WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong Wu

Case No. D2014-0420

1. The Parties

The Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondents are Chen Zhu, Chen Guang Yao, Cheng-Hong Wu of Beijing, China.

2. The Domain Names and Registrars

The disputed domain names <missonihome.biz>, <missonihome.info>, <missonihome.net>, <missoni.name>, <m-missoni.mobi> and <m-missoni.name> are registered with eNom, HiChina Zhicheng Technology Ltd., BigRock Solutions Pvt Ltd., GoDaddy.com, LLC, BigRock Solutions Pvt Ltd. (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2014. On March 18, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 18 and 19, 2014, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details. On March 26, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 27, 2014, the Complainant confirmed its request that English be the language of the proceeding. On March 28, 2014, the Respondent Chen Zhu submitted its request that Chinese be the language of the proceeding.

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 Respondents of the Complaint in both English and Chinese, and the proceedings commenced on April 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 24, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 7, 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, Missoni S.p.A, is a company existing under the laws of Italy and having the principal place of business in Sumirago (Varese). It is a company in the fashion field and its goods are marketed and promoted in almost every country. The Complainant is the owner of the following registered trademarks: M-MISSONI, MISSONI HOME and MISSONI ("MISSONI marks"). The Complainant has been using the MISSONI marks for many years and its first trademark filing dates back to 1969 in Italy.

The Complainant is also the owner of the domain name <missoni.com> and has published company information such as description of the main goods and services for which the Complainant uses its trademark via Internet for years through its official website "www.missoni.com". The Complainant has registered a number of countries and generic domain names corresponding to its trademarks and has a substantial Internet presence.

The disputed domain names <missonihome.biz>, <missonihome.info>, <missonihome.net>, <m-missoni.mobi>, <m-missoni.name> and <missoni.name> were respectively registered by the Respondents on June 23, 2008, June 21, 2008, June 21, 2008, October 4, 2013, November 17, 2007 and November 17, 2007.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

1. The Complainant is the owner of the following registered trademarks: M-MISSONI, MISSONI HOME and MISSONI. The Complainant has been using the MISSONI marks for many years and its first trademark filing dates back to 1969 in Italy.

2. The disputed domain names integrate the trademarks MISSONI HOME, M-MISSONI and MISSONI in their entirety.

3. The only difference between the disputed domain names and the Complainant's trademarks consists in the addition of the generic Top-Level Domain ".biz", ".info", ".net", ".mobi" and/or ".name" respectively. This technical difference is insufficient to avoid confusion between the MISSONI marks, i.e. MISSONI HOME, M-MISSONI and MISSONI and the disputed domain names.

The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names on the following grounds:

1. The Complainant asserts that no agreements, authorisations or licenses have been granted to the Respondents to use the Complainant's trademarks, trade name or company name;

2. The use of the disputed domain names identical to the Complainant's MISSONI marks, makes it difficult to infer a legitimate use of the disputed domain names by the Respondent;

3. There is no evidence that the Respondents have trademarks or company activities registered under the MISSONI marks.

4. The Respondent has posted the disputed domain names <missonihome.net>, <m-missoni.mobi>, <missoni.name> and <m-missoni.name> for sale, whereas the disputed domain names <missonihome.biz>, <missonihome.info> redirect to "www.searchnet.com", a website essentially composed of sponsored links.

5. It appears that the Respondents acquired the disputed domain names primarily for the purpose of selling them to the Complainant for a price much higher than the costs of registration.

6. Since registration of the disputed domain names, the Respondents have never made any bona fide use of the disputed domain names.

7. The Respondents have never been known under the MISSONI marks.

The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:

1. There are reasons to believe that the Respondents knew of the Complainant's activity and trademark when registering the disputed domain names: (a) the MISSONI marks are renowned marks in the world; (b) the Respondents appear to have chosen to register the six disputed domain names, containing and/or corresponding to the renowned trademarks of the Complainant which clearly having in mind the Complainant's trademarks and activities; (c) the Complainant started to publish company information via Internet through its official website at "www.missoni.it" in the year 2000; (d) the Complainant has registered numerous domain names corresponding and or comprising its trademark MISSONI.

2. The use of the Complainant's mark in the disputed domain names makes it difficult to infer a legitimate use of the disputed domain names by the Respondent. 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 trademarks.

3. As regards the Respondents' use of the disputed domain names, it appears that the Respondents acquired the disputed domain names primarily for the purpose of selling them to the Complainant.

4. The Complainant wishes to point out that among the domain names registered by the Respondents there are several comprehensive of and/or corresponding to renowned trademarks which presumably the Respondents do not have legitimate rights, such as <hugo-boss.biz> (registrant Cheng-Hong Wu, email […]@msn.com), <misssixty.biz> (registrant YueZhu Chen, email […]@hotmail.com), <ermenegildo-zegna.biz> (registrant Cheng-Hong Wu, email […]@msn.com), <z-zegna.com> (registrant Cheng-Hong Wu, email […]@msn.com), <miumiu.name> (registrant Wu Cheng-Hong, email […]@msn.com), <adidas.tw> (Wu Cheng Hong, email […]@hotmail.com).

B. Respondent

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Consolidation of Multiple Respondents

Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the domain names or the websites to which the disputed domain names resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16. Common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and share postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Policy. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

The Panel notes that the Respondents Chen Zhu, Chen Guang Yao and Cheng-Hong Wu share the same telephone number, and the Respondents Chen Guang Yao and Cheng-Hong Wu share the same postal address. In addition, according to an email correspondence between the Complainant and the Respondent Chen Zhu dated October 24, 2013, the Respondent Chen Zhu claims to be the holder of the disputed domain names <missonihome.biz>, <missonihome.info>, <missonihome.net> and <m-missoni.mobi>, while according to the Registrar's verification, the disputed domain name <missonihome.net> is registered under the name of Chen Guang Yao and the disputed domain name <m-missoni.mobi> is registered under the name of Cheng-Hong Wu.

In the circumstances, the Panel finds that the Complainant has established that the disputed domain names are subject to common control and that such common control is sufficient to justify consolidation of the Complainant's claims against the Respondents (hereinafter "the Respondent"). The Panel further finds in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.

6.2. Language of the Proceeding

According to the information received by the Center from the Registrar HiChina Zhicheng Technology Ltd., the language of the Registration Agreement for the disputed domain name <missonihome.net> is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent has responded with a request for the proceedings to be conducted in Chinese claiming that he/she is not conversant in English.

After considering the circumstances of the present case and the submissions from the Complainant and the Respondent, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel's discretion under the Policy

Paragraph 11 of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) there is evidence adduced by the Complainant in the form of email correspondence between the parties in which the Respondent attempted to sell the disputed domain names to the Complainant which indicates that the Respondent is conversant with the English language; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations; (d) only the disputed domain name <missonihome.net> was registered with a Chinese Registration Agreement, whilst the other five disputed domain names were registered with English Registration Agreements. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.3. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the MISSONI marks in connection with clothes and accessories. The Panel finds that the Complainant's MISSONI marks are widely-known for clothes and other fashion items offered by the Complainant.

In assessing the degree of similarity between the Complainant's trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademarks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.

The disputed domain names incorporate in the entirety the Complainant's registered MISSONI marks, i.e. M-MISSONI, MISSONI HOME and MISSONI with the addition of the generic Top-Level Domains such as ".biz", ".info", ".net", ".mobi" and/or ".name". It is a well-accepted principle that the addition of Top-Level Domain suffixes such as ".biz", ".info", ".net", ".mobi" and/or ".name" is not a distinguishing factor.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's MISSONI marks and (b) the lack of distinguishing factors between the disputed domain names and the Complainant's marks, the Panel therefore finds that the disputed domain names are identical or confusingly similar to the MISSONI marks in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms "m-missoni", "missoni home" or "missoni";

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the MISSONI marks;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;

(4) the Complainant and its MISSONI marks enjoy a widespread reputation and high degree of recognition in connection with clothes and other fashion items and the MISSONI marks are registered in many countries all over the world, including China in which the Respondent appears to reside. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the MISSONI marks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview 2.0, paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or

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

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 of the respondent's website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the wide spread reputation of the Complainant and its MISSONI mark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with an intent to create an impression of association with the Complainant and its products.

The fact that the Respondent has chosen to register six domain names all incorporating the Complainant's MISSONI marks, i.e. M-MISSONI, MISSONI HOME and MISSONI in their entirety lends weight to the argument that the Respondent has prior knowledge of the Complainant's business presence and its marks. This argument has not been rebutted by the Respondent.

Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a r easonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, there is evidence which shows that the Respondent has registered the disputed domain names for the purpose of reselling to the Complainant or its competitor at a price which is higher than their registration fees. There is further evidence that the disputed domain names are used to redirect Internet traffic in search of the Complainant's goods and services to third parties' websites essentially composed of sponsored links. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of his/her use of the disputed domain names.

The Panel finds that the Complainant has adduced evidence and the circumstances indicate that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain names under paragraph 4(b)(i) of the Policy. Furthermore, the Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's disputed domain names which redirect to third party's websites essentially composed of sponsored links under paragraphs 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's MISSONI marks and a lack of plausible explanation for the choice of incorporating the Complainant's famous trademark in the disputed domain names, the registration of the disputed domain names for the primary purpose of reselling to the Complainant or its competitors and use of the disputed domain names to direct traffic to various third party websites essentially composed of sponsored links are all relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 names <missonihome.biz>, <missonihome.info>, <missonihome.net>, <missoni.name>, <m-missoni.mobi> and <m-missoni.name> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: May 21, 2014