The Complainant is Missoni S.p.A. of Sumirago (VA), Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Matt Justice of Orlando, Florida, of United States of America.
The disputed domain name <missonitarget.info> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 19, 2012, the Center transmitted by email t GoDaddy.com LLC. a request for registrar verification in connection with the disputed domain name. On March 19, 2012, GoDaddy.com, LLC. 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 26, 2012. 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.
In the present case, the Complainant is a well-known Italian fashion company. The company is on the verge to celebrate its sixtieth anniversary. This ready-to-wear trademark has always been on the forefront of trends and encountered a success of utmost importance on the international level as well as nationally. MISSONI happens to be a trade name, a trademark and the family name of its designer, Ottavio Missoni as well. Since its inception, the trademark has been marketed in the world and this notoriety has driven miscellaneous cybersquatters, the number of Panel decisions involving Complainant witnesses such a pattern.
Complainant owns miscellaneous MISSONI trademark registrations and notably:
-International trademark MISSONI n°720019, of August 6, 1999 and duly renewed, protecting goods in classes 18, 24 and 25;
-Community trademark MISSONI n°001164987, of May 7, 1999 and duly renewed protecting goods in classes 18, 24 and 25;
-United States registered trademark n°73007314, of December 9, 1975 and duly renewed.
Complainant was present very early on the Web and is particularly committed to communicate about its brand on the Internet. To meet this end, it registered miscellaneous domain names among which:
|
Domain name |
Date of creation |
|
<missoni.com> |
April 13, 1999 |
|
<missoni.it> |
January 25, 1999 |
|
<missoni.eu> |
July 6, 2006 |
On September 13, 2011, Complainant launched hand in hand with the US retail Company Target a collection which was specially designed for the Target website. One month later, on October 12, 2011, Respondent registered the disputed domain name <missonitarget.info> via the Registrar GoDaddy.com LLC. The website to which the domain name redirected before the Complaint was filed featured a YouTube video with a woman describing MISSONI products which were allegedly proposed on Target. In addition, the website was headed “Missoni For Target” and MISSONI products were available for purchase. The website “www.missonitarget.info” currently resolves to an inactive page.
Firstly, Complainant contended that it has rights on the trademark MISSONI and supplies miscellaneous proofs in order to mirror its assertion. Complainant asserted that the disputed domain name <missonitarget.info> is confusingly similar with the trademark MISSONI in which it has rights. The mere adjunction of the descriptive term “target” and of the extension “.info” are not sufficient to circumvent the confusing similarity between the disputed domain name and Complainant’s trademark. Then, Complainant enumerates reasons why Respondent added the term “target” and pinpoints that it was an obvious reference to the launch of a MISSONI collection on the website of Target, a US retailer.
Complainant underlines that Respondent has no rights or legitimate interest in the disputed domain name. Complainant neither granted any license to Respondent nor gave to him any authorization to register the disputed domain name. Respondent is selling products marketed MISSONI through the disputed domain name. Further, Respondent does not seem to be known under the name MISSONI.
Lastly, Complainant argues at length on the fact that MISSONI is a well-known trademark. The numerous Panel decisions which were issued in his favor witnessed the fame of Complainant according to the Complaint. The time of registration, namely one month after the launch of the business partnership with Target, would demonstrate that Respondent was aware of Complainant’s trademark. Moreover, Complainant asserts that Respondent registered 1 178 domain names incorporating third parties’ well-known trademarks.
The Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel is satisfied with the evidence adduced by Complainant in order to prove its trademark rights in the trademark MISSONI which also is the Complainant’s company name. Complainant has also proven to be the owner of miscellaneous domain names comprising the sign “MISSONI” among which <missoni.it>, <missoni.com> and <missoni.eu>.
The disputed domain name reproduces the trademark MISSONI in its entirety with the mere adjunction of the word “target”. The trademark MISSONI has been deemed to be well-known repeatedly by panels and even in recent panel decisions (See Missoni S.p.A v. William Song, WIPO Case No. D2012-0208 and Missoni S.p.A v. Easy Shop Ping, WIPO Case No. D2012-0117). The incorporation of a well-known trademark in a domain name has been deemed to be sufficient to flag that a domain name is identical or confusingly similar to a complainant’s registered trademark (See AREVA v. Saint James Robyn Limoges, WIPO Case No. D2010-1017). Moreover, MISSONI is the dominant and most memorable part of the domain name.
The word “target” can be seen either as being a generic word or as the trademark of the US Company Target. As it was saliently underlined within the Complaint, Complainant designed items which were planned to be sold on the website of Target, a famous retail company. As a result, “target” can also be seen as being the undisputed trademark of a US Company which is not a party to the present proceeding. In light of the business relationship which exists between Complainant and the Target Company, the adjunction of the word “target” heightens the risk of confusion. As it was already found by previous panels, the adjunction of a third party trademark in a domain name does not circumvent the finding of similarity between a disputed domain name and the complainant’s trademark (See Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 and ACCOR, SoLuxury HMC v. Whois privacy services Domain protect LLC/Alex Gusev, WIPO Case No. D2012-0389 :”the addition of other marks does not create a distinct mark/domain name, capable of overcoming a claim of confusing similarity, it merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the Domain Name”).
Given the relationship between Complainant and the Target Company, consumers will be lured on Respondent’s website and will be prone to believe that the goods marketed MISSONI are offered on Target Company’s official website.
In a recent WIPO UDRP decision where Complainant was a party, the panel found that the domain name <missonifortarget.com> was confusingly similar to the trademark MISSONI: “given that the Complainant had at the time of registration of the Disputed Domain Name, just launched an extremely successful “Missoni for Target” fashion line, the addition of the descriptive terms “for target” to the Complainant’s trade mark does not reduce but rather increases the likelihood of confusion, thereby misleading consumers into believing that the Website is offering goods that may have been authorized by or linked to the Complainant” (See Missoni S.p.A v. Chris Ditchfield, WIPO Case No. D2012-0417).
In light of the above, the Panel finds that that the disputed domain name is confusingly similar with Complainant’s trademarks, and thus that Complainant has satisfied paragraph 4(a)(i) of the Policy.
It occurs that Respondent failed to provide any observation in order to rebut Complainant’s prima facie case. The fact that Respondent remained silent suggests that it has no rights or legitimate interests on the litigious domain name.
In light of the screenshots provided by Complainant, Respondent has not engaged in a noncommercial or fair use of the disputed domain name as the disputed domain name resolves to a website displaying a video where Target products are described and where MISSONI products are sold. Based on these records provided by Complainant, in this Panel’s view, it is more likely than not that Respondent derives economic profit from the use of the litigious domain name. Such actions cannot be deemed as being bona fide offering of goods or services as Respondent does not seem to have received any endorsement or license from Complainant.
The records provided by Complainant reflect Respondent stockpiling of domain names. Actually, Respondent seems to have registered some 1 178 domain names incorporating widely-known trademarks. Multiple registrations of domain names further suggests Respondent’s lack of bona fide (see IG Index Plc v. Fruit Group Inc., WIPO Case No. D2000-1413).
In addition, Respondent is an individual who does not seem to be known under the name MISSONI in light of the WhoIs data provided by Complainant (See Wells Fargo & Co. v. Onlyne Corp. Services 11, Inc NAF Claim No. 198969: “Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name “welsfargo” in any derivation.”).
Accordingly, in the absence of any evidence to the contrary, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.”
The Panel acknowledged that Respondent cannot but have been aware of the existence of Complainant. This inference can be drawn in light of Complainant’s fame, as also noted in previous UDRP decisions (See Missoni S.p.A v. BigDoggie.com and Taeho Kim, WIPO Case No. D2002-0545 (<missoni.net>); Missoni S.p.A V; Darrell Jordan, WIPO Case No. D2012-0349 (<missoniknockhoff.com> and <missoniknockoffs.com>; Missoni S.p.A v. Easy Shop Ping, WIPO Case No. D2012-0117 (<missonisale.com>); Missoni S.p.A v. William Song, WIPO Case No. D2012-0208 (<mmissoni.info> and <mmissoni.org>).
The contemporaneity of the registration of the disputed domain name with the launch of a new MISSONI collection designed for Target indicates that Respondent registered the disputed domain name in bad faith. The proximity of the registration of a domain name incorporating the word “target” with the launch of Complainant’s collection designed for Target was already deemed as evidencing bad faith in previous decisions involving Complainant (See Missoni S.p.A v. Chris Ditchenfield, WIPO Case No. D2012-0417; Missoni S.p.A v. William Song, WIPO Case No. D2012-0208). It appears that the launch of the MISSONI collection designed for Target led to the registration of miscellaneous domain names bearing on the sign MISSONI, it is regrettable that no link can be inferred between the different respondents engaged in these different proceedings.
Moreover, Respondent seems to be engaged in a pattern of stockpiling domain names as it appears to have registered not less than 1 178 domain names. Stockpiling nearly two thousand domain names mirrors that Respondent registered the litigious domain name in bad faith, as has been found by previous panel decisions (See American Management Association International v. Mode L, WIPO Case No. D2007-0418).
Besides, using a well-known trademark in order to bait Internet users on a website which has not received any endorsement from the trademark owner cannot amount to a fair or legitimate use of a domain name.
Currently, the content of the website to which the disputed domain name resolves is an error page. Such a change of content is certainly linked with the filing of the Complaint before the Center. However, it formerly resolved to a page offering Complainant’s products for sale and as such was likely to benefit economically Respondent who is deriving profit in adducing itself as being an authorized website affiliated with Complainant.
For all these reasons, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. Therefore, Complainant has satisfied the third requirement of paragraph 4(a)(iii) of 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 disputed domain name <missonitarget.info> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: May 10, 2012