The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Bruce Lee of New York, United States of America. 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 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed 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.
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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 102.
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 nearly EUR 18 million related to the United States of America. In autumn/winter 2012, the Complainant’s advertising expenditure was more than EUR 6 million, of which more than EUR 1.4 million related to the United States of America.
The Complainant owns a large international portfolio of registered trade marks for 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 30, 2011 (, , , , >, ) and January 17, 2012 (, , , , , , , ,).
The Respondent has used the disputed domain names to resolve to parking page with sponsored links to the Complainant’s competitors as well as to the Complainant’s own website.
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 10 domain names which include the Complainant’s trade mark, in addition to the 15 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. The use of the disputed domain names for websites with sponsored links to the products/services of third parties, along with Complainant’s goods, is not to be considered as a bona fide offering of goods or services. 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 the United States of America 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.
Use of the disputed domain names for links to websites of the Complainant’s websites, as well as the Complainant, constitutes bad faith under paragraph 4(b)(iv) of the Policy. Other indicators of bad faith are 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 disputed 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.
As indicated in 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 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 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.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain names could not be said to be bona fide.
Nor is there 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
In the Panel’s view, it is obvious that the Respondent registered the disputed domain names with the Complainant’s distinctive and well-known trade mark in mind.
The Respondent has used the disputed domain names for a websites with sponsored links to the Complainant’s competitors as well as to the Complainant’s own products.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain names and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
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
Date: December 10, 2012
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