DECISION

 

Missoni S.p.A. v. Wu Cheng-Hong

Claim Number: FA1502001603477

 

PARTIES

Complainant is Missoni S.p.A. (“Complainant”), represented by Fabrizio Bedarida of Dr. Modiano & Associati S.p.A., Italy.  Respondent is Wu Cheng-Hong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <m-missoni.us> and <missonihome.us.>, registered with BigRock Solutions Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Kenneth L. Port as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2015; the the National Arbitration Forum received payment on February 5, 2015.

 

On February 10, 2015, BigRock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <m-missoni.us> and <missonihome.us.> domain names are registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the names. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@<m-missoni.us as well as postmaster@missionihome.us. Also on February 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 10, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges that it has rights in the MISSONI and MISSONI HOME mark under Policy ¶ 4(a)(i).  Complainant is a leading company in the fashion industry and has promoted its products internationally for many years.  Complainant provides evidence of its registrations for the MISSONI trademark with the United States Patent Office (“USPTO”) (Reg. No. 1,724,884 registered October 20, 1992); European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,773,165 registered August 8, 2005); and with the World Intellectual Property Organization Madrid (“WIPO”) (Reg. No. 405,224 registered January 21, 1974).

 

Complainant further provides evidence of its registrations for the MISSONI HOME mark with the USPTO (Reg. No. 884,308 registered May 13, 2008); and OHIM (Reg. No. 884,308 registered April 26, 2005).

 

Complainant also alleges that the Respondent’s <m-missoni.us> domain name is confusingly similar to Complainant’s MISSONI registered trademark and the <missonihome.us.> domain name is confusingly similar to Complainant’s MISSONI HOME registered trademark.

Complainant alleges that the Respondent has no rights or legitimate interests in the <m-missoni.us> and <missonihome.us> domain names under Policy ¶ 4(a)(ii).  Respondent has never been commonly known by the disputed domain names. Complainant started to publish company information through its official website in 2000.  Complainant has not authorized Respondent to use its marks in any way.  Respondent has no trademark registrations for the disputed domain names, and provides no evidence of its legitimate use in correlation with the disputed domain names.

 

Complainant also alleges that the Respondent registered and is using the <m-missoni.us> and <missonihome.us> domain names in bad faith under Policy ¶ 4(a)(iii).  Respondent registered the disputed domain names for the purpose of selling them to Complainant. Complainant’s Annex 7 provides an e-mail from Respondent indicating they will accept “minimum compensation” of $55,000.

 

Complainant shows a pattern of bad faith domain name registrations, in that, Respondent appears to have registered the two domain names at issue and another nine domain names relating to Complainant’s marks.

 

Complainant alleges that the Respondent uses the disputed domain names to mislead Internet users and to confuse them as to Complainant’s affiliation with Respondent’s disputed domain names.  Finally, Complainant alleges that the Respondent had actual knowledge of Complainant and Complainant’s marks when Respondent registered the disputed domain names.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.  Respondent registered the <m-missoni.us> domain name on January 21, 2007 and the <missonihome.us.> domain name on June 23, 2008.

 

 

FINDINGS

            As the Respondent failed to respond to this matter, the Panel deems the Complainant’s allegations as true unless clearly unreasonable.  As the Complainant’s allegations are not clearly unreasonable and are well supported by the evidence that Complainant adeptly marshalled against Respondent, the Panel finds that the disputed domain names herein to be confusingly similar to the Complainant’s registered trademarks, that the Respondent had no rights or legitimate interests in the disputed domain names and that the Respondent acted in bad faith in registering and using the disputed domain names.  Although it is not clear from the record why Complainant appears to have waited some 7 years before filing the present Complaint, given the totality of the circumstances, it is clear that Respondent did not rely on that delay in any way and therefore the Complainant should not be barred from bringing the present Complaint.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

The disputed domain names herein are confusingly similar to Complainant’s registered trademarks.  The Complainant provides convincing evidence of its registrations for the MISSONI mark with the USPTO (Reg. No. 1,724,884 registered October 20, 1992); OHIM (Reg. No. 003,773,165 registered August 8, 2005); and with WIPO Madrid (Reg. No. 405,224 registered January 21, 1974). See Complainant’s Annex 3. Complainant further provides evidence of its registrations for the MISSONI HOME mark with the USPTO (Reg. No. 0884,308 registered May 13, 2008); and OHIM (Reg. No. 884,308 registered April 26, 2005). Id.  Panels have continuously held that providing evidence of a registration with a recognized trademark authority is sufficient to establish rights in a given mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).  Additionally, prior panels have concluded that rights in a registered mark extend to protect marks that were not registered in the location of a respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Therefore, it is clear that the Complainant has rights in the MISSONI and MISSONI HOME marks under Policy ¶ 4(a)(i).

 

Additionally, Complainant states that Respondent’s <m-missoni.us> domain name is confusingly similar to Complainant’s MISSONI mark, and the <missonihome.us.> domain name is confusingly similar to Complainant’s MISSONI HOME mark. The Respondent adds an additional letter “m,” a hyphen, and the country code top-level domain (“ccTLD”) “.us” to the Complainant’s MISSONI registered trademark.  Previously, panels have frequently concluded that adding letters and hyphens does not differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Further, the panel in Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) held that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i).

 

The Panel thus concludes that Respondent’s <m-missoni.us> domain name is confusingly similar to Complainant’s MISSONI mark under Policy ¶ 4(a)(i).

 

Next, the Respondent’s <missonihome.us.> domain name merely consists of a removal of the space in Complainant’s MISSONI HOME mark and an addition of the ccTLD “.us.” Removing a space and adding a ccTLD to a mark in a disputed domain name has routinely been held to make the disputed domain name identical to the registered mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark.  The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).

 

The Panel thus concludes that Respondent’s <missonihome.us.> domain name is identical to Complainant’s MISSONI HOME mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <m-missoni.us> and <missonihome.us.> domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy 4(c)(i).  See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002)(holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also  Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002)(finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).

 

The Complainant argues that the Respondent has never been commonly known by either the <m-missoni.us> or <missonihome.us.> disputed domain names. Additionally, Complainant states that it has not authorized Respondent to use its marks in any way. The WHOIS information for the disputed domain names shows that “Wu Cheng-Hong” is listed as the registrant. The Panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) concluded that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Since Respondent has not submitted a correspondence in the present claim, the Panel concludes that there is no evidence to support the idea that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(iii).

 

The Complainant also alleges that the Respondent has no trademark registrations for the disputed domain names and provides no evidence of its legitimate use in correlation with the disputed domain names.  The Complainant claims that the Respondent registered the disputed domain names for the purpose of selling them back to Complainant. The screen shot that the Complainant has provided for the website resolving from the <m-missoni.us> domain name resolves to a website that states, “The owners of the domain name m-missoni.us are accepting offers from interested parties willing to obtain ownership rights over the domain name.”  Additionally, Complainant provides evidence of an e-mail from Respondent offering to sell the disputed domain names to Complainant for an inflated price. See Compl., at Attached Ex. 7, 17. Prior panels have concluded that offering to sell a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (Finding that UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains. Additionally finding, an attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.).

 

The Panel therefore concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(ii) or 4(c)(iv).

 

Registration or Use in Bad Faith

 

Complainant next asserts that Respondent registered and is using the <m-missoni.us> and <missonihome.us.> domain names in bad faith. Complainant states that Respondent registered the disputed domain names for the purpose of selling them to Complainant. Complainant’s Annex 7 provides an e-mail from Respondent indicating they will accept “minimum compensation” of $55,000 for the eleven requested domain names. The Panel in Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) found bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000.

 

The Panel therefore concludes that Respondent’s offer to sell the disputed domain names to Complainant for $5,000 per domain name, indicates bad faith under Policy ¶ 4(b)(i).  

 

Complainant also claims that Respondent has a pattern of bad faith domain name registrations, in that, Respondent appears to have registered the two domain names at issue and another nine domain names relating to Complainant’s marks. Prior panels have found bad faith use or registration where a respondent registers multiple domains incorporating a complainant’s mark. See YAHOO! INC v. SYRYNX, INC., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).

 

The Panel therefore concludes that Respondent’s registration of the <m-missoni.us> and <missonihome.us.> domain names indicates bad faith use or registration under Policy ¶ 4(b)(ii) as it demonstrates a pattern of domain name registrations for purposes other than a bona fide commercial interest.

 

Complainant argues under Policy ¶ 4(b)(iv) that Respondent uses the disputed domain names to mislead Internet users and confuse them as to Complainant’s affiliation with Respondent’s disputed domain names. Complainant states that this is clear from the disputed domain names featuring Complainant’s MISSONI and MISSONI HOME marks. The panel in Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) found bad faith where the domain name in question was obviously connected with the complainant’s well-known marks, and thus created a likelihood of confusion strictly for commercial gain.

 

This Panel concludes, therefore, as it did in Perot Sys. Corp. that Respondent’s use of the <m-missoni.us> and <missonihome.us.> domain names to commercially profit by confusing internet users, indicates bad faith use and registration under Policy ¶ 4(b)(iv).

 

From the evidence presented by the Complainant, it is clear that the Respondent had actual knowledge of Complainant and Complainant’s marks when Respondent registered the disputed domain names. Complainant states that its MISSONI marks are world-wide renowned trademarks, as prior UDRP Panels have concluded. See Missoni S.p.a. v. BigDoggie.com and Taeho Kim, Case No. D2002-0545.  The Respondent contacted Complainant regarding the sale of the disputed domain names using Complainant’s registered marks.  Therefore, any issue Respondent may raise regarding constructive notice are irrelevant. 

 

The Respondent clearly had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name.  Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). 

 

Therefore, the Respondent acted in bad faith use and registration of the disputed domain names.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.

 

Accordingly, it is Ordered that the <m-missoni.us> and <missonihome.us.> domain names be transferred from the Respondent to the Complainant. 

 

Kenneth L. Port, Panelist

Dated:  March 11, 2015