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 Sandra Brown of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 5, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name(s). On October 5, 2010, eNom. 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 October 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2010.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 9, 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
The Complainant is an Italian company in the field of sportswear and sport bags. It is the owner of the trademark MONCLER registered in many countries and territories worldwide. It owns inter alia an International Trademark No. 269298 (designating several countries), with registration date May 11, 1963, as well as the Community Trademark No. 5796594 with filing date March 29, 2007 and registration date January 28, 2008. These trade mark registrations consist of the word MONCLER (the “Trademark”).
Complainant’s company was founded in 1952 in France. For almost 60 years of activity, the company reached a global turnover of EUR 70 million. It sells mostly winter sporting clothes and bags and has about 2,000 shops in Italy, France, Germany, The People’s Republic of China, Japan and the United States of America.
The Domain Name was registered on May 20, 2010. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is the owner of a famous trademark as a search under MONCLER with the search engines Google would easily confirm. It indicates that this fact is also reflected in numerous international press articles which it encloses as evidence. According to the Complainant, MONCLER winter sporting clothes enjoy a worldwide reputation. MONCLER not only has been the maker of the official uniforms of the French team in the 1968 winter Olympic games in Grenoble and equipped the expeditions to the top of the Karakoroum (1954) and the Makalù (1955) mountains, but, in the 1980s, its quilted jackets became the uniform of the so called “paninari” or the “sandwich generation” (young boys frequenting sandwich bars and wearing fashionable clothes). Nowadays the company remains, according to the Complainant, a leader of this specific market.
The Complainant indicates that it is not possible that the Respondent may not have been aware of the trade name and trademark MONCLER and that therefore registration of the Domain Name may only have occurred in bad faith (see 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).
According to the Complainant, the Trademark is so obviously connected with a product that its very use by someone with no connection with the product suggests opportunistic bad faith (Parfums Christian Dior v. Javier Garcia Quintas and ,WIPO Case No. D2000-0226). Even in a case where the trademark involved was somewhat less famous than the brands VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that the respondent knew of or should have known of the relevant complaint’s trademark and services at the time it registered the domain name, (Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137).
Moreover, the Complainant indicates that upon information and belief, the Respondent has no rights or legitimate interest in respect of the Domain Name, in particular
- The Respondent is not associated in any way with Complainant or its distribution network;
- The Respondent has never been commonly known in the normal course of business by the trademark or domain name “Moncler” (although it has sold counterfeit MONCLER products);
- There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.
The Complainant further asserts that the Respondent uses the Domain Name in bad faith. The website linked to the Domain Name offers MONCLER branded products for sale. According to examination by the Complainant of the photographs appearing on this website, some of the products offered are blatantly counterfeit.
The Complainant therefore requests the transfer of the Domain Name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To qualify for a cancellation or a transfer of the Domain Name, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
As the Respondent has failed to respond to the Complaint, the panel may draw negative inferences from the respondent’s default pursuant to paragraph 14(b) of the Rules. However, the Complainant is required to support its assertions with actual evidence in order to succeed in UDRP proceedings. A. Identical or Confusingly Similar
The Domain Name contains the Trademark in its entirety and is preceded by the descriptive term “UK”. In line with the principle as established in numerous decisions, the Panel agrees that when a domain name contains in full a complainant’s registered mark, that it may be sufficient to establish confusing similarity. (Dr. Ing. H.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312). In this case, the Panel finds that the addition of the geographic indicator “UK” for the Untied Kingdom, which is also the apparent location of the Respondent in this matter, does not distinguish the Domain Name form the Trademark.
The Complainant has therefore satisfied the first condition set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, any of the following circumstances may demonstrate the Respondent’s rights or legitimate interests to the Domain Name for purposes of paragraph 4(a)(ii):
(i) before any notice of the dispute, the Respondent’s use or demonstrable preparations to use the domain or a name corresponding to the Domain Name in connection of a bona fide offering of goods or services;
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for a commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under the given circumstances, the Panel has to verify whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy.
The Complainant has confirmed that at least some of the goods sold on the website linked to the Domain Name are considered to be counterfeit. This has not been rebutted by the Respondent and therefore the Panel finds that there is no bona fide offering of goods or services.
Regarding paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondent does not appear to be commonly known in the normal course of business by the name “Moncler”. On the website linked to the Domain Name, on which (allegedly counterfeit) Moncler products can be purchased, no information is given on the identity of the retailer behind the website.
Regarding paragraph 4(c)(iii) of the Policy, the Panel notes that the Respondent is making commercial use of the Domain Name as ((allegedly counterfeit) goods are being sold.
Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of paragraph 4(c) of the Policy and therefore the second condition has been fulfilled. C. Registered and Used in Bad Faith
The Complainant has asserted that the website linked to the Domain Name offers for sale counterfeit products under the Trademark and this assertion has not been rebutted by the Respondent. In this Panel’s view, this is strong evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy. (Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019). The fact that the identity of the retailer exploiting the website linked to the Domain Name is hidden confirms the impression of the Panel, that Respondent has registered and uses the Domain Names in bad faith.
The failure of the Respondent to respond to the Complaint in this case 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).
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 Name be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Dated: October 23, 2010
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