WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Moncler S.r.l v. Mr. Zhuo Muniao Case No. D2009-1330 1. The Parties
The Complainant is Moncler S.r.l of Milano, Italy represented by Studio Legale Jacobacci & Associati of Italy.
The Respondent is Mr. Zhuo Muniao of Sichuan, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 8, 2009, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On October 9, 2009, B, Inc. transmitted by email to the Center its verification response confirming that the 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 by email, fax and courier the Respondent of the Complaint that the proceedings commenced on October 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified both Parties of the Respondent's default on November 6, 2009.
The Center appointed Douglas Clark as the sole panelist in this matter on November 12, 2009. 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.
The Complaint was submitted in English while the registration agreement of the disputed domain name is in Chinese. On October 9, 2009, the Center notified the Parties by email in English and Chinese that both the Complainant and the Respondent would be given an opportunity to provide the Center with comments on the language of the proceedings by October 14, 2009 and October 16, 2009 respectively. Among other things, on the one hand, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; 2) submit the Complaint translated into Chinese; or 3) submit a request for English to be the language of the administrative proceedings as well as supporting material as to such request. On the other hand, the Respondent was requested to submit any objections and any supporting materials as to why the proceedings should not be conducted in English, otherwise the proceedings would go forward on the basis that the Respondent had no objection to the Complainant's request that English be the language of the proceedings.
On October 13, 2009, in reply to the Notification of Language of Proceeding, the Complainant submitted via email a Chinese translation of the Complaint to the Center and copied to the Respondent. The Complainant also stated in two emails dated October 15, 2009 its request that English be the language of the proceedings as well as a brief reason that neither the Complainant nor the law firm representing it includes Chinese-speaking personnel. The Respondent did not submit any objection within the due date of October 16, 2009.
The Center also notified the Parties that the language of the proceedings is subject to the decision of the Panel on appointment. The Panel would give its full decision on the appropriate language of these proceedings in the Discussion and Findings section below. 4. Factual Background
The Complainant is an Italian company in the field of sportswear and sport bags. The Complainant owns a number of registrations for the trademark MONCLER or its variation in several classes of goods and services throughout the world including China.
The Respondent registered the domain name on August 6, 2009. 5. Parties' Contentions A. Complainant
The Complainant's main contentions are summarized below: a) Identical or Confusingly Similar
The domain name includes the trademark and trade name MONCLER and adds the non-distinctive word “sales”. The Complainant contends that such composition of the domain name is sufficient to establish confusing similarity. Such contention relied on the following prior decisions of UDRP panels: Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312; Koninklijke Philips Electronics N.V. v. NicNax,WIPO Case No. D2001-1245; A, Inc. v. , WIPO Case No. D2002-1006; Sanofi-Aventis v. Direct Response Marketing aka DRM,WIPO Case No. D2005-0661, etc. b) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the domain name on the basis of the following reasons:
1) the Respondent is not associated in any way to the Complainant or its distribution network;
2) the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name MONCLER; and
3) There is no evidence of a bona fide non-commercial or other legitimate fair use by the Respondent. On the contrary, the only use of the domain name is to sell infringing products which is neither non-commercial nor legitimate. c) Registered and Used in Bad Faith
There is no way that the Respondent could not have been aware of the trade name and trademark MONCLER. Thus, registration of the domain name can only have occurred in bad faith. The Complainant's contention relied on the following prior decisions of UDRP panels: Banca Sella s.p.a v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; etc.
The Complainant also contends that the Respondent uses the domain name in bad faith. This can be seen from the fact that the domain name resolves to a website offering to sell counterfeit Moncler products, as determined by a technical examination of the photographs appearing in the Respondent's website.
The Complainant therefore requests that the domain name be transferred in its favor. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The domain name registration agreement is in Chinese. Pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e. the default language of the proceedings shall be Chinese. However, the Complainant upon receiving the Notification of Language of Proceeding from the Center submitted a Chinese translation of the Complaint and a request for the proceedings to proceed in English. The only reason the Complainant gave for its language request is that neither the Complainant nor its entrusted law firm has Chinese-speaking personnel. The Respondent did not file any objection to the Complainant's request.
The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules, and formally notified the parties that the Panel has the authority to determine the language of proceedings having regard to the circumstances of the case. The Panel may choose to write a decision in either language, or request translation of either party's submissions.
In ruling on the selection of appropriate language, the Panel agrees with the practical view held by numerous prior decisions of UDRP panels, the proceedings can be conducted in the language of the complaint, even if it is different to the language of the registration agreement, on condition that 1) the respondent can clearly understand the language of the complaint; and 2) the complainant would be disadvantaged by being forced to translate its submission. The Panel has made more detailed analysis on this point in the case: Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191.
In the Panel's view, the Complainant or its lawyers' incapability of speaking Chinese is not determinative as to the request that the proceedings be conducted in a language different to that of the Registration Agreement. The Chinese translation of the Complaint submitted by the Complainant clearly shows that the Complainant could find a way to present the case in Chinese.
However, as can be seen from the printout of the Respondent's website under the domain name, all the information there is solely displayed in English. The Respondent is clearly capable of understanding English (and in any event chose not to participate or submit any reply in English or Chinese).
In light of the above, the Panel concludes that it will 1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English. The Panel notes that the Complainant already filed a translation of the Complaint into Chinese, and given the Respondent's default, there are no further documents which need to be filed. However, as the Complainant does not understand Chinese (and would have to translate a Chinese decision) and the Respondent clearly does understand English, the Panel will issue its decision in English. 6.2 Substantive Elements of the Policy
Paragraph 4(a) of the Policy directs the Complainant must prove each of the three elements to merit a finding that the domain name be transferred to the Complainant.
(i) The domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant submitted a long list of registrations in its name for the trademark MONCLER or trademarks composed of MONCLER in numerous countries of the world. The Complainant also submitted registration certificates for trademark MONCLER registered in the United States of America and the People's Republic of China. The Panel notes that the trademark certificate for the MONCLER trademark in China was only a renewal certificate which did not show the proprietor. The registration in the United States of America is in the name of the Complainant. The Panel considered whether to request the Complainant to provide the full Chinese trademark certificate but given the US certificate is in its name; the list of other trademarks in its name; the evidence of use submitted and the fact the Complainant's corporate name includes MONCLER decided this was not necessary. The Panel concludes that the Complainant at least has rights in the United States trademarks as well as the legitimate interests in its trade name MONCLER.
The domain name wholly consists of the Complainant's trademark and trade name MONCLER to which a generic word “sales” is added. The Panel holds, in line with the principle established by numerous prior decisions of UDRP panels (for example, Koninklijke Philips Electronics N.V. v. NicNax,WIPO Case No. D2001-1245), that the addition of a generic term does not negate the confusing similarity between the domain name and the trade mark. The Panel concludes that the Respondent's domain name is confusingly similar to the Complainant's trademarks.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent has not been authorized in any way to use the trademark MONCLER in the disputed domain name or otherwise.
As the Respondent did not present the Panel with evidence in support of any rights or legitimate interests to the domain name, the Panel may decide the dispute on the basis of the Complaint and draw negative inferences from the respondent's default. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6.) (Similar view on this point is Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877)
The Complainant contends that the products of MONCLER models offered for sale on the Respondent's website are either counterfeit or not correspondent to authentic Moncler products. Given the Respondent has not responded, the Panel does not consider it necessary to decide if the products on sale are counterfeit. Without a positive averment by the Respondent as to some rights or legitimate interests, the fact that the Complainant has not authorized the use of its trademark in the domain name is sufficient to decide this case.
The Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the domain name and accordingly satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant asserts it was founded in 1952 and has been operating 2,000 shops in various countries of the world including China. The Complainant also claims worldwide fame of the trademark MONCLER by showing that MONCLER was the official uniform of the French Team in the 1968 Winter Olympic Games. It is unconceivable that the Respondent who sells sports clothing would be unaware of the trademark MONCLER but incidentally choose it as the core part of a domain name.
The Respondent's sale of MONCLER products (which the Complainant alleges to be counterfeit) is powerful evidence in support of the Respondent's knowledge of the Complainant. Without a response being filed, this is sufficient to find that the Respondent registered and is using the domain name in bad faith with the intent to deceive consumers as to some links between the Complainant and the Respondent.
Therefore, the Panel finds that the Respondent has registered and is using the domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: November 30, 2009
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