WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roland Mouret v. Domains by Proxy, Inc. and Sonia Liang Case No. D2009-1435 1. The Parties
The Complainant is Roland Mouret of London, United Kingdom of Great Britain and Northern Ireland, represented by Field Fisher Waterhouse, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and Sonia Liang of Mountain View, California, United States of America (hereinafter the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2009. On October 26, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2009, GoD, 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 the Respondent of the Complaint, and the proceedings commenced on November 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 26, 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. 4. Factual Background
The Complainant is a fashion designer. He began his career in Paris in the early 1980's, and introduced his first collection under the Roland Mouret name during London's fashion week in February, 1998. Since 1998, the Complainant has garnered significant media attention for his designs. Notably, the Complainant has appeared in ES Magazine (October, 1998), Collezione Donna (1999), International Herald Tribune (2000), and on the “” website (2000), which is operated by Condé Nast (the publishers of VOGUE Magazine). The Complainant and his designs were again featured in various articles in the years 2001, 2002, and 2003. In 2006, the Complainant launched a collaboration with High Street retailer GAP, and then in July, 2007, the Complainant launched his own collection under the name “RM by Roland Mouret”. The Complainant has continuously used his name, Roland Mouret, in connection with his designs throughout his entire career, spanning the 1980's to-date.
The Respondent registered the domain name on January 18, 2006. At the time the Complaint was filed, the Respondent was using the domain name in connection with a “click-through” site offering a variety of clothing products, including not only unauthorized sales of the Complaint's products, but also products of the Complainant's competitors. 5. Parties' Contentions A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's common law trademark ROLAND MOURET.
The Complainant claims common law rights in the name ROLAND MOURET because of the long standing and extensive use of his name in connection with his career as a fashion designer. In the fashion world, according to the Complainant, the name of a designer is as valuable as the designs that he/she creates.
The Complainant contends that the domain name is essentially identical to the Complainant's name and common law trade mark ROLAND MOURET, except for the addition of the “.net” designation. Accordingly, the Complainant contends that the domain name is confusingly similar to the Complainant's trademark.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent is not commonly known by the domain name, and has not been licensed or otherwise permitted to use the trademark as a domain name or otherwise. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed domain name in connection with the operation of website that essentially is a “click-through” site offering clothing products of the Complainant without authorization and/or clothing products of the Complainant's competitors.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) Respondent was aware of the Complainant's rights in the ROLAND MOURET trademark at the time the Respondent registered a confusingly similar domain name; (ii) the Respondent registered and is using a confusingly similar domain name in connection with the operation of a website which provides links to other websites which offers clothing products of the Complainant without authorization and/or clothing products of the Complainant's competitors for the purposes of monetary gain, and (iii) the Respondent has registered a confusingly similar domain name for the purposes of monetary gain, by attempting to resell the domain name for a price which is greater than the cost of registration and maintenance of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest 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 Panel is prepared to find that the domain name is identical to the name Roland Mouret, except for the addition of the “.net” designation. Panels have found many times that the addition of a “.net” designation or other type of “gTLDs” does not serve to distinguish a confusingly similar domain name from a trademark.
Accordingly, the threshold issue in this case is not whether the domain name is confusingly similar, but whether the Complainant has established sufficient reputation and rights in his name to support ownership of a common law trademark for these proceedings.
Upon review of the uncontested evidence that the Complainant has submitted in this dispute, the Panel is prepared to find that the Complainant has developed a reputation in the area of fashion design and clothing products, to support a finding of common law rights in his name. The Panel is prepared to find that Roland Mouret as a designer has achieved a significant level of reputation in Europe and internationally, and accordingly the Panel accepts that the common law trademark ROLAND MOURET is well-known and closely associated with the Complainant.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain name. The Respondent does not appear to have been known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services. The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use his ROLAND MOURET trademark.
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
On the basis of the evidence summarized below, the Panel is prepared to find that the Respondent must have been aware of the Complainant and his reputation when the Respondent registered the disputed domain name on January 18, 2006. The uncontested evidence reveals that the name Roland Mouret is commonly and consistently associated with the Complainant's fashion design business. Internet search result supports the conclusion that the Complainant is well-known both in the U.S. and around the world. The evidence shows that the Complainant has regularly been featured in articles (both printed and on the Internet), fashion shows, fashion events, runway appearances and has received substantial media attention for his designs since late 1999 and 2000. The Complainant's career, spanning over a decade, supports the conclusion that his common law rights in the name Roland Mouret are well-established. Accordingly, the Respondent could not have been unaware of the Complainant at the time the Respondent registered the disputed domain name in 2006.
The Panel is also prepared to find that the Respondent is using a confusingly similar domain name in connection with the operation of a website which provides a “click-through” link to other websites which offer clothing products of the Complainant's competitors for the purpose of monetary gain. This conduct is considered bad faith under the Policy and accordingly, the Panel is prepared to find that the Respondent has registered and used the disputed domain name in bad faith.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 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.
Christopher J. Pibus
Sole Panelist
Dated: December 10, 2009
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