Missoni S.p.A v. ngaremaniac / ngarema nia
Claim Number: FA1206001450537
Complainant is Missoni S.p.A (“Complainant”), represented by Fabrizio Bedarida of Dr. Modiano & Associati S.p.A., Italy. Respondent is ngarema nia / ngaremaniac (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <missonifortarget.us>, registered with PT ARDH GLOBAL INDONESIA.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 28, 2012. The Forum received the hard copy of the Complaint on June 28, 2012.
After numerous requests, the Registrar, PT ARDH GLOBAL INDONESIA, has not confirmed to the National Arbitration Forum that the <missonifortarget.us> domain name is registered with PT ARDH GLOBAL INDONESIA or that the Respondent is the current registrant of the name. The Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On July 16, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <missonifortarget.us> domain name, the domain name at issue, is confusingly similar to Complainant’s MISSONI mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns many trademark registrations around the world that encompass the MISSONI mark, including registrations with the following:
United States Patent and Trademark Office ("USPTO") (Reg. No. 1,026,807 registered December 9, 1975); European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,823,797 registered December 17, 2003); and Italian Patent and Trademark Office (“IPTO”) (Reg. No. 1,254,527 registered March 11, 2010). Respondent’s <missonifortarget.us> domain name is confusingly similar to the MISSONI mark because it contains the entire MISSONI mark. Respondent adds the generic terms “for” and “target” and the country-code top-level domain (“ccTLD”) “.us.” Respondent does not own a trademark or other rights in the domain name and has not been authorized or licensed to use the MISSONI mark by Complainant. Respondent uses the disputed domain name to offer and sell alleged MISSONI products, as well as similar products of other brand names. Respondent registered the disputed domain name on November 24, 2011, which is two months after Complainant launched the “Missoni for Target” collection. Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the MISSONI mark. Respondent did not submit a Response to these proceedings.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.”).
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Complainant owns protectable rights in the MISSONI mark because it owns trademark registrations with the USPTO (Reg. No. 1,026,807 registered December 9, 1975); OHIM (Reg. No. 2,823,797 registered December 17, 2003); and IPTO (Reg. No. 1,254,527 registered March 11, 2010). Complainant has effectively established rights in the MISSONI mark under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the UDRP ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The <missonifortarget.us> domain name is confusingly similar to the MISSONI mark. Respondent’s disputed domain name contains the entire MISSONI mark and Respondent adds the generic terms “for” and “target” and the ccTLD “.us.” Respondent’s additions to the MISSONI mark are not sufficient to render the domain name distinct from the mark. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence on record indicating that Respondent owns a trademark or service mark registration for the domain name. Therefore, Policy ¶ 4(c)(i) has been satisfied. See 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); see also 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)).
Further, Respondent has not been authorized or licensed to use the MISSONI mark. The WHOIS information on file indicates that the registrant of the <missonifortarget.us> domain name is “ngaremaniac / ngarema nia.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Lastly, Respondent uses the disputed domain name to offer and sell alleged MISSONI products, as well as similar products of other brand names. Prior panels have held that a respondent does not acquire rights or legitimate interests in a disputed domain name where it is using the domain name to sell a complainant’s goods and the goods of a complainant’s competitor. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Respondent is not using the <missonifortarget.us> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name to operate a website that purports to sell Complainant’s products, as well as the products of Complainant’s competitors. Such use is disruptive and hurtful to Complainant’s own product offerings. The Panel finds that Respondent both registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent is attempting to confuse Internet users into visiting Respondent’s website by using Complainant’s mark combined with its latest initiative in “Missoni for Target.” Respondent is profiting by selling both Complainant’s products and Complainant’s competitors’ products. Such use of the disputed domain name by Respondent is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Lastly, Respondent registered and is using the disputed domain name in bad faith because Respondent knew of Complainant’s rights in the MISSONI mark. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the domain name and finds that bad faith exists under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <missonifortarget.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 11, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page