Complainant is Moncler S.r.l. of Milano, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
Respondent is Daniel Park of Guangzhou, Guangdong, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 16, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On March 17, 2011, 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 Respondent of the Complaint, and the proceedings commenced on March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on April 27, 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
Complainant Moncler S.r.l. is one of the leading Italian companies in the field of sportswear and sport bags and is the owner of the trademark MONCLER throughout the world, with registrations dating back as far as 1963. Complainant was founded in 1952 in France. In more than fifty years of activity, Complainant, which can count about 2,000 shops inter alia in Italy, France, Germany, the People’s Republic of China, Japan and the United States of America, reached the current global turnover of EUR 70 million. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain names include the trademark and trade name MONCLER to which they simply add non-distinctive words such as “(-)(on)shop”, “(-)(on)shopping”, “cheap”, “doudoune” or “giubbotti” (respectively the French and Italian translation of “jacket(s)”), etc. Complainant cites various UDRP decisions in which the respective panels have held that when a domain name contains in full a complainant’s registered mark, that is sufficient to establish confusing similarity.
Complainant contends that there is no way that Respondent may not have been aware of the trade name and trademark MONCLER and that the registration of the disputed domain names may only have occurred in bad faith.
Complainant argues that Respondent is from China, which is among the largest markets for the genuine MONCLER products. Complainant further argues that the fact that Respondent sells counterfeit MONCLER products is additional evidence that he was, and is, well aware of the trademark MONCLER, and registered the disputed domain names in bad faith.
Complainant states that, upon information and belief, Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant states that Respondent is not associated in any way to Complainant or its distribution network. Complainant argues that Respondent has never been commonly known in the normal course of business by “the trademark, trade name or domain name MONCLER”. Complainant further contends that there is no evidence of a bona fide noncommercial or other legitimate fair use by Respondent. Complainant states that, in fact, the only use made of the disputed domain names is to sell infringing products, and that this use is neither noncommercial nor legitimate.
Complainant reinforces its arguments that Respondent uses the disputed domain names in bad faith. Complainant states that the disputed domain names resolve (except , and , which do not seem to be active at the time the Complaint was filed, , which does not seem to sell MONCLER products at the time the Complaint was filed, and , a parking page) to websites offering MONCLER products for sale. Complainant states that all of products offered in such websites are blatant counterfeits.
Complainant argues that previous UDRP panels have consistently held that the use of a domain name confusingly similar to a well-known trademark in order to sell counterfeit products via the Internet is a typical case of use in bad faith. Complainant states that Respondent seems to operate several sites with domain names including MONCLER, in order to attract as many customers as possible and sell counterfeit Moncler products passing off them as genuine and, that this would be a large attack to Complainant from an individual or organization systematically selling counterfeit products through the use or, rather, misuse of several Moncler-derivative domain names. Also, Complainant contends that, as for and , which at the time of Complainant’s visit were not selling counterfeit products, Complainant could not control what they may sell in the future and Respondent’s activities with other domain names make it likely that these will also be used for selling counterfeit products.
Moreover, Complainant also states, with regard to inactive web sites at the disputed domain name , and , that prior UDRP panels have consistently held that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept.” Complainant finally argues that in this specific case, further evidence of bad faith is given by the fact that Respondent also holds six other domain names including the trademark and trade name MONCLER and uses them in bad faith offering counterfeit Moncler products for sale. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has trademark rights over the expression “MONCLER”.
The Panel finds that Complainant’s registered MONCLER trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain names are confusingly similar with Complainant’s MONCLER trademark. The only difference between Complainant’s registered trademark and the disputed domain names are the addition of generic and non-distinctive words such as “(-)(on)shop”, “(-)(on)shopping”, “cheap”, “doudoune” or “giubbotti” (respectively the French and Italian translation of “jacket(s)”).
The Panel finds that the difference pointed above is not enough to characterize the disputed domain names as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant”). Moreover, the Panel finds that adding a generic expression such as “reseller” or “resellers” is likely to increase the possibility of confusion amongst consumers.
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain names.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Taking into consideration that Respondent has failed to respond to Complainant, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain names, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services.
In fact, Complainant has demonstrated that Respondent is using some of the disputed domain names to hold websites which offer apparently counterfeit products with Complainant’s trademarks. This is not a bona fide offering of goods or services.
At the time this Complaint was filed, the disputed domain names directed Internet users to parking pages offering goods and services in competition with Complainant. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy , a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy, paragraph 4(b)(iv).
Respondent has intentionally registered the disputed domain names which totally reproduces Complainant’s well-known trademark MONCLER. By the time the disputed domain names were registered, it is unlikely that Respondent did not have knowledge of the Complainant’s rights on the trademark MONCLER and this is reinforced by the fact that Respondent used some of the disputed domain names to offer counterfeit MONCLER products.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its MONCLER registered trademark when the disputed domain names were registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed the Complainant’s trademark when it registered the disputed domain names.
Also, under the Policy, it is evidence of bad faith that,
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv).
Respondent used Complainant’s known trademark to attract users to websites offering counterfeited MONCLER products and to a parking page. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
In light of these, the Panel finds Respondent registered and used the disputed domain names in bad faith. Complainant has established the third element of the paragraph 4(a) 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 the Complainant.
Eduardo Machado
Sole Panelist
Dated: May 11, 2011
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