WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A. v. Gerry Downey
Case No. D2012-1447
1. The Parties
Complainant is Missoni S.p.A. of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Gerry Downey of Ennis, Ireland.
2. The Domain Name and Registrar
The disputed domain name <missonihavaianas.org> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 16, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 21, 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.
4. Factual Background
Complainant is a company in the fashion business with legal domicile in Italy.
Complainant has submitted evidence that it is the registered owner of numerous trademarks worldwide relating to the designation “Missoni”, e.g.:
- Word mark MISSONI, World Intellectual Property Organization (WIPO), Registration Number: 586554, Registration Date: June 19, 1992; Status: Active.
- Word mark MISSONI, Office for Harmonization in the Internal Market (OHIM), Registration Number: 001164987, Registration Date: October 2, 2000; Status: Active.
- Word mark MISSONI, Irish Patents Office, Registration Number: 0884027, Registration Date: January 30, 2006; Status: Active.
Complainant further owns, inter alia, the domain name <missoni.com> which redirects to Complainant’s official company website at “www.missoni.com” promoting Complainant’s fashion business and products.
The disputed domain name <missonihavaianas.org> was registered on February 14, 2012. It currently redirects to a website at “www.missonihavaianas.org” which displays the message: “Your website is up and running!”
Respondent owns at least two more domain names, namely <merrellsirensport.com> as well as <canonmp280ink.com>.
Complainant has also submitted evidence of the existence of a Design and Sales Agreement dated October 1, 2010 between Complainant and various entities of the Alpargatas group of companies for the purpose of developing, promoting, marketing and selling a co-branded collection of sandals and espadrilles under the trademarks MISSONI and HAVAIANAS.
Complainant requests the disputed domain name to be transferred to Complainant.
5. Parties’ Contentions
A. Complainant
Complainant states that it is a leading company in the fashion field and that its goods are marketed and promoted in almost every country worldwide. As a consequence, Complainant states that the MISSONI trademark has been extensively used for many years and is meanwhile well-known throughout the entire world.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s MISSONI trademark as well as to its company name Missoni S.p.A. and to its domain name <missoni.com> because (1) the main difference between the disputed domain name and Complainant’s MISSONI trademark consists in the simple edition of the term “Havaianas” and (2) this term relates to the HAVAIANAS trademark of Alpargatas of Brazil with whom Complainant collaborates with respect to the co-branded Missoni/Havaianas collection of sandals and espadrilles so that the combination of the MISSONI and the HAVAIANAS trademark in the disputed domain name is not sufficient to avoid confusion, but on the contrary increases it.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) no agreements, authorizations or licenses have been granted to Respondent to use Complainant’s trademarks, trade name and/or company name and (2) the use of the disputed domain name containing Complainant’s entire MISSONI trademark makes it difficult to infer a legitimate use of the disputed domain name by Respondent.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) given the fact that the MISSONI trademark is well-known worldwide, there is reason to believe that Respondent knew of Complainant’s MISSONI trademark at the time of registration of the disputed domain name, (2) Respondent registered the disputed domain name only several months after the launch of the first Missoni/Havaianas collection and a few months before the awaited launch of the second Missoni/Havaianas collection, (3) Respondent chose to register a domain name combining two well-known trademarks, e.g., MISSONI and HAVAIANAS, (4) Respondent has not used the disputed domain name since its registration, but is merely passively holding it and finally (5) Respondent appears to have registered further domain names containing third parties’ well-known trademarks, e.g., <merellsirensport.com> and <canonmp280ink.com>.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant; however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that Complainant owns registered trademark rights in the designation MISSONI.
Furthermore, the disputed domain name <missonihavaianas.org> is confusingly similar to those MISSONI trademarks.
Based on Complainant’s undisputed contentions, the MISSONI trademark has been deemed well-known by this Panel, a finding that is in accordance with a number of recent UDRP decisions (see e.g., Missoni S.p.A. v. Hi Koo,
WIPO Case No. D2012-0573; Missoni S.p.A. v. William Song,
WIPO Case No. D2012-0208; Missoni S.p.A. v. Easy Shop Ping,
WIPO Case No. D2012-0117). Moreover, the disputed domain name incorporates the MISSONI trademark in its entirety. Consequently, this Panel concludes that there is confusing similarity between Complainant’s well-known MISSONI trademark and the disputed domain name since the incorporation of a well-known trademark in its entirety into a domain name creates a relevant likeliness of an association of the two and, thus, the existence of a confusing similarity (see e.g., Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489).
Moreover, given the existing business relationship between Complainant and the Alpargatas entities as owner of the HAVAIANAS trademark, the combination of the two trademarks MISSONI and HAVAIANAS in the disputed domain name heightens such risk of confusion rather than reducing it (see also: Missoni S.p.A. v. Hi Koo,
WIPO Case No. D2012-0573).
Therefore, the Panel finds the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently neither has made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant obviously has not authorized Respondent to use its MISSONI trademark in any possible way.
Moreover, there is no reason to believe that Respondent’s name somehow corresponds to the disputed domain name.
On the contrary, Complainant has provided evidence that Respondent apparently owns at least two more domain names which correlate with other third parties’ (well-known) trademarks, namely <merrellsirensport.com> as well as <canonmp280ink.com>. This fact not only supports the finding that Respondent has not been commonly known by the disputed domain name, but also that Respondent has not made a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Panel clearly notes that so far the disputed domain name has apparently not yet been made use of by Respondent since by the time of rendering this decision, it still redirects a website at “www.missonihavaianas.org” which simply displays the message: “Your website is up and running!”. However, such passive holding of the disputed domain name in itself is not capable of creating any rights of Respondent in the disputed domain name (Pepperdine University v. BDC Partners, Inc.,
WIPO Case No. D2006-1003; Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on July 25, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel concludes that by the time of registering the disputed domain name, Respondent knew of Complainant’s MISSONI trademark because (1) the MISSONI trademark has been deemed well-known at least for the purposes of this proceeding (see Section 6.A. above), (2) Complainant has shown its rights in the MISSONI trademark also in Ireland, thus at the place of Respondent’s apparent domicile and finally (3) the disputed domain name combines the MISSONI trademark with the HAVAIANAS trademark and was registered by Respondent in a close time context with the first and second launch of the combined “Havaianas-Missoni” collection.
Against this background, the Panel finds that the passive holding of the disputed domain name by the time of rendering this decision does not at all prevent the finding of bad faith on the part of Respondent, but that on the contrary the examination of the circumstances of the case at hand are rather indicative of bad faith registration and use (see “WIPO Overview 2.0” paragraph 3.2).
Moreover, the Panel also takes into account that (1) Respondent apparently owns two more domain names that correlate with third parties’ (well-known) trademarks, namely <merrellsirensport.com> as well as <canonmp280ink.com> and (2) Respondent chose not to respond to Complainant’s contentions as they were included in the Complaint duly notified to Respondent by the Center on July 25, 2012. These facts taken all together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all three requirements of paragraph 4(a) of the Policy.
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 <missonihavaianas.org> be transferred to Complainant.
In this context, the Panel has duly noted that the disputed domain name not only incorporates Complainant’s MISSONI trademark, but also the trademark HAVAIANAS which is apparently owned by a member of the Alpargatas group of companies that is not a party to this UDRP proceeding. Complainant, however, has produced evidence of the existence of a Design and Sales Agreement of October 1, 2010 between Complainant and Alpargatas group for the purpose of developing, promoting, marketing and selling a co-branded collection of sandals and espadrilles under both trademarks MISSONI and HAVAIANAS. The Panel, therefore, takes the view that for the purpose of rendering a fair and just decision in the UDRP case at hand, Complainant should be entitled to own the disputed domain name rather than Respondent and that any other aspects as to the lawful ownership of the disputed domain name do not form part of this proceeding.
Stephanie G. Hartung
Sole Panelist
Dated: August 28, 2012
