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 Manlingtrade of Putian, Fujian Province, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with N LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2011. On March 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 1, 2011, the Registrar 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 April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 5, 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 is a leading designer and producer of sportswear and sports bags known throughout the world. The Complainant is the registered owner of the trademark MONCLER in countries around the world, including in the People’s Republic of China. The registrations in the People’s Republic of China, where the Respondent is located, date back to 1983. The status of the fame and notoriety of the Complainant’s mark has been acknowledged by many UDRP panels. See, e.g., Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049.
The Complainant has been in business since 1952 in France and currently has more than 2,000 retail outlets in Italy, France, Germany, the People’s Republic of China, Japan and the United States of America. Its current annual turnover is in the region of seventy million euro. The Complainant provided the official 1968 Winter Olympic Games uniform for the French team under its trademark MONCLER and continues to be universally recognized for its winter sports clothing and bags.
The Domain Names were all registered in January, February and March, 2011 as follows, namely (January 13, 2011), (February 5, 2011), (February 22, 2011), (February 11, 2011), (March 1, 2011), (January 13, 2011), (February 5, 2011), (February 12, 2011), (February 27, 2011), (March 14, 2011), (March 9, 2011), (January 25, 2011), (February 5, 2011), (February 28, 2011), (March 12, 2011), (January 24, 2011), (February 5, 2011), (February 5, 2011), (February 14, 2011), (February 14, 2011), (January 13, 2011), (February 24, 2011), (March 14, 2011), (March 21, 2011), (March 9, 2011), (February 5, 2011), (January 13, 2011), (February 5, 2011), (February 12, 2011), (March 8, 2011), (February 19, 2011), (March 21, 2011), (January 13, 2011), (February 5, 2011), (February 22, 2011), (February 8, 2011), (January 13, 2011), (January 31, 2011), (March 21, 2011), and (March 12, 2011).
The Domain Names comprise in the main the MONCLER trademark and common words and abbreviations (in French and/or Italian and/or English) for “Italy”, “company”, “online,” “outlet,” “jacket(s) ”, “buy”, “shop”, “store”, “official website”, “2011”, “man”, and “woman”. Some of them, such as , feature an apparently random single letter at the end. In the case of and there is also featured the word/name, “carrefour”, which means “crossroads” in French, but is better known internationally as the name of a French supermarket chain.
As at the date of the Complaint all but one of the Domain Names resolve to web sites at which goods featuring Complainant’s registered marks are offered for sale or to web sites which contain links to such web sites. One of the Domain Names () currently does not resolve to a web site.
The Complainant asserts that all the Moncler goods on offer at or through the Respondent’s sites are “blatant counterfeits”, but fails to give the Panel any means by which that assertion can be tested. The fact that the Respondent failed to respond to the allegation may indicate that that is likely to be the case. 5. Parties’ Contentions A. Complainant
The Complainant contends that all the Domain Names are confusingly similar to the Complainant’s MONCLER trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names (none of the factors mentioned in paragraph 4(c) of the Policy applying) and finally that the Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith. B. Identical or Confusingly Similar
As can be seen from section 4 above, the Domain Names consist of the Complainant’s registered trademark MONCLER to which the Respondent has added, in the main, non-distinctive words (and in some cases letters) such as “enligne” (the French translation for “online”), “outlet”, “giubbotti” or “doudoune” (respectively the Italian and French translation for “jacket(s)”) or “uomo” (the Italian translation for “man”), etc. In the case of the two Domain Names featuring the word “carrefour”, in context it is more than likely that the presence of the word is not there for the dictionary meaning, but because of its fame as the name of a retailer. While the name of the retailer is distinctive, its presence in these domain names does not destroy the distinctiveness of the Complainant’s trade mark, it simply adds a level of potential confusion.
The combination in a domain name of the Complainant’s mark and words descriptive of the Complainant’s business or products is confusingly similar to the Complainant’s mark. Forte (UK) Limited v. Eugenio Ceschel,WIPO Case No. D2000-0283; The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd,WIPO Case No. D2000-0388. Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The consensus view of UDRP panels concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Section 2.1.
In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Names and the Respondent has failed to assert any such rights.
It is conceivable, of course, that the Respondent might have been able to establish that its trade in the Complainant’s branded products had given rise to such rights within the meaning of paragraph 4(c)(i) of the Policy at any rate in relation to certain of the Domain Names. However, there is nothing about the Respondent’s behaviour, which encourages a finding in its favour in relation to any of them.
The Respondent has adopted a large number of domain names featuring the Complainant’s trade mark, far more than might reasonably be regarded as necessary for its purpose and appears to have been attempting to monopolise the most desirable combinations, yet some of them (e.g. those with a random letter at the end, such as and ), in the absence of an explanation, appear to contain typographical errors. Some of them represent themselves to be the official site of the Complainant (e.g. ). Two of them, and , for no obviously legitimate reason feature the name of a well-known French supermarket chain. In addition the Respondent failed to respond to the Complainant’s allegation that the goods it is offering for sale are counterfeit. Finally, the Respondent’s websites all feature text and logos peculiar to the Complainant, thereby giving the impression that they are websites of or authorized by the Complainant.
The Panel does not believe that the Respondent’s business conducted under and by reference to the Domain Names can sensibly be regarded as a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
With the exception of that does not resolve to a web site, the Domain Names resolve to web sites offering Moncler products for sale. According to the Complainant, all of these products are counterfeits, as determined by the Complainant’s examination of the products appearing in the Respondent’s web sites, or in web sites resulting from links in the Respondent’s web sites. 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 registration and use in bad faith. Cartier International, N.V., Cartier International B.V. v. David Lee ,WIPO Case No. D2009-1758.
As to the Domain Name which does not resolve to a web site, the fact that it uses the Complainant’s famous trade mark, that it is held by the Respondent who has utilized numerous other similar domain names to resolve or link to web sites at which goods apparently imitating those of the Complainant are sold, and that the Respondent has no rights or legitimate interests in respect to any of the Domain Names, is sufficient under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 to constitute bad faith registration and use.
The Panel believes it quite likely that the products being sold through the Respondent’s websites are, as the Complainant asserts, counterfeits, but whether or not they are counterfeit the generally deceptive nature of many of the Domain Names combined with the deceptive nature of all the Respondent’s websites (they represent directly or indirectly that they are official websites of the Complainant) is such that the Panel is satisfied on the evidence before it that the Respondent registered the Domain Names for commercial gain and with the intention of deceiving Internet users and has used them in accordance with that intention.
Accordingly, for all the above reasons, the Panel finds that all the Domain Names have been registered and are being used in bad faith. 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.
In the absence of any letter of consent from Carrefour, the French supermarket chain, the Panel does not believe it right that the two Domain Names, and , should be transferred to the Complainant. However, in the view of the Panel, they should not be permitted to remain in the hands of the Respondent and for all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that they be cancelled. 8. Addendum
The Panel notes from the papers before the Panel that some of the Domain Names resolve to sites connected to two other domain names, namely and . However, the Complainant has not requested any relief in relation to these domain names. They are therefore outside the scope of this proceeding.
Tony Willoughby
Sole Panelist
Dated: May 10, 2011
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