The Complainant is Moncler S.R.L. of Milano, Italy, represented by Studio Barbero, Italy.
The Respondent is Xiaolan Sun (孙晓岚) of Hengyang, Hunan, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , are registered with HiChina Zhicheng Technology Ltd.
The disputed domain names , , , , , , , , , , , , are registered with Xin Net Technology Corp.
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 18, 2012, the Center transmitted by email respectively to HiChina Zhicheng Technology Ltd., Xin Net Technology Corp. and Hangzhou E-Business Services Co., Ltd. (the “Registrars”) requests for registrar verification in connection with the disputed domain names. On October 19, 2012, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On November 5, 2012, the Center sent an email communication to the parties, both in 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 November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on December 10, 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, founded in 1952, is a producer of outerwear and sportswear. The Complainant has registered the trademark MONCLER since 1963 and is the owner of more than 500 national and international trademark registrations comprising MONCLER worldwide.
The Respondent, over September, October and November 2011, registered the following disputed domain names: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”). 5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceeding shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant filed its Complaint in English and requested for English to be the language of the proceeding for the following reasons:
(a) all the Domain Names are made up of letters in Ascii-Script rather than Chinese script and could be pronounced phonetically in English;
(b) the websites to which the Domain Names resolve are/were in English, French, German, Italian, Dutch, Danish, Hungarian and Russian, and their contents have no connection with Chinese, the language of the Registration Agreements of the Domain Names;
(c) the English language is the one which is mostly likely to be understood by both parties of the present proceedings, and it would be disproportionate to require the Complainant to submit a translated Complaint.
As confirmed by the Registrars, the language of the Registration Agreements is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding 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 notes that the websites to which the Domain Name resolve or used to resolve display their contents in various languages, including English, French, German, Italian, Dutch, Danish, Hungarian and Russian, and there is no version of the Domain Names with contents in Chinese. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceeding but it did not do so.
The Panel has also taken into consideration that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
The Panel concludes that the English language is mostly likely to be understood by both parties and using English as the language of the proceeding will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceeding 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 trademark MONCLER was entirely included in the Domain Names with the addition of generic terms.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainant finally contends that the Respondent registered and is using the Domain Names 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 Names are 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 Names; and
(iii) the Domain Names have been registered and are 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 Domain Names and the Panel determines that the Complainant has provided sufficient evidence to demonstrate its established rights in the mark MONCLER.
The Domain Names entirely incorporate the Complainant’s trademark MONCLER, with addition of generic terms such as “online”, “outlet”, “jacket(s)” (also featured in various languages such as Italian, German, Dutch, French, Hungarian), “store” (also featured in Italian, French, Dutch), “ufficiale” (“official” in Italian), “France”, “Greece”, “Nederland” (the Netherlands in Ducth), “Schweiz” (“Switzerland” in German), “de”, “for”, “fr” “ru” “usa”, “ukraine”- or hyphens. The Panel agrees that the addition of generic terms to the Domain Names does not eliminate the confusing similarity between the Domain Names and the trademark MONCLER. See Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”).
Furthermore, the Panel finds that it is well-established that the generic top-level domain indicator such as “.com” and “.org” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
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’ trademark MONCLER. B. Rights or Legitimate Interests
The Panel holds that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy, and that once a prima facie case has been made, respondents have to present evidence to demonstrate that they have rights or legitimate interests in their domain name. See Potomac Mills Limited Partnership v. Gambit Capital Management,WIPO Case No. D2000-0062.
It is well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455, (“Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy”). As the Complainant has established its rights in the trademark MONCLER and claims the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the trademark MONCLER, and the Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the Domain Names, the Panel concludes that the Complainant’s allegations are sufficient to establish a prima facie evidence showing the Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebuttled.
Moreover, there is no evidence provided by the Respondent to prove its use or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The use of the Domain Names by the Respondent to offer purported Moncler products, or divert Internet users to parking websites, which is capitalizing on the reputation of the Complainant’s trademark, is not a bona fide use pursuant to paragraph 4(c) of the Policy.
Finally, no evidence in the record suggests that the Respondent is making any other legitimate noncommercial or fair use of the Domain Names.
The Panel therefore holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
Based on the evidence produced by the Complainant, some of the disputed domain names are/were used by the Respondent to drive Internet users to online shops selling purported MONCLER products. The mark MONCLER is used on the websites as well as various products being offered for sale.
The Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to a domain name address 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 appears to be contrary to the fact. The Panel is satisfied that the Respondent is trying to falsely suggest an affiliation with the Complainant and the mark MONCLER and that 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. It is very likely that the Respondent is trying to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
After a cease & desist letter was sent to the Respondent by the Complainant, some disputed domain names started to redirect to web sites where sponsored links are published. These parking web sites typically offer domain name holders to earn click through fees for redirecting Internet users to third-party websites and thus, the Respondent is able to generate revenues by capitalizing on the goodwill of the Complainant and its trademarks. Such use has not been considered by previous Panels as a bona fide offering of goods or services, or a legitimate noncommercial or fair use without intent for commercial gain.
Moreover, 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 considered in certain circumstances as 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 24, 2012
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