The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Ni John a.k.a. John ni of Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 15, 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.
On October 15, 2012, the Center sent an email communication to the parties, both Chinese and English, regarding the language of the proceeding. On the same day, the Complainant confirmed its request which was included in the Complaint that English be the language of the proceeding. The Respondent did not make any submissions with respect to the language of the proceeding.
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 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 Linda Chang as the sole panelist in this matter on December 4, 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.
As the Notification of Complaint and Commencement of Administrative Proceeding and the Complaint (including annexes) were not notified to all email addresses of the Respondent pursuant to paragraph 2(a)(ii) of the Rules, the Panel issued the Administrative Panel Procedural Order No. 1 on December 18, 2012, requesting the Center to forward the Notification of Complaint and Commencement of Administrative Proceeding to the email addresses of the Respondent and allowing the Respondent with an additional five days from the date of the Procedural Order to indicate whether it intended to participate in the proceedings. The Respondent did not respond. 4. Factual Background
The Complainant, a French company founded in 1952, is a producer of outerwear and sportswear and offers clothing and accessories. The Complainant invented the word MONCLER and registered it as trademark as early as 1963. The Complainant is the owner of more than 500 trademark registrations comprising MONCLER worldwide and has been using the trademark MONCLER in more than 100 countries for about 50 years in connection with its products.
The Respondent, on October 17, October 18 and October 19, 2011, registered the Domain Names , , , , , , , , , , , , , , , , , , , , , , , , and . 5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise. In the current case, the language of the Registration Agreements is Chinese as confirmed by the Registrar, and no agreement appears to have been reached between the Complainant and the Respondent about the language of the proceedings.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings by stating that (i) if the Complainant is required to translate the Complaint and participate in the proceedings in Chinese, the Complainant would be prejudiced and it would cause delay to the proceedings; and (ii) the Respondent has demonstrated that it understands English since the majority of the Domain Names are constituted by the combination of the mark MONCLER with descriptive terms in English, and furthermore, the active Domain Names are all directing to web sites entirely in English. The Respondent did not file any submissions to object to the use of English as the language of the proceedings after it was notified by the Center of the language request of the Complainant.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel holds that the Complainant has introduced sufficient evidence to prove that the Respondent is capable of communicating in the English language, and using English as the language of the proceedings would not prejudice the Respondent in its ability to defend itself, while additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the trademark MONCLER as the Domain Names incorporate the entirety of the trademark MONCLER. The generic terms in the Domain Names are selected by the Respondent to particularly increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Domain Names and the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainant finally contends that the Domain Names were registered and are being used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel notes that the Complainant has trademark registrations comprising MONCLER in multiple jurisdictions including China where the Respondent is domiciled. Trademark registrations of the mark MONCLER owned by the Complainant include International Trademark Registration No. 269298 registered on May 11, 1963, International Trademark Registration No. 504072 registered on June 20, 1986, International Trademark Registration No. 978819 registered on June 25, 2007, Chinese Trademark Registration No. 177079 registered on May 15, 1983 and Chinese Trademark Registration No. 6084723 registered on March 7, 2010. The above trademark registrations predate the registration of the Domain Names and the Panel determines that the Complainant has provided sufficient evidence to demonstrate its established rights in the mark MONCLER.
Each of the Domain Names incorporates the Complainant’s trademark MONCLER in its entirety. The Panel finds it an established practice that the generic top-level domain indicator such as “.com” is not a distinguishing factor and does not affect a domain name for the purpose of determining whether it is identical or confusingly similar. The Panel further holds that the mere addition of descriptive terms to the Domain Names, including “online(s)”, “shop(s)”, “outlet”, “coats”, “jacket(s)”, “sale(s)”, “canada”, “jacken(s)” (“jackets” in German), “piumini(s)” (“jackets” in Italian), “sito ufficiale” (“official site” in Italian), “uk”, “de”, “2011”, “2012” and the hyphens, is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s trademark MONCLER. Furthermore, the Panel agrees that some of the above cited generic terms are descriptive and closely connected to the products of the Complainant, which particularly increases the likelihood of confusion among Internet users.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s trademark MONCLER. B. Rights or Legitimate Interests
The Panel holds that mere registration of a domain name does not establish a respondent’s rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy, and a respondent has to present proof to demonstrate that it has rights or legitimate interests in a domain name to counter a prima facie case against it. See Potomac Mills Limited Partnership v. Gambit Capital Management,WIPO Case No. D2000-0062.
In the circumstance where the Complainant has proved that it possesses exclusive rights to its invented name and trademark MONCLER and the Respondent is not a licensee or agent of the Complainant, or in any other way authorized to use the Complainant’s trademark MONCLER, (especially given the use of the Complainant’s design mark without any disclaimer of clarifying information on the subject websites) the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names, and the burden of production shifts to the Respondent.
The Respondent appears to have no trademark rights in the mark MONCLER and has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy to demonstrate its rights or legitimate interests in the Domain Names. Besides, the Respondent has chosen not to respond to the Complainant’s contentions. The Panel therefore concludes that prima facie evidence has been established to show the Respondent’s lack of rights or legitimate interests in respect of the Domain Names, and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The word “moncler” is distinctive and was first invented by the Complainant. The use of the mark MONCLER by the Complainant significantly predates the registrations of the Domain Names and the mark MONCLER has been widely publicized and recognized. The Panel agrees that it is inconceivable that the Respondent was unaware of the mark MONCLER at the time of registering the Domain Names, considering the circumstances that the Respondent registered 26 domain names within 3 consecutive days, with each of them wholly incorporating the mark MONCLER and their web sites displaying the Complainant’s particular trademarks and products. The Panel thus determines that the Respondent was well aware of the Complainant and its mark MONCLER when registering the Domain Names, and registered the Domain Names in bad faith, with clear intention to use the Domain Names to refer to the Complainant’s mark and trade on the fame of the Complainant.
The Panel finds that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to a domain name incorporating the Complainant’s mark and may most likely be confused into believing that the web sites associated with the Domain Names are owned or managed by the Complainant and/or the Respondent is affiliated with or authorized to sell products of the Complainant, which is contrary to the fact as claimed by the Complainant. The Panel is satisfied that the Respondent is trying to falsely suggest an affiliation with the Complainant and the mark MONCLER and bad faith is established by the Respondent’s use of the Domain Names to intentionally confuse Internet users and to trade on the Complainant's reputation.
Several of the Domain Names (listed in Annex 7 to the Complaint) resolved to default website pages without actual contents. These Domain Names have been registered for more than one year and the Respondent did not present any proof to evidence its use or preparations to use them for bona fide purpose prior to the notice of this dispute. The Panel holds under the circumstances that the Respondent’s passive holding of these Domain names constitutes bad faith use.
Finally, the Respondent has chosen not to respond to the cease & desist letters sent by the Complainant and contentions in the Complaint. Such failure may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy. 8. 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.
Linda Chang
Sole Panelist
Date: December 27, 2012
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