The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Easy Shop Ping of Nanchong, China.
The disputed domain name <missonisale.com> (the “Disputed Domain Name”) is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2012. On January 24, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On January 31, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 31, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 1, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 7, 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.
The Complainant is a leading fashion company based in Italy and which used MISSONI as its main trademark. The Complainant’s goods are marketed and promoted around the world for many years. Started by founders Ottavio and Rosita Missoni in 1953 as a small basement knitting workshop in a small Italian town, the Complainant has since opened boutiques around the world including New York, United States of America, Paris, France, Milan, Italy, Munich, Germany, Osaka, Japan, Singapore, Hong Kong, China and Guangzhou, China.
The Complainant’s first trade mark application for MISSONI dates back to September 2, 1969. The Complainant currently owns many registrations for trademarks incorporating the word “missoni” around the world, including the following:
|
Jurisdiction |
Registration Number |
Registration Date |
|
Madrid International Registration |
555050 |
May 30, 1990 |
|
Community Trademark Registration |
003773165 |
August 8, 2005 |
International trade mark registration 555050 designated China among other countries.
The Complainant has also registered many domain names incorporating the mark MISSONI, including <missoni.it>, <missoni.com>, <missoni.asia>, and <missoni.com.cn>.
The Complainant started publishing its information online via its website at “www.missoni.it” in the year 2000. The trademark MISSONI has been the subject matter of many prior panel decisions and has been recognized as a well-known mark by prior panels (e.g., Missoni S.p.a. v. BigDoggie.com and Taeho Kim, WIPO Case No. D2002-0545; Missoni S.p.A. v. Caribbean Online International Ltd, WIPO Case No. D2007-0885; Missoni S.p.A. v. Liu Zhixian, WIPO Case No. D2010-0371).
The Disputed Domain Name was registered on September 10, 2011. The Disputed Domain Name does not appear to resolve to any website. Other than the WhoIs information associated with the Disputed Domain Name, not much is known about the Respondent.
The Complainant contends that:
1. The Disputed Domain Name is identical or confusingly similar to the trademark MISSONI. The only difference is in the addition of the word “sale” in the Disputed Domain Name which is insufficient to avoid confusion with the trademark MISSONI;
2. The Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Complainant has not granted any agreements, authorisations or licenses to the Respondent to use the Complainant’s trademarks. The Respondent does not have any trademark registrations for MISSONI and has never been known under the name MISSONI; and
3. The Disputed Domain Name was registered and used in bad faith. The Respondent has registered over 200 other domain names containing well-known trademarks such as <americaneaglesale.com>, <donnakaransale.com>, <oakleysalesunglasses.com>, <louisvuittonhandbagssaleusa.com>, <robertocavallisale.com>, <escadasale.com> and <viviennewestwoodssale.com>. The Respondent knew of the Complainant and the trademark MISSONI when registering the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreement is Chinese. The default language of the proceeding is accordingly Chinese but the Panel may decide otherwise under paragraph 10 of the Rules. However, the Complainant has requested that English be adopted as the language of the proceeding. Having considered the circumstances, the Panel agrees to accede to the Complainant’s request for the following reasons:
1. The Complainant is not familiar with Chinese. To proceed in Chinese will likely increase the cost of proceeding to the Complainant and lead to delay in the proceeding;
2. The Respondent has been notified of the proceeding in both English and Chinese and the Respondent has chosen not to comment on the language of the proceeding or to respond to the Complainant; and
3. There is no practical necessity to proceed in Chinese and doing so would serve no foreseeable benefit to the swift and fair disposal of the matter.
To succeed in this proceeding, the Complainant must show that all three limbs of paragraph 4(a) of the Policy are established on the facts.
The Panel accepts that the Complainant holds rights in the trademark MISSONI by virtue of owning the various trademark registrations submitted in evidence. The Disputed Domain Name includes the trademark MISSONI in its entirety.
The only difference between the Disputed Domain Name and the trademark MISSONI is the addition of the suffix “sale” which simply indicates that goods are offered and available in association with the Disputed Domain Name. It is established by many prior panel decisions that the addition of a descriptive suffix or prefix to a trademark in a domain name does not distinguish the trademark from the domain name. The Panel is of the view that a descriptive suffix like “sale” does not serve to distinguish the Disputed Domain Name from the trademark MISSONI and sees no reason to depart from the position of prior panels.
In the circumstances, the first limb of paragraph 4(a) of the Policy is established.
The Complainant has confirmed that it has not granted any agreements, authorisations or licenses to the Respondent to use the trademark MISSONI. The Respondent is an individual and is not known by the name MISSONI. There is nothing in the facts before the Panel to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Name. Since no response was filed to rebut the Complainant’s prima facie case, the second limb of paragraph 4(a) of the Policy is also established.
The form of bad faith known as “passing holding” was recognized over 10 years ago in the decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Many prior panels have adopted the reasoning in that case to deal with the cybersquatting of well-known marks (e.g., Kentucky Fried Chicken International Holdings, Inc v. Kimbeomsung, WIPO Case No. D2002-0004; World Wrestling Federation Entertainment Inc (WWFE) v. M. de Rooij, WIPO Case No. D2000-0290; Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414; UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882).
Based on the evidence, the Panel accepts that MISSONI is a well-known mark. “Missoni” is not an otherwise meaningful word. For an individual in China to select “Missoni” for registration as a domain name, that individual must in all likelihood possess pre-existing knowledge and awareness of the mark MISSONI. The Panel is unable otherwise to conceive of any plausible reason for the Respondent’s selection of the Disputed Domain Name. The Respondent appears to be simply holding the Disputed Domain Name and there is no evidence that the Disputed Domain Name is being used in relation to a website or other online service. In the absence of any explanation by the Respondent, the Panel concludes that the circumstances justify a finding of bad faith in the manner of “passive holding” established by the line of panel decisions following Telstra Corporation Limited v. Nuclear Marshmallows, supra.
In addition, paragraph 4(b)(ii) of the Policy describes the following circumstances as an example of bad faith:
“[the Respondent has] 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.”
The registration of the Disputed Domain Name certainly prevented the Complainant from registering the same domain name. The Panel accepts the Complainant’s submission that the domain names <americaneaglesale.com>, <donnakaransale.com>, <oakleysalesunglasses.com>, <louisvuittonhandbagssaleusa.com>, <robertocavallisale.com>, <escadasale.com> and <viviennewestwoodssale.com> incorporated the trademarks of others. The Panel notes that these domain names were all registered in the name “wuwei” of “sichuang city nanchong”. The Respondent is also identified as “wuwei” of “sichuang city nanchong” in the WhoIs information of the Disputed Domain Name. The WhoIs information of the Disputed Domain Name also states essentially the same organisation name, contact telephone number, fax and email as these other domain names. As such, the Panel believes that the Respondent is the registrant of these other domain names. These other domain names exhibit exhibited a pattern of conduct described in paragraph 4(b)(ii) of the Policy.
Taking all the circumstances into consideration, the Panel concludes that the Disputed Domain Name was registered and is being used (in the sense of passive holding) in bad faith. The third limb of paragraph 4(a) of the Policy is established.
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, <missonisale.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: April 4, 2012