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 Shuangying Chen of Guangzhou, Guangdong / Tianjin, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and affirming that the language of the registration agreements is English.
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 March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2011. On March 17, 2011, the Center received an email communication in Chinese from the Respondent’s billing contact person, claiming that it registered the disputed domain names on behalf of its client (the Respondent), and providing the Center the contact information of the Respondent, which is the same with the information verified by the Registrar and shown on the public WhoIs record. On March 18, 2011, the Center acknowledged receipt of this email communication. The Respondent did not submit any formal response before the Response due date. Accordingly, the Center notified the Respondent’s default on April 4, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 8, 2011. 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, Moncler S.r.l., is an Italian company that was founded in the year 1952 in France, and engages in the field of sportswear and sport bags.
The Complainant’s products are sold in about 2,000 stores worldwide, notably in Italy, France, Germany, the People’s Republic of China, Japan and the United States of America.
The Complainant is the owner of numerous trademark registrations, which consist the mark MONCLER all around the world. For example: Chinese trademark registration No. 177079 – MONCLER (logo), with the registration date of May 15, 1983; Community trademark registration No. 3554656 – MONCLER, with the registration date of February 11, 2005; United States trademark registration No. 0803943 – MONCLER, with the registration date of February 15, 1966; and many more.
The disputed domain names were registered between 2010 and 2011. At the time the Panel renders this decision:
The disputed domain names , , , , , , , , , , , , , , , , , , and resolve to on-line market places, which offer for sale clothing and footwear that bear the Complainant’s MONCLER trademarks.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and resolve to inactive websites that display the following announcement: “Forbidden – You don't have permission to access / on this server.” 5. Parties’ Contentions A. Complainant
The Complainant argues that its MONCLER trademark is a well-known trademark. The Complainant supports this claim with the results of a Google search for the word “moncler”, and by a substantial amount of worldwide publications in the press.
The Complainant further argues that the MONCLER trademark is a well-known trademark. According to the Complainant, this fact also proves that the Respondent registered the disputed domain names in bad faith.
The Complainant further argues that the disputed domain names incorporate the MONCLER trademark, with the addition of a non-distinctive word (in various languages), such as “buy”, or the French translation “acheter”, “boutique”, “prix” or “prezzi”, and etc.
The Complainant further argues that the addition of a descriptive element is not sufficient to avoid a likelihood of confusion, but rather to increase it, as the descriptive elements relate directly to the Complainant’s widely known core business in retail clothing and accessories.
The Complainant further argues that the Respondent has registered the disputed domain names in order to confuse the consumer as to the origin of the websites under the disputed domain names.
The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain names.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain names, since the Respondent does not own relevant trademark registrations, and is not commonly known by the word “Moncler”.
The Complainant further argues that the Complainant has not licensed or authorized the Respondent to use the disputed domain names or the Complainant’s trademarks.
The Complainant further argues that the Respondent is not making any legitimate use of the disputed domain names, since it is using the disputed domain names to sell the counterfeit Moncler products.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns numerous trademark registrations, which consist of the mark MONCLER all around the world. For example: Chinese trademark registration No. 177079 – MONCLER (logo), with the registration date of May 15, 1983; Community trademark registration No. 3554656– MONCLER, with the registration date of February 11, 2005; United States trademark registration No. 0803943 – MONCLER, with the registration date of February 15, 1966; and many more.
The disputed domain names differ from the registered MONCLER trademark by an addition of a descriptive word (in various languages) that relates to the Complainant’s business, place of business or an abbreviation thereof (such as “Norway”, “acheter”, “jackets”, “fr”, etc.) and the additional the gTLD suffix “.com”.
The addition of descriptive elements is insufficient to avoid confusing similarity, especially since they are connected with the Complainant's market for its products. The most prominent element in the disputed domain names is clearly the term “Moncler”, which lacks dictionary meaning, and may cause the public to view it as connected to the MONCLER trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.
The result is that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the responsibility of coming forward with evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names.
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the MONCLER trademark, or a variation thereof.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence that shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the MONCLER trademark at least since the year 1966. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of considered bad faith registration and use by the respondent, if by using the domain names it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain names resolve, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain names resolve to.
In this case, a considerable number of the disputed domain names currently lead Internet users to websites that promote the sale of clothing and footwear that carry the Complainant’s trademark.
The Respondent is using the Complainant’s trademark to promote goods that are regularly sold by the Complainant. This is a clear indication that the Respondent must have registered the disputed domain names with knowledge of the Complainant’s MONCLER trademark and its commercial use of it, and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith under the Policy. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the Respondent’s use of the disputed domain names without rights or legitimate interests for promoting identical goods to the ones that are sold by the Complainant constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Furthermore, according to the Complainant, the products offered for sale in the websites under the disputed domain names are counterfeit. This alone is strong evidence of bad faith (see Beachbody, LLC v. messi lucy/messi assena,WIPO Case No. D2010-1907; also, Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
The Respondent registered a great amount of domain names that incorporate the Complainant’s distinct trademark with an addition of descriptive or generic elements, which as stated above, are not suffice to avoid confusing similarity between the Complainant’s trademark and the disputed domain names. This pattern of conduct by the Respondent is another clear indication of bad faith (see Sutton Group Financial Services Ltd. v. GeorgeG o/a George Georgopoulos,WIPO Case No. D2004-0335).
It should also be noted that the fact that part of the disputed domain names are currently inactive does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. (See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867).
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the confusing similarity between the disputed domain names and the Complainant’s trademark, the numerous registration of domain names entirely consisting the Complainant’s distinctive trademark, and the fact that the Respondent is using the disputed domain names to sell counterfeit goods, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 21, 2011
Full & Egal Universal Law Academy