape from UDRP administrative proceedings by changing the domain name registration details or the registrar after getting aware of the initiated complaint. Consequently, any transfer of a disputed domain name to another domain name holder and/or registrar during pending proceedings is considered as cyberflight and directly violates the Policy, paragraph 8.
It is evident to the Panel that the disputed domain name <fxmissony.com> was transferred to a new domain name holder after being informed of pending administrative proceedings, and, hence, needs to be assessed as an act of cyberflight. As it will be further discussed below, such conduct regularly indicates bad faith.
C. Legal Assessment
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademarks 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 states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0.
C.1. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the MISSONI trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant has been the owner of a large number of MISSONI trademarks since many decades, including in Turkey.
The disputed domain name is confusingly similar to the Complainant's MISSONI trademark as it nearly fully incorporates the mark. It differs only by the addition of the initials "fx" and the replacement of the letter "i" by the phonetically identical letter "y". These differentiations are in view of the Panel not suitable to preclude a confusing similarity with the Complainant's trademark.
In the Panel's view, the mere addition of the generic Top-Level Domain ("gTLD") ".com" has also no distinguishing effect and, as a general principle, may not be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
C.2. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademark MISSONI in the disputed domain name.
In the absence of a proper Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate one of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services.
The allegation raised by the Respondent in its second email communication of December 4, 2014, that it apparently owns various trademark registrations for F.X. MıSS.NY in Turkey (which are currently contested under opposition proceedings) does not change the Panel's assessment in this regard. In view of the Panel, the referred trademark registrations will in any event not create prevailing rights for the purpose of the Policy, by the Respondent compared to the long standing trademark rights acquired by the Complainant in the mark MISSONI.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C.3. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant's trademarks for commercial gain.
The Panel is convinced that the Respondent must have been well-aware of the Complainant's famous MISSONI trademark when it registered the disputed domain name in July 2013. At the date of registration of the disputed domain name, the Complainant's MISSONI trademark was already registered worldwide and successfully used for many decades, including in Turkey.
Furthermore, the Panel believes that the Respondent has chosen a confusingly similar version of the Complainant's MISSONI trademark in the malicious intent to benefit from the Complainant's renowned trademark with the purpose to mislead Internet users looking for genuine MISSONI women's fashion.
In fact, the Panel believes that the MISSONI trademark is distinctive and well known around the world and, hence, cannot conceive of any good faith use of the disputed domain name which is not related to the MISSONI trademark owned by the Complainant. This assessment is particularly supported by the fact that the Respondent apparently uses the disputed domain name to promote goods which are identical to the core business of the Complainant, namely women's fashion.
Furthermore, the use of a privacy shield is another indication for bad faith registration and use. Although privacy shields might be legitimate in some cases, the Panel cannot conceive of any good reason why the Respondent, who wishes to promote and sell fashion products, prefers to hide its true identity.
Finally, as already indicated above, the transfer of the disputed domain name to a new domain name holder after obtaining knowledge of the Complaint is apparently an act of cyberflight. In line with prior UDRP panels, the Panel is of the opinion that such cyberflight indicates bad faith registration and use under paragraph 4(b) of the Policy. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
C.4. No stay of the administrative proceedings
Due to the findings above, the Complainant has satisfied all three requirements of the Policy for the requested transfer of the disputed domain name.
Consequently and in accordance with paragraph 18(a) of the Rules, there is in the Panel's view no reason to stay the administrative proceedings until the question about any alleged opposition of the Turkish F.X. MıSS.NY trademarks have been clarified by the Turkish Patent Institute. Whatever the decision on the opposition will be, it is the Panel's opinion that it will have no impact on the decision in these current administrative proceedings.
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 <fxmissony.com> be transferred to the Complainant.
Date: December 24, 2014