The Complainant is Moncler S.r.l. of Milano, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is wuyuansheng of Fujian, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , ,
and are registered with HooYoo Information Technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2010. On October 5, 2010, the Center transmitted by email to HooYoo Information Technology Co. Ltd. a request for registrar verification in connection with the disputed domain names. On October 8, 2010, HooYoo Information Technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names and providing the Respondent’s contact details. On October 8, 2010, the Center transmitted by email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. On October 8, 2010, the Center sent an email to the Complainant regarding the Registrar information. The Complainant filed an amendment to the Complaint on October 11, 2010.
The Center has verified that the Complaint together with the amendment to the Complaint satisfy 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 proceeding commenced on October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on November 5, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on November 15, 2010. 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 A. Complainant
The Complainant is a company incorporated in Italy and the owner of numerous registrations worldwide for the trade mark MONCLER, including in China, where the Respondent is based (the “Trade Mark”). B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain names were each registered on December 5, 2009. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a leading manufacturer of winter sportswear and sports bags under the Trade Mark, based in Italy. The Complainant was founded in 1952 in France. The Complainant operates approximately 2,000 shops in Italy, France, Germany, China, Japan and the United States of America, with current global turnover of 70 million euros. The Complainant enjoys a strong reputation and the Trade Mark is well-known worldwide in respect of winter sporting clothes and bags.
The disputed domain names are confusingly similar to the Trade Mark. They each comprise the Trade Mark and non-distinctive words such as “chainstore”, “outlets”, “my”, “space” and “uk”.
The websites to which the disputed domain names are resolved (the “Websites”) offer for sale unauthorised counterfeit products under the Trade Mark.
The Complainant has received specific complaints from consumers who have purchased counterfeit Moncler products from the ”www.“ website, believing on the basis of the disputed domain name that it was a genuine website owned by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Websites, by creating confusion with the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) neither the Complainant nor its representative firm includes Chinese-speaking personnel;
(2) The language used by the Respondent in pre-Complaint correspondence with a customer is English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). Although no submissions in this regard were made by the Complainant in the Complaint or in its response to the Center’s communications regarding the language of the proceeding, the Panel notes that the Websites are (or, in the case of the ”www.“ website, were) entirely in the English language, thereby further demonstrating that the Respondent is conversant in the English language.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive words “chainstore”, “outlets”, “my”, “space” and “uk”, words frequently used in retailing and marketing of branded goods, and, in the case of the domain name, a non-distinctive acronym symbolising the United Kingdom (a market in which the Complainant sells its goods under the Trade Mark), does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant has asserted that the Websites are used by the Respondent to market counterfeit Moncler goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant has submitted compelling evidence to suggest that the disputed domain names have been used to offer for sale counterfeit products under the Trade Mark via the Websites. This is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
At present, four of the five disputed domain names continue to be resolved to Websites which not only offer for sale what appear to be genuine Moncler clothing and related goods (but, according to the Complainant, are counterfeit goods), but also feature prominently the Complainant’s distinctive winged “M” logo. The Complainant has submitted with the Complaint screen dumps of the ”www.“ website which evidence that, prior to the filing of the Complaint, this website was also offering for sale counterfeit Moncler goods and using the winged “M” logo.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The domain name appears to be no longer in use by the Respondent. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of this disputed domain name by the Respondent, having previously been used to offer for sale counterfeit Moncler goods prior to the filing of the Complaint, amounts to additional grounds for finding bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 names , , , and be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: November 18, 2010
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