The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is xi yang of Beijing, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and are registered with HiChina Zhicheng Technology Ltd.
The disputed domain name is registered with B, Inc.
Collectively, the “Registrars”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 15, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 16, 2012, the B, Inc. 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 18, 2012, HiChina Zhicheng Technology Ltd. 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 18, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On October 18, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2012.
The Center appointed Dr. Hong Xue 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 is a producer of outwear, sportswear, clothing and accessories under the brand name MONCLER. The Complainant owners more than 500 national and international trademark registrations comprising MONCLER worldwide.
The Respondent, over October and November 2011, registered the following disputed domain names: , , , , , , , , , , , , , , , , , , , , , , , , , and .
All the disputed domain names remained properly locked by the Registrars throughout the proceeding. 5. Parties’ Contentions A. Complainant
The Complainant states that the MONCLER trademark has been registered since 1963 and has been used in more than 100 Countries in connection with its outwear and sportswear products.
The Complainant contends that the Respondent’s following disputed domain names, i.e. , , , , , , , , , , , , , , , , , , , , , , , , , and , are confusingly similar to the MONCLER trademark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant requested that the Panel issue a decision that the all disputed domain names be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreements for the disputed domain names specified above, as confirmed by the concerned Registrars, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented the reasons. The Respondent did not make any submissions in relation to the language of the proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may in appropriate circumstances both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the parties’ language ability in the proceeding.
In the present case, the Panel finds that the Respondent has sufficient capacity to understand and use English. The Panel notes that the websites at the disputed domain names , , , , , , , , , , , , , , , , , , , , , and display the contents in English, amongst other languages. Furthermore, the Complainant has submitted the Complaint in English and would bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreements, namely Chinese.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
According to the Policy, paragraph 4 (a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the identity or confusing similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant had acquired the trademark rights over the mark MONCLER through registrations in a number of countries and regions, including China which is the Respondent’s country of residence.
The disputed domain names are , , , , , , , , , , , , , , , , , , , , , , , , , and .
Apart from the generic top-level domain suffix “.com”, “.org” or “.net”, all 27 disputed domain names take the “moncler + generic word(s)” model. The generic words added before or after “moncler” are “cheap” (also featured in other domain names in the following languages Swedish – billig-, French – pas cher- Dutch – goedkope-), “coats”, “online”, “outlet”, “barn” (children in Swedish) “jacket(s)” (also featured in other domain names in the following languages Swedish – -jackor, jacken-, Italian – giubbotti-, German – weste-, Dutch – jassen-, Turkish – mont-, French – doudoune-), “sale” (also featured in other domain names in the following languages German – verkauf-, Italian – vendita-), “shop”, “winter”, “France”, “Germany”, “Greece”, “Japan”, “Russia”, “Zurich”, “if”, “de”, “fr” and “ru”. Among these disputed domain names, 4 contain dash marks displaying the model of “moncler + generic word(s)”.
A majority of generic words contained in the disputed domain name are directly related to the Complainant’s business or products under the mark MONCLER. It is established by numerous decisions under the Policy that adding generic words that are related to a complainant’s business is likely to lead the panel to find confusing similarity between the disputed domain name and the complainant’s trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. FA93670). Therefore, the disputed domain names comprising of the Complainant’s registered trademark MONCLER in its entirety and other descriptive words relating to the Complainant’s business, such as “shop”, “jacket(s)” (in a couple of language versions), “outlet” and “coats”, are confusingly similar to the Complainant’s registered trademark MONCLER.
The other disputed domain names that comprise of the Complainant’s registered trademark MONCLER and descriptive or generic components, such as “cheap”, “if”, “winter”, “France”, “Germany, “Greece”, “Japan” or “-”, are also non-distinctive from the Complainant’s mark and could be deemed related to the Complainant’s business locations or operations.
Therefore, the Panel find that the disputed domain names are confusingly similar to the Complainant’s registered mark and the Complaint has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserted that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. The Respondent did not rebut the Complainant’s contention that the disputed domain names were not used in connection with any bona fide offering of goods or services. The lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Complaint has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contended the Respondent had registered and is using the disputed domain names in bad faith. The Respondent did not respond.
The Complainant presents the evidence that 23 disputed domain names, i.e. , , , , , , , , , , , , , , , , , , , , , , , are active and resolve to websites offering possible counterfeit MONCLER products. Since the disputed domain names were registered and are fully controlled by the Respondent, the Respondent is responsible for any use of them. Such use of the disputed domain names is highly likely to attract and confuse consumers as to the source, sponsorship, affiliation or endorsement of the disputed domain names’ websites or of the products on the websites with the Complainant and its mark. Therefore, the registration and use of 23 above-mentioned disputed domain names was in bad faith, as specified in paragraph 4(b)(iv) of the Policy.
With respect to the other four disputed domain names, all of them are confusingly similar to the Complainant’s trademark MONCLER. Since the Respondent has obviously shown a pattern of conduct to copycat the Complainant’s trademark and business, this group of disputed domain name registrations also constitute evidence of bad faith registration and use as specified in paragraph 4(b)(ii) of the Policy.
Therefore, the Complaint successfully proves the third element required by 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 , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Date: December 11, 2012
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