WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missoni S.p.A. v. Wuu Ze Fu / LiXiao Ming

Case No. D2014-0182

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 Wuu Ze Fu / LiXiao Ming of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <missonishop.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2014. On February 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 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 February 17, 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 February 20, 2014.

On February 17, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18 and 19, 2014, the Respondent requested that Chinese be the language of the proceeding. On February 20, 2014, the Complainant requested that English be the language of the proceeding.

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 in both Chinese and English, and the proceeding commenced on February 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2014. The Response was filed with the Center on March 15, 2014.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 31, 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

A. Complainant

The Complainant is a company incorporated in Italy and the owner of registrations for the trade mark MISSONI (the “Trade Mark”) in numerous jurisdictions worldwide, the earliest registration (in Italy) dating from 1969. The Trade Mark is a well-known trade mark in the fashion field.

B. Respondent

The Respondent is an individual with an address in China.

C. The Disputed Domain Name

The disputed domain name was registered on November 11, 2013.

D. The Website at the Disputed Domain Name

The disputed domain name previously resolved to a “this domain name is for sale” website, with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant is a leading and well-known company in the fashion field, founded by Ottavio Missoni in Italy in the 1960s.

The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety, together with the non-distinctive, generic word “shop”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant and is not commonly known by the disputed domain name. The Respondent has registered the disputed domain name primarily for the purpose of selling, renting or transferring it by exploiting the goodwill of the Complainant in order to get a higher price. This can be inferred also by the fact that the Respondent has also registered and posted for sale other domain names such as <firefoxshop.com>, <tewiter.com> and <baiduphone.net> (the “Third Party Domain Names”). In addition to posting the disputed domain name for sale via websites with sponsored links, the Respondent has listed the disputed domain name for sale via “www.sedo.com”. It is also listed for sale when conducting a WhoIs search.

The Respondent has also used the disputed domain name in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known Trade Mark.

Given the notoriety of the Trade Mark, the Respondent must have had actual knowledge of the Trade Mark at the time it registered the disputed domain name.

The Respondent has engaged in cyberflight by transferring the disputed domain name from Wuu Ze Fu to LiXiao Ming (a person sharing the same phone number, fax number and address as Wuu Ze Fu) after notice of the Complaint.

For all of these reasons, the disputed domain name has been registered and used in bad faith.

B. Respondent

The Respondent made the following submissions in the Response.

The disputed domain name is not confusingly similar to the Trade Mark. The Complainant does not have any trade mark registrations for “missonishop”. The original meaning of the disputed domain name is “Miss On I shop” which has no relationship whatsoever with the Trade Mark. The disputed domain name is visually and aurally dissimilar to the Trade Mark and there is no likelihood of confusion between the disputed domain name and the Trade Mark.

The Respondent originally intended to construct his own website for the disputed domain name under the name “Miss On I shop” and, even before receipt of the Complaint, did not intend to have any information about the Complainant on his website.

In the 21st century ecommerce is increasingly important. The Respondent registered the disputed domain name in order to set up his own “Miss On I shop” website so as to engage in ecommerce. The Respondent did not register the disputed domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant for a price higher than the registration costs incurred by the Respondent. The Complainant’s business is not well known in China, and there is no competition between the Complainant and the Respondent. The Respondent did not register the disputed domain name in order to undermine the business of the Complainant. The disputed domain name has not been registered and used in bad faith.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding, for the following reasons:

1. The disputed domain name and the “Third Party Domain Names” have only ever resolved to Italian or English language websites;

2. Following receipt of the Complaint, the Respondent immediately transferred the disputed domain name to the current registrant;

3. The disputed domain name is in Latin characters and contains the English word “shop”;

4. The disputed domain name has been posted for sale on “www.sedo.com” which is an English language website;

5. All of the above indicates the Respondent is conversant in English;

6. The Complainant is an Italian company and proceeding in Chinese, a language with which the Complainant is not familiar, will involve further costs.

The Respondent has requested that Chinese be the language of the proceeding, for the following reasons:

1. The language of the registration agreement for the disputed domain name is Chinese;

2. The Respondent’s English language proficiency is not high;

3. The Respondent has used Google translate to translate the case materials into Chinese, which means the quality of the translation is not very good. It would therefore be unfair to the Respondent if the proceeding were to be conducted in English.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

On the evidence filed by the Complainant, the Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is sufficiently proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:

1. It will accept the filing of the Complaint in English;

2. It will accept the filing of the Response in Chinese;

3. It will render its Decision in English.

6.2 Cyberflight

Paragraph 8(a) of the Policy expressly prohibits domain name registrants from transferring disputed domain names to another holder during a pending administrative proceeding.

Prior UDRP decisions have held that domain name proceedings commence as at the date of filing of the complaint, not the date of formal notification of the proceedings (Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688, citing PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917 and Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292).

In the present proceeding, the Respondent Wuu Ze Fu transferred the disputed domain name to the Respondent LiXiao Ming on February 7, 2014, the day following the date of filing of the Complaint.

The Respondent has not made any submissions, in the Response or otherwise, regarding the apparent transfer of the disputed domain name in these circumstances.

The Panel concludes, in all the circumstances of this proceeding, the Respondent has engaged in cyberflight in order to delay or frustrate the proceeding, in direct contravention of paragraph 8(a) of the Policy.

The Panel finds that such conduct amounts to cogent evidence of bad faith (Humana Inc v CDN Properties Incorporated, supra).

6.3 Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 40 years.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The disputed domain name comprises the Trade Mark in its entirety together with the non-distinctive, generic word “shop” which does not, in the Panel’s view, serve to distinguish the disputed domain name from the Trade Mark in any significant way.

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 40 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To date, the only use of the disputed domain name has been in respect of Italian and English language “this domain name is for sale” websites, with sponsored links.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:

By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s 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.

Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:

Circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.

The Respondent does not claim in the Response (or otherwise) to be engaged in a legitimate business of registering domain names in order to monetise them via sponsored links. The evidence suggests, to the contrary, the Respondent has registered the disputed domain name and the Third Party Domain Names, all of which comprise in their entirety well-known trademarks, or misspelt versions of well-known trademarks, (and without the authorisation of the trade mark owners), in order to (1) gain revenue via unauthorised sponsored links; and (2) offer the domain names for sale.

In the Panel’s view, in all the circumstances of this proceeding, the conduct of the Respondent in registering the disputed domain name (as well as the Third Party Domain Names), and offering them for sale via websites with sponsored links, satisfies the requisite element of bad faith, under both paragraph 4(b)(iv) and paragraph 4(b)(i) of the Policy.

The Panel’s finding that the Respondent has engaged in cyberflight amounts to further grounds for a finding of bad faith.

Notwithstanding the Respondent’s unsubstantiated assertion of its intention to use the disputed domain name to develop a website to be used for ecommerce, the Panel notes that, as at the date of this decision, the disputed domain name is currently resolved to a “website under construction” website, with sponsored links. The Panel concludes that this change amounts to further evidence of bad faith.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 disputed domain name <missonishop.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Date: April 14, 2014