An Italian company gets its domain name back in China

[By Dongtao Li]

  1. Basic Information

The Complainant is MISSONI S.P.A.(Add: VIA LUIGI ROSSI 52, SUMIRAGO(VARESE) ITALY)

The Respondent is Yingying Wang, a Chinese citizen.

The domain names that are subjects of this Complaint are <missoniuomo.cn> and <missoniuomo.com.cn> that were registered on December 31, 2008 by the Respondent.

The case was resolved at the CIETAC Domain Name Dispute Resolution Center on November 21, 2011. The Panelist is Dongtao Li.

B.Factual Background

Complainant has registered “MISSONI” trademarks in over 60 countries besides its home country of Italy and has enjoyed protection of its trademarks since early 1990s. For example, Complainant has obtained territorial expansion protection in China for its G555050 “MISSONI” trademark (International registration, including goods in international class 25, such as clothes made of cotton and blend fabric, men and women outerwear).

After years of use and advertisements, the mark MISSONI has established a distinctive part of the Complainant’s company name and is well known in the relevant market place.

The Complainant registered the domain name < missoni.com > under the trade name and trademark “MISSONI” on April 13, 1999 as well as domain names <missoni.com.cn> <missoni.org.cn.> and others with “MISSONI” being the domain name before any top-level domains.

The Complainant is also the owner of the domain name <missoni.it, missoni.us, missoni.net and missoni.org>.

The website of the Complainant (using the domain name missoni.com, missoni.com.cn and missoni.org.cn in Italian) is divided into the following columns:

 STORIA(history), DONNA (woman’s clothing), UOMO (man’s clothing) and ADVERTISING, etc.

 “UOMO” is specialized for introducing man’s clothing.

The complainant has successfully obtained the domain name <missonicollection.com>, <missoni.info>, <missoniclothing.com>, <hotelmissoni.com> and <missoni.net>, etc. by filing disputes at WIPO through the UDRP Administrative Procedure.

The disputed domain names haven’t been put into use for nearly 2 years since the registration date, and they are in a state of being sold online. Moreover, the Respondent conceals his/her true postal address online.

 

C.  The Complainant’s contentions

    The Complainant is entitled to the prior rights of < MISSONI > trade name and trademarks.

In the domain name <missoniuomo.cn, missoniuomo.com.cn>, “.cn” is a ccTLD, “.com” is a gTLD, both of them are not distinctive.

The “missoniuomo” in the disputed domain names is the relevant part.

. It can be divided into two parts:

 “missoni” is identical to the Complainant’s trade name and trademarks; “uomo” is an Italian word for man’s clothing.

     In short, “missoniuomo” means man’s clothing of “missoni”.

 According to Article 9(i) of the CNNIC Domain Name Dispute Resolution Policy (CNDRP), the disputed domain name holder has no right or legitimate interest with respect to the domain name or major part of the domain name that is being used the domain name in bad faith.

So, the disputed domain name shall be transferred to the Complainant.

 

  1. The Response

The Respondent did not file a Response to the Complainant in the time limits of Center and failed to provide any evidence to rebut the Complainant’s contentions.

 

E.  The Dispute Resolution Policy

Article 8 of the CNDRP states that support of a Complainant against a registered domain name is subject to the following conditions:  

  1.   The disputed domain name is identical or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;
  2.  The disputed domain name holder has no right or legitimate interest with respect to the domain name or major part of the domain name;  
  3. The disputed domain name holder has registered or is being used the domain name in bad faith.

It should be noted that in order to succeed in an arbitration proceeding under the CNDRP, it is necessary for the Complainant to prove all three (3) elements are present.

Article 9 of the CNDRP states that any of the following circumstances may be the evidence of the registration and use of a domain name in bad faith:

  1. Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of civil rights or interests or to a competitor of that complainant, for illegal benefit; or
  2. The domain name was registered more than once in order to prevent the owner of legal rights from reflecting the mark or name in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
  3. The domain name was registered or acquired primarily for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating a likelihood of confusion with the Complainant’s name or mark so as to mislead the public;
  4. Other circumstances which may prove bad faith.

 

  1. Opinion

The Administrative Panel decides that the Complainant has proven each of the three elements in Article 8 of CNDRP.

With respect to the bad faith element of Article 9(i) of CNDRP, the Administrative Panel doesn’t agree with the Complainant’s contention that bad faith was established simply because the Respondent sold the disputed domain names online.

However, the Administrative Panel found other circumstances that were deemed bad faith.  In this case, the Respondent combined “missoni” and “uomo” (one of major goods of the Complainant) together to register the disputed domain names and bridged the gap between the trade name, trademarks and disputed domain names to mislead the public.

And because the Respondent conceals his/her true postal address, it failed file a Response to the Complaint in the time limits allowed and failed to provide any evidence to rebut the Complainant’s contentions.

The bad faith element is established according to 9(iv) of CNDRP.

 

G. Decision

The Administrative Panel determined that the domain name < missoniuomo.cn>,<missoniuomo.com.cn > shall be transferred to the Complainant.

IP: