Complainant is Moncler S.r.l. of Milan, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati of Torino, Italy.
Respondent is Zhongyuan Tec of Fuzhou, Fujian, the People’s Republic of China. 2. The Domain Names and Registrars
The disputed domain names , , , , and are registered with Xin Net Technology Corp.
The disputed domain names , , , , , , , , , , , , , , , , , and are registered with B, Inc. (together with “Xin Net Technology Corp.”, the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2011. On March 14, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 15, 2011, the Registrars provided their verification responses via e-mail confirming that Respondent is listed as the registrant and providing the contact details. On March 17, 2011, the Center contacted Xin Net Technology Corp. (one of the two Registrars) via e-mail requesting further clarification regarding the specific domain names registered with this entity. Xin Net Technology Corp. responded to this request via e-mail on March 18, 2011 providing the information requested. The Center acknowledged receipt of the email communication from Xin Net Technology Corp. on March 18, 2011. On March 21, 2011, the Center transmitted a communication by email to the parties in both Chinese and English confirming that the registration agreements for the domain names were completed in the Chinese language and requesting that Complainant provide a Chinese translation of its English language Complaint, or satisfactory evidence of an agreement between the parties concerning the language of the proceeding, or a formal request that English be the language of the proceedings accompanied by arguments and supporting materials by March 24, 2011. This communication also invited Respondent to provide comments regarding the preferred language of the proceedings by March 26, 2011. On March 21, 2011, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date. On March 28, 2011, the Center issued a statement in both Chinese and English accepting the Complaint in English and inviting Respondent to answer the Complaint in the English or Chinese languages.
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 Respondent of the Complaint, and the proceedings commenced on March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 3, 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.
Language of the Proceeding
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. In this case, the language of the registration agreements for the disputed domain names is Chinese. Complainant has filed arguments in support of English being recognized as the language of the proceedings based partly on the observation that the content of the websites featured on many of the disputed domain names is displayed in English and that this content demonstrates that Respondent has an understanding of this language. Because Respondent did not comment on the language of proceedings by the specified due date, the Center sent all further communications to the parties in both the English and Chinese languages. The Center also invited Respondent to submit a response in the English or Chinese languages.
In light of these circumstances, the Panel concludes that it will proceed in line with the Center’s preliminary decision to accept the Complaint as filed and issue a decision. 4. Factual Background
Complainant Moncler S.r.l. is an Italian company in the field of sportswear which was founded in France in 1952. Complainant uses its MONCLER trademark and MONCLER design marks in advertising and these marks are often featured on its goods. Complainant has provided details and evidence of multiple trademark registrations for its MONCLER and MONCLER design marks in numerous jurisdictions including the People’s Republic of China, the United States of America, and the European Community which cover clothing and related items in Class 25.
The disputed domain names were each created between September and December of 2010. The registrant of the disputed domain names is identified as Zhongyuan Tec, Respondent in this proceeding. The Registrars for the disputed domain names are identified as Xin Net Technology Corp. and B, Inc. The content of the websites associated with the disputed domain names is as follows:
, , , , , , , , , , , , , , , and all advertise clothing items for sale including coats, jackets, vests, hats, scarves, and boots. Complainant’s MONCLER design mark is featured on many of the items for sale on these domain names. Further, Complainant’s MONCLER trademark is featured in the descriptions of many of the items, and Complainant’s MONCLER and MONCLER design mark are prominently featured on the webpages.
, , , , , , and resolve to error pages or holding pages. These disputed domain names do not display any substantive content. 5. Parties’ Contentions A. Complainant
Complainant claims that its MONCLER trademark is well-known and has a reputation worldwide due to the company’s 50 year history, its 2,000 shops in Europe, the People’s Republic of China, Japan, and the United States of America, and it global turnover of EUR 70 million. Complainant has cited a previous UDRP decision which acknowledged its trademark as well-known, specifically Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049.
Complainant claims that the disputed domain names are likely to cause consumer confusion due to their use of the MONCLER trademark with other literal elements which Complainant cites as non-distinctive. Complainant maintains that Respondent is not associated with Complainant or its distribution network and has never been commonly known by a trademark, trade name, or domain name incorporating MONCLER. Regarding the disputed domain names which feature content, Complainant maintains that the products advertised are counterfeit goods. Complainant claims that the incorporation of its well-known MONCLER trademark into these disputed domain names and advertising of counterfeit products support findings of bad faith use and registration. Regarding the disputed domain names that do not feature content, Complainant cites the incorporation of its well-known MONCLER trademark into these disputed domain names as evidence of bad faith registration and cites the passive holding of these disputed domain names and Respondent’s ownership of other active domain names incorporating MONCLER as evidence of bad faith use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The common element in all of the disputed domain names is Complainant’s MONCLER trademark. The Panel notes that Complainant has registered trademark rights in the MONCLER trademark in multiple jurisdictions including the People’s Republic of China, the country where Respondent is domiciled. Further, Complainant operates retail stores in numerous jurisdictions including the People’s Republic of China. The MONCLER trademark has been defined as a well-known trademark by a previous UDRP decision, specifically in Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (observing that Respondent “should have been aware” of Complainant’s MONCLER trademark when registering a domain name incorporating the mark because it is well-known).
The Panel notes that some of the domain names which are subject of the Complaint feature a plural version of Complainant’s trademark (i.e., MONCLERS). The Panel considers this a simple misspelling, and notes that similar domain names have been held to be confusingly similar to the trademarks at issue. See, e.g., E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043 (holding that the disputed domain name to be confusingly similar to complainant’s trademark EDMUNDS). Additionally, one of the disputed domain names which is subject of the Complaint incorporates the letters “zz” at the end of the MONCLER trademark, namely . The Panel regards the letters “zz” to be phonetically identical to the letter “s” and does not believe that the addition of these letters differentiates the disputed domain names from Complainant’s MONCLER trademark.
The following question is whether the additional elements in the domain names are distinctive. The Panel finds that the additional elements incorporated in these disputed domain names are generic terms, descriptive terms, numbers, and/or abbreviations. None of these elements are sufficiently distinctive or unique as to dispel a likelihood of consumer confusion. Specifically, generic and descriptive terms such as “any”, “jacket”, “down jacket”, “coat”, “winter” “new”, “store”, “outlet”, “sale”, “cheap”, and “shop” do not avoid confusing similarity when combined with a trademark to create a domain name. This has been held in numerous decisions including U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511, PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027, and Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191. In some of the disputed domain names, the fact that Respondent is using generic and descriptive terms which describe Complainant’s goods (e.g., jacket, coat) only increases the likelihood that consumers would be confused. Regarding the combination of Complainant’s MONCLER trademark and numbers to form the disputed domain names, it has been held by previous UDRP panels that similarly composed domain names were not sufficiently distinguishable from their corresponding trademarks. For example, a case involving the domain name held that “[t]he addition of a number does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.” (LEGO Juris A/S v. huangderong,WIPO Case No. D2009-1325). Combining a trademark with abbreviations to form a domain name also does not avoid a likelihood of confusion. In the present case, the abbreviations “uk”, “us”, and “eu” correspond to the International Organization for Standardization (“ISO”) country codes and the country code top level domain (ccTLD) abbreviations for the United Kingdom of Great Britain and Northern Ireland, the United States of America, and the European Union, respectively. Because these abbreviations correspond to the ISO and ccTLD codes for these jurisdictions, their uses in the disputed domain names contribute to the likelihood that consumers will believe that the products offered originate from affiliate of Complainant based in one of these regions. This likelihood of confusion is further accentuated given that the products featured on these disputed domain names are advertised in local currencies (i.e., the products on are advertised in Pounds Sterling, the products on are advertised in United States Dollars, while the products on are advertised in Euros). Prior UDRP cases have held that the incorporation of an ISO or ccTLD code is a non-distinctive element which does not avoid confusing similarity. See, e.g., Samsung Electronics, Co., Ltd. v. Maksim, WIPO Case No. D2010-1274 and eBay Inc. v. David Sach, WIPO Case No. D2009-1083.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has registered trademark rights in MONCLER which precede the creation of the disputed domain names between September and December of 2010. These rights are recognized in Respondent’s residence country of the People’s Republic of China, where they can be traced to 1983.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s MONCLER trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “moncler”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The record shows that Complainant has trademark rights in MONCLER and provides clothing under this mark. The websites located at , , , , , , , , , , , , , , , and advertise goods identical to those provided by Complainant under Complainant’s MONCLER trademark. In many cases the images of the goods displayed appear to be branded with Complainant’s trademarks. It is clear that Respondent was aware of Complainant’s trademark rights when registering the disputed domain names given that the domain names incorporate Complainant’s trademark in its entirety and the content of the associated website features goods identical to those offered by Complainant.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. There is no evidence in the record to indicate that Respondent chose the disputed domain names which are subject of the Complaint based upon a bona fide intent to offer goods or services distinctive from those provided by Complainant under its MONCLER trademarks. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on many of the domain names illustrates an intent to deceive consumers into believing that the disputed domain names are somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Regarding the disputed domain names which are not active for content, there is no evidence in the record to indicate that Respondent has used these disputed domain names to promote a bona fide intent to offer goods or services distinct from those of Complainant. As established by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of the Respondent’s behavior are indicative of bad faith. In this case, Respondent has registered multiple domain names composed of a distinctive trademark which has been recognized as well-known and other non-distinctive elements such as generic or descriptive terms, recognized abbreviations, and numbers. The Panel is of the opinion that Respondent’s pattern of domain name registration behavior is indicative of bad faith regardless of whether the use is active or passive.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: May 17, 2011
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