The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Chris Turner of Clinton, Massachusetts, United States of America.
The disputed domain names <missoniperfume.com> and <missoniscarves.com> are registered with GoDaddy.com, LLC (collectively, the “Disputed Domain Names”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 1, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On March 1, 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 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 3, 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 trade mark on which the Complaint is based is MISSONI. The Complainant is a company in the fashion field and its goods are marketed and promoted worldwide under the MISSONI trade mark. In addition to clothing, the Complainant also markets and sell other products, including scarves and perfumes. The Complainant’s first filing of trade mark registration for MISSONI in Italy dates back to September 2, 1969. In addition, the Complainant is the owner of many national, international and Community trade mark registrations for or incorporating the MISSONI mark. The Complainant is also the registrant of many domain names incorporating the MISSONI mark, including <missoni.com>, <missoni.it>, <missoni.eu>, <missoniprofumi.it> and <missoniprofumi.com> (collectively, the “MISSONI Domain Names”).
In September 2011, the Complainant collaborated with the Target department store to sell a line of fashion called “Missoni for Target” on Target’s website.
The Respondent is an individual residing in Massachusetts, United States of America. The Disputed Domain Names were registered on September 14, 2011, the day after the launch of the Missoni for Target collection. At the date of filing of this Complaint, each of the Disputed Domain Names <missoniperfume.com> and <missoniscarves.com> respectively resolved to a website that sold perfume and scarves under the “Missoni” name. At the time of this Decision, each of the Disputed Domain Names resolve to a website featuring the following message: “Error. Site removed due to violation of the Terms” (the “Websites”).
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Names are confusingly similar to the Complainant’s MISSONI mark, in which the Complainant has rights:
(i) the Complainant is the owner of the famous and well known MISSONI trade mark (and numerous variations thereof) worldwide as well as the MISSONI Domain Names;
(ii) the Disputed Domain Names are confusingly similar to the Complainant’s MISSONI trade mark, company name and the MISSONI Domain Names;
(iii) the only difference between the Disputed Domain Names and the MISSONI trade mark is the addition of the generic terms “scarves” and “perfumes”, which is irrelevant and insufficient to avoid confusion amongst consumers; and
(iv) coupling the MISSONI trade mark with terms indicating the products offered by MISSONI, namely scarves and perfume, misleads consumers into believing that the Disputed Domain Names, the Websites and the goods sold on the Websites might be legitimate, original, authorised and/or linked to the Complainant.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Names:
(i) the Complainant has neither entered into any agreements, nor granted any authorisations or licenses to the Respondent to use the Complainant’s trade marks, trade name or company name;
(ii) the use of domain names containing the Complainant’s entire famous mark makes it difficult to infer a legitimate use of the Disputed Domain Names by the Respondent;
(iii) there is no evidence that the Respondent has trade marks or company activities registered under the “Missoni” brand;
(iv) before the removal of the content on the Websites, the Disputed Domain Names resolved to websites that sold scarves, perfumes, various items presented as Missoni’s products, and products of the Complainant’s competitors;
(v) the Respondent has never made any bona fide use of the Disputed Domain Names since their registration; and
(vi) the Respondent has never been known under the “Missoni” name.
(c) The Disputed Domain Names have been registered and are being used in bad faith:
(i) the Respondent knew of the Complainant’s activities and trade mark when registering the Disputed Domain Names:
- the MISSONI trade marks are worldwide renowned marks and this has been acknowledged by other WIPO UDRP panels in reported decisions;
- the Respondent registered the Disputed Domain Names on September 14, 2011, the day after the highly publicized launch of the Missoni for Target collection (i.e. a special line of products being sold on the Target store’s website) in the United States, where the Respondent is located;
- the Respondent appears to have chosen to register the Disputed Domain Names combining the renowned trade mark MISSONI with terms that refer to items sold by the Complainant, thus clearly having in mind the Complainant’s trade mark and activities;
- the Respondent uses the Disputed Domain Names to sell alleged Missoni products together with products of the Complainant’s competitors;
- the fact that the Respondent chose to register two domain names containing the renowned MISSONI trade mark coupled with generic terms that refer to the Complainant’s products cannot be considered a coincidence;
- the fact that the Respondent is using the Disputed Domain Names to promote (alleged) Missoni products, is definitive proof that he knew of the Complainant’s activities and trade marks;
(ii) the Respondent has never received any authorization to sell products or services under the Complainant’s trade mark;
(iii) the Respondent’s registration of two domain names containing the renowned MISSONI trade mark coupled with generic terms that refer to products sold under the MISSONI trade mark is intended to divert Internet users looking for Missoni products to third parties’ websites offering products of the Complainant’s competitors; and
(iv) no plausible explanation exists as to why the Respondent selected the Disputed Domain Names other than to trade on the goodwill of the Complainant’s renowned trade mark MISSONI.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(c) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel accepts that the Complainant has rights in respect of the MISSONI trade marks on the basis of its registrations in various countries across the world, dating from 1969, more than four decades before the registration of the Disputed Domain Names in 2011.
The Disputed Domain Names incorporate the Complainant’s MISSONI trade mark in its entirety. The only difference between the Disputed Domain Names and the Complainant’s mark is the former’s inclusion of the words “perfumes” and “scarves” as suffixes. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; The Coca-Cola Company v. WhoIs Privacy Service, WIPO Case No. D2010-0088; and Missoni S.p.A. v. Ahmed Salman, WIPO Case No. D2007-1485). The Panel accordingly finds that MISSONI is the distinctive and prominent component of the foregoing Disputed Domain Names, such that the addition of the terms “perfumes” and “scarves” does nothing to distinguish the Disputed Domain Names from the Complainant’s MISSONI mark.
Previous UDRP panel decisions have established that where the addition of a generic term results in an expression or has a descriptive function indicating that the products being sold are the products offered by the Complainant, the addition of such a term is likely to increase the possibility of confusion amongst consumers (see Missoni S.p.A. v. Jonathan Downey, WIPO Case No. D2011-0855 (<missoniscarf.info>); and Missoni S.p.A. v. 仲裁域名/DomainJet, Inc /Jack Sun, WIPO Case No. D2011-1058 (<missonifragrance.com>)). Given that the Complainant’s products also include perfumes and scarves, the addition of the descriptive terms “perfumes” and “scarves” to the Complainant’s trade mark does not reduce but rather increases the likelihood of confusion, thereby misleading consumers into believing that the Websites are offering goods that may have been authorised by or linked to the Complainant.
Accordingly, the Panel finds that the Disputed Domain Names are identical or confusingly similar to trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its MISSONI mark. Further, the Complainant submits that the Respondent has never been commonly known by the “Missoni” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and the Respondent has the burden of proving that he does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant’s evidence.
The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the MISSONI trade mark. The Panel agrees that the use of the Complainant’s famous MISSONI trade mark in its entirety renders no plausible explanation as to why the Respondent selected the trade mark other than to trade on the goodwill of such a mark (see RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242). The Panel also accepts that there is no evidence to suggest that the Respondent is commonly known by either the Disputed Domain Names or the MISSONI mark, and that the use of the Websites to offer for sale products under the Missoni brand as well as products of the Complainant’s competitors precludes a finding of noncommercial use or fair use of the Disputed Domain Names. Accordingly, the Respondent needs to demonstrate that he has acquired rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Names in connection with a bona fide offering of goods or services. However, given the blatant bad faith attributable to the Respondent on the facts of this case (as discussed in relation to bad faith registration and use, below), the Panel is unable to find any such rights or legitimate interests on this basis.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Names in bad faith.
The Panel accepts that the Respondent knew of the Complainant’s MISSONI trade mark at the time of registering the Disputed Domain Names, based in part on the worldwide fame of the MISSONI trade mark as accepted by various WIPO UDRP panelists in previous domain name proceedings involving the Complainant (see Missoni S.p.A. v. BigDoggie.com and Taeho Kim, WIPO Case No. D2002-0545 (<missoni.net>); Missoni S.p.A. v. Caribbean Online International Ltd., WIPO Case No. D2007-0885 (<missonikorea.com>); Missoni S.p.A. v. Liu Zhixian, WIPO Case No. D2010-0371 (<missoniclothing.com>); Missoni S.p.A. v. Nurinet, WIPO Case No. D2010-1068 (<missonicollection.com>); Missoni S.p.A. v. Oneandone Private Registration/Sophia Kilgore, WIPO Case No. D2010-2223 (<missonihometowels.com>); Missoni S.p.A. v CoAuction, WIPO Case No. DCO2010-0047 (<missoni.co>); Missoni S.p.A. v. Jonathan Downey, WIPO Case No. D2011-0855 (<missoniscarf.info>); Missoni S.p.A. v. 仲裁域名 /DomainJet, Inc /Jack Sun, WIPO Case No. D2011-1058 (<missonifragrance.com>).
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313). The Complainant provided evidence that its MISSONI trade mark is well-established worldwide and has been registered since 1971. On the contrary, the Disputed Domain Names were registered on September 14, 2011, the day after the Complainant launched its Missoni for Target collection on Target’s website. The Panel regards the chances of the Respondent incidentally registering the Disputed Domain Names on the day after the launch of the Missoni for Target collection to be too small to be considered a coincidence. Given the overwhelming success of the launch of the Missoni for Target collection on Target’s website and the fact that the Respondent registered the Disputed Domain Names the day after it was launched, the Panel accepts that the Respondent registered the Disputed Domain Names intending to create confusion that the Websites are associated with or authorised by the Complainant, in particular that the products offered for sale via the Websites are products of the Complainant.
Given the degree of fame that the MISSONI trade mark has acquired around the world throughout the many years since its registration and use, the Panel accepts that the Respondent was aware of the Complainant’s MISSONI trade mark at the time of registering the Disputed Domain Names and is using the Disputed Domain Names solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, by attracting Internet users who the Panel accepts would be drawn to the Websites on the mistaken assumption that the Websites were authorised by or connected with the Complainant. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Names in any manner or for any purpose otherwise than in bad faith.
Numerous WIPO UDRP panels have decided that the use of a domain name which is identical or confusingly similar to a complainant’s mark for a site that sells products of its competitors, constitutes an improper use of that complainant’s mark to attract Internet users to the respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site (see for example, Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728; and Missoni S.p.A. v. 仲裁域名/DomainJet, Inc./Jack Sun, WIPO Case No. D2011-1058). Accordingly, the Panel finds that the Respondent’s use of the Disputed Domain Names, which the Panel accepts to be confusingly similar to the Complainant’s MISSONI trade mark, to sell products of the Complainant’s competitors amounts to improper use of the Complainant’s mark to attract Internet users to the Respondent’s site for commercial gain. The Panel further finds that the infringing content on the Websites was not removed of the Respondent’s own accord but rather was taken down due to violation of the relevant terms governing the sites, and the fact that the Websites are no longer operational does not change the Panel’s finding that the Respondent has used the Disputed Domain Names in bad faith.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Names.
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 Names <missoniperfume.com> and <missoniscarves.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: April 17, 2012