Missoni S.p.A., an Italian company that makes fashionable clothing and accessories recently won a WIPO UDRP decision for the domains <missonihome.co> and <mmissoni.co> which were previously owned by Votouch of Beijing, China. Missoni owns trademarks for its products all over the world, including the United States and has held registrations here for the MISSONI mark since the early 1970’s.
The case was pretty straightforward, and a relative “slam dunk” for Missoni – mostly because the Respondent put up a pay-per-click site that directly played on the MISSONI name and business, and then offered to sell the domain back Missoni for a hefty profit after it received the Complaint. The panel also noted that MISSONI is a “coined” mark (i.e., has no meaning as a term in Italian) and gave credence to the fact that when dealing with a mark that is not used as a common or generic term in other areas, then it is fair to assume that the Respondent was acting in bad faith when it registered the domains, stating:
“The Panel finds that the Respondent was aware of the Complainant and its reputation in the MISSONI Marks at the time the Domain Names were registered. The Respondent registered two domain names that are identical to two separate trade marks owned by the Complainant. This is unlikely to be co-incidental. Furthermore, the MISSONI Marks are a coined terms with no apparent descriptive or generic meanings and as such nobody would choose to register the Domain Names unless seeking to create an association with the Complainant. The Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for its registration of the Domain Names. The registration of the Domain Names in awareness of the Complainant’s MISSONI Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.”
Thus, the panel assumed actual knowledge of the MISSONI mark as well as bad faith intent by the Respondent on the basis that a third party which goes out and registers a domain name that includes a coined mark like MISSONI could have no purpose other than to create confusion and a false association. The decision essentially makes the connection between trademark strength and bad faith intent (a connection that panels will often avoid making if they can so as not to get involved with messy aspects of trademark law) and should be a positive citation for brand owners looking to protect coined marks from cyber-squatters...