The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Shujin Shen of Putian, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2012, 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. In response to a notification by the Center that some of the disputed domain names had expired and become available for registration, the Complainant filed an amendment to the Complaint on October 18, 2012.
The Center verified that the Complaint together with the amendment to 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 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2012.
The Center appointed Adam Taylor as the sole panelist in this matter on November 27, 2012. 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 was founded in France in 1952. It originally supplied mountain-climbing and skiing apparel and equipment under the name “Moncler”. In 1968, the Complainant was chosen as the official clothing supplier to the French Olympic team.
The Complainant expanded into urban fashion in the 1980’s and is now widely known as a luxury sportswear brand. The Complainant uses the mark MONCLER in more than 100 countries. In 2010, the Complainant’s sales were more than EUR 282 million of which more than EUR 50 million related to Asia. In autumn / winter 2012, the Complainant’s advertising expenditure was more than EUR 6 million, of which more than EUR 400,000 related to China.
The Complainant owns a large international portfolio of registered trade marks for the word “Moncler” including International Trademark Registration No. 269298 (home territory France; designated in 16 other territories) registered on May 11, 1963, in classes 20, 22, 24 and 25.
The disputed domain names were registered on November 1, 2011 (, , , ) and November 11, 2011 (, , , , , , , , ).
There is no evidence that any of the disputed domain names have ever been used for websites.
The Complainant sent a cease and desist letter to the Respondent on September 17, 2012. The Respondent did not respond.
The Respondent has registered at least 15 domain names which include the Complainant’s trade mark, in addition to the 13 disputed domain names. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant’s trade marks.
Each disputed domain name consists of the Complainant’s entire trade mark plus a descriptive or generic term. Some of those terms are likely to increase the likelihood of confusion, given the connection with the Complainant’s goods or services. Rights or Legitimate Interests
The Respondent is not a licensee, an authorised agent of the Complainant or in any other way authorized to use the Complainant’s trade mark.
The Respondent is not commonly known by the disputed domain names.
The Respondent has provided no evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, or as part of a noncommercial or fair use before any notice of the dispute. Registered and Used in Bad Faith
The Respondent could not possibly have been unaware of the Complainant’s trade mark, given the Complainant’s extensive worldwide use of the trade mark since 1963, including in China where the Respondent is located. This is also obvious from the numerous domain names (including the disputed domain names) owned by the Respondent which consist of the Complainant’s trade mark plus generic words relating to the Complainant’s business.
The disputed domain names constitute “passive holding” under the principles set out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. It is relevant that the Complainant’s trade mark is an invented word and not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, that the Respondent did not reply to the Complainant’s cease and desist letter and that the Respondent has engaged in a pattern of abusive domain name registrations vis a vis the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark MONCLER by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Paragraph 1.2 of The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this case, each of the disputed domain names consists of the Complainant’s distinctive trade mark together with an additional generic word or phrase. Some are in English and some are in Italian. Here are translations of the Italian terms:
giubbotti:
jackets
Italia:
Italy
piumini:
duvets
sito ufficiale
official website
spaccio
shop
As indicated in the WIPO Overview 2.0, added generic terms, such as those comprised in the disputed domain names, are typically regarded as insufficient to prevent threshold Internet confusion. Indeed some of the additional generic terms bear a close relationship to the Complainant’s business (e.g. “jackets” and “shop") and are apt to increase the likelihood of confusion.
For the above reasons, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“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 a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
There is no evidence of any use of, or demonstrable preparations to use, the disputed domain names connecting with a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.
Nor is there is any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 3.2 of the WIPO Overview 2.0 sets out the following consensus view on the principles of “passive holding”:
“…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa...”
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
1. the Complainant’s trade mark is well-known and distinctive and indeed many of the additional generic terms in the disputed domain names are directly referable to the Complainant’s business;
2. the Respondent has not attempted to provide any evidence of actual or contemplated good faith use of the disputed domain names;
3. the Respondent has not responded to the Complainant’s cease and desist letter or to this proceeding;
4. the Respondent has engaged in a pattern of abusive registrations directed at the Complainant whereby it has registered at least 28 domain names (including the disputed domain names) which incorporate the Complainant’s MONCLER trade mark; and
5. it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.
The Panel therefore finds that the Complainant has established the third element of 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 disputed domain names, , , , , , , , , , , , , be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: December 10, 2012
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