The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Zheng Little of Lanzhou, Gansu, China / Washington, United States of America. 2. The Domain Names and Registrars
The following 17 disputed domain names are registered with Jiangsu Bangning Science & Technology Co. Ltd: , , , , , , , , , , , , , , , , and .
The following 12 disputed domain names are registered with B, Inc. (together the “Registrars”): , , , , , , , , , , , and .
All 29 disputed domain names are collectively referred to as the “Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 29, 2012, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Complaint was initially filed against the Respondent related to 35 domain names. In response to a notification by the Center that 6 of the domain names have been expired, the Complainant filed amendments to the Complaint to withdraw the expired domain names on November 23, 2012, December 11, 2012, and December 12, 2012, respectively.
On November 19, 2012, the Center sent an email communication to the parties, in both Chinese and English, regarding the language of the proceedings. On the same day, the Complainant confirmed its request which was included in the Complaint that English be the language of the proceedings. The Respondent did not make any submissions with respect to the language of the proceedings.
The Center verified that the Complaint together with the amendments 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 December 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on January 11, 2013. 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 specialized in production of outerwear and sportswear. The Complainant has registered the trademark MONCLER in more than 100 countries since 1963, inter alia, International trademark registration No. 269298 registered as early as on May 11, 1963, No. 504072 registered as early as on June 20, 1986, and No. 978819 registered on June 25, 2007; Chinese trademark registration No. 177079 registered as early as on May 15, 1983, and No. 6084723 registered on March 7, 2010; and also US trademark registration No. 803943 registered as early as on February 15, 1966, and No. 975069 registered as early as on December 18, 1973. Registration dates of these trademarks predate those of the Domain Names.
The Respondent registered all the Domain Names between September 2011 and January 2012 except the Domain Name which was registered in December 2012. At the time the Panel renders this decision, the Domain Name is redirected to a Japanese website and to an English website, both offering for sale purported MONCLER goods; the rest of the Domain Names currently resolve to inactive websites.
The Complainant sent a cease and desist letter to the Respondent on September 17, 2012, requesting the Respondent to immediately cease any use of the Domain Names and to transfer them to the Complainant. The Respondent did not respond but some of the corresponding websites had been temporarily disabled. The Complainant then forwarded the letter a second time by email on September 24, 2012 and has not received any reply from the Respondent. 5. Language of the Proceedings
Under paragraph 11(a) 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.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings in the Complaint for the following reasons:
(a) following a cease and desist letter in English addressed to the Respondent requesting it to cease use of the Domain Names and to transfer them to the Complainant, some of the corresponding websites have been temporarily disabled; however, the Complainant has not received any correspondence from the Respondent requesting clarification, translation or otherwise indicating that there was any issue related to the language adopted; and upon receiving the cease and desist letter, the Respondent changed the WhoIs information for the Domain Name indicating a registered address within the United States of America;
(b) all the Domain Names are made up of letters in Ascii-Script rather than Chinese script and could be pronounced phonetically in English;
(c) the majority of the Domain Names consist just of English terms or a combination of an English descriptive term with a non-English word;
(d) the websites corresponding to the Domain Names , and are entirely in English; the remaining Domain Names actively used have no connection to the Chinese language since they are/were all pointing to websites in Japanese where in many cases, advertisements, words and statements in English are/were published and English related currencies are/were made available;
(e) while the Respondent is clearly familiar with the English language, the Complainant does not communicate in Chinese and would be prejudiced should it be required to translate the Complaint and participate in the proceedings in Chinese.
As confirmed by the Registrar, 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 proceedings should be English.
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.
Based on the above-mentioned Complainant’s contention with regard to language of composing words of the Domain Names, of websites under the Domain Names, and also of the cease and desist letter etc., the Panel is satisfied that the Complainant has produced prima facie evidence as to familiarity of the English language on the part of the Respondent, and taking Chinese as the language of the proceedings may have the Complainant unduly disadvantaged. The Panel is further assured of the fact that the Respondent indicates one of his/her addresses as in the United States of America where English is taken as primary and official language. While being offered a fair opportunity to comment on the use of English as the language of the proceedings, the Respondent failed to do so.
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 first contends that the Domain Names are confusingly similar to the Complainant’s trademark MONCLER. The trademark MONCLER is wholly incorporated in the Domain Names. Some of the descriptive or generic terms in the Domain Names are particularly apt to 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 later contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent is not licensed or authorized to use the trademark MONCLER, nor is he/she commonly known by the Domain Names. The Respondent fails to provide any evidence to use, or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Respondent’s use of the Domain Names to resolve to websites offering prima facie counterfeit MONCLER goods and publishing sponsored links fails to be considered as a legitimate noncommercial or fair use without intent for commercial gain. Besides, the word “moncler”, an invented word deriving from the abbreviation of the town where the Complainant first launched its production, is not one the Respondent would legitimately choose unless seeking to create an impression of an association with the Complainant. Furthermore, the Respondent did not reply to the cease and desist letters sent by the Complainant.
The Complainant finally contends that the Domain Names were registered and are being used in bad faith. In light of the long history and reputation of the Complainant and its trademark MONCLER, and also the fact that the Domain Names were registered over a short period and some of the Domain Names are/were redirected to websites where the trademark MONCLER features prominently and goods bearing the trademark MONCLER are/were sold, the Respondent had actual knowledge of the trademark MONCLER and thus registered the Domain Names in bad faith. The Respondent’s following behaviors indicate his/her bad faith in use of the Domain Names: offering for sale both the Complainant’s and its competitor’s goods on the websites under some of the Domain Names, passive holding of some of the Domain Names, the “pattern of conduct” with registration of 29 Domain Names confusingly similar to the Complainant’s trademark, and failure to respond to the cease and desist letter.
For all of the above reasons, the Complainant requests the transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in its 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
Based on the evidences produced by the Complainant, the Panel is of the opinion that the Complainant has established its rights in the trademark MONCLER, inter alia, International trademark registration No. 269298 registered as early as on May 11, 1963, No. 504072 registered as early as on June 20, 1986, and No. 978819 registered on June 25, 2007; and also Chinese trademark registration No. 177079 registered as early as on May 15, 1983, and No. 6084723 registered on March 7, 2010; and also US trademark registration No. 803943 registered as early as on February 15, 1966, and No. 975069 registered as early as on December 18, 1973.
The Panel notes that the Domain Names are composed of the following elements:
Domain Name Distinctive Element Non-distinctive Elements Suffix
moncler
cheap, “hyphen”, jackets, sale
.com
moncler
doudoune (French, meaning “jacket”), femme (French, meaning “woman”), “hyphen”, fr (abbreviation of “France”)
.net
moncler
down, jacket, outlets
.com
moncler
down, japan
.com
moncler
down, s, “hyphen”, jp (abbreviation of “Japan”)
.com
moncler
jacket, “hyphen”, outlet, uk (abbreviation of the “United Kingdom of Great Britain and Northern Ireland”)
.com
moncler
jackets, “hyphen”, jp (abbreviation of “Japan”)
.net
moncler
jackets, online, “hyphen”, mall
.com
moncler
“hyphen”, jackets, online
.net
moncler
jackets, “hyphen”, outlet, uk (abbreviation of the “United Kingdom of Great Britain”)
.com
moncler
jackets, women
.com
moncler
jassen (Dutch, meaning “jackets”), outlet, online
.com
moncler
“hyphen”, rakuten (name of the largest online store in Japan)
.com
moncler
shop, “hyphen”, japan
.com
moncler
new, jackets, shop
.com
moncler
new, style, jackets
.com
moncler
piumini (Italian, meaning “jackets”), outlet, “hyphen”, italy
.com
moncler
japan, s
.com
moncler
down, jackets, “hyphen”, jp (abbreviation of “Japan”)
.com
moncler
down, jackets, 2012
.com
moncler
down, s, “hyphen”, japan
.com
moncler
jacket, online, mall
.com
moncler
“hyphen”, jackets, japan
.com
moncler
jackets, “hyphen”, japan
.net
moncler
online, “hyphen”, japan
.com
moncler
shop, “hyphen”, jp (abbreviation of “Japan”)
.com
moncler
store, “hyphen”, japan
.com
moncler
store, “hyphen”, online
.net
moncler
new, “hyphen”, outlet
.com
All the Domain Names incorporate the trademark MONCLER in its entirety serving as the distinctive element of the Domain Names. Previous UDRP decisions have made it clear that incorporation of a complainant’s distinctive trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark and the addition of a non-distinctive element to the domain name does not sufficiently differentiate the domain name from the trademark. In the present case, generic/descriptive terms, such as “cheap”, “jackets”, “sale”, “online”, and “italy”, are added to the Domain Names, which fail to the Panel to avoid the similarity between the trademark and the Domain Names but rather strongly strengthen the similarity as the terms, more or less, relate to the Complainant’s business or a description thereof, place of business or an abbreviation thereof to a certain extent. Besides, other non-distinctive elements, such as hyphen serving as link between the distinctive trademark MONCLER and other non-distinctive terms added to the Domain Names, also fail to distinguish the Domain Names from the Complainant’s trademark MONCLER.
Accordingly, the Panel finds that 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. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As contended by the Complainant, the Respondent has not been licensed or authorized to use the trademark MONCLER, neither has he/she been commonly known by the Domain Names. Besides, there is no evidence of any use of, or demonstrable preparations to use on the part of the Respondent, the Domain Names connecting with a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.
According to the Complainant, some Domain Names are/were redirected to websites which offer for sale prima facie counterfeit MONCLER goods (and which utilize the Complainant’s design mark or otherwise recreate the impression of the Complainant’s own website), precluding the Respondent from using the Domain Names in line with paragraph 4(c)(iii) of the Policy.
Meanwhile, some of the Domain Names resolving to pay-per-click parking pages more generally, by providing links to websites offering the Complainant’s and its competitor’s goods for sale, fail in the Panel’s opinion to fall under the above-listed exceptions of paragraph 4(c) of the Policy. And passive holding of some of the Domain Names by the Respondent in itself cannot, in any case, show his/her rights or legitimate interests in the Domain Names.
The Panel is satisfied that the Complainant has established a prima facie case, and the burden of production shifts to the Respondent accordingly, whose failure to respond however enables the Panel to conclude that there is no evidence with respect to the Respondent’s rights and legitimate interests in the Domain Names. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806, and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) or circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
Based on the evidence produced by the Complainant, the Panel acknowledges that the Complainant’s trademark MONCLER has a long history worldwide including, inter alia, China and the United States of America where the Respondent claims to be located; accordingly, it is of low possibility that the Respondent had no knowledge of the Complainant and its trademark MONCLER when registering the Domain Names. This acknowledgement is further demonstrated by the fact that the Respondent registered in five months the 28 Domain Names (exclusive of the Domain Name registered in December 2012) confusingly similar to the Complainant’s trademark MONCLER and directed some of the Domain Names to websites where the Complainant’s trademark MONCLER featured prominently and goods identical to those of the Complainant and bearing the Complainant’s trademark MONCLER were sold. The Panel thus holds that the Domain Names were registered by the Respondent in bad faith.
It is also the Panel’s finding that the Domain Names are being used in bad faith in accordance with paragraph 4(b)(ii) and (iv) of the Policy. As contended by the Complainant, part of the Domain Names are/were redirected to websites offering for sale prima facie counterfeit MONCLER goods, part redirected to parking page websites where both MONCLER branded goods and the Complainant’s competitors’ goods are offered for sale, and part are deactivated. As verified by the Panel when drafting this decision, the Domain Names and are being resolved to websites where the Complainant’s MONCLER trademark is prominently featured and similar goods branded with MONCLER are offered for sale; other Domain Names are currently deactivated. The Panel whatsoever accepts that the use and hold, both previously and presently, of the Domain Names fails to justify the Respondent’s use of the word “moncler” and the Domain Names since it prevents the Complainant from reflecting its trademark MONCLER in the Domain Names, and mostly, shows an attempt to attract, for commercial gain, Internet users to the websites or other online locations, by creating a likelihood of confusion with the Complainant's trademark MONCLER as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or locations or of the goods on the websites or locations, within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent, having no right or legitimate interests in the trademark MONCLER, registered so many domain names (29 in total) confusingly similar to the Complainant’s trademark MONCLER (as stated above); this pattern of conduct is another indication of his/her bad faith in accordance with paragraph 4(b)(ii) of the Policy. See Sutton Group Financial Services Ltd. v. GeorgeG o/a George Georgopoulos,WIPO Case No. D2004-0335.
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.
Jacob (Changjie) Chen
Sole Panelist
Date: January 28, 2013
Full & Egal Universal Law Academy