The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Rao Zhi Feng aka Zhi Feng Rao aka lao zifen of Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 31, 2012 and November 1, 2012, the Registrar transmitted respectively by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding expiration and deletion of the Domain Names, the Complainant filed an amendment to the Complaint on November 12, 2012.
On November 14, 2012, the Center sent an email communication to the parties, 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 amendment 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 in Chinese and English of the Complaint, and the proceedings commenced on November 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on December 17, 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.
On December 30, 2012, the Panel has requested to extend the decision due date to January 10, 2013. 4. Factual Background
The Complainant is a producer of outwear and sportswear founded in 1952. 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; and also Chinese trademark registration No. 177079 registered as early as on May 15, 1983, and No. 6084723 registered on March 7, 2010. Registration dates of these trademarks predate those of the Domain Names.
The Respondent registered all the Domain Names between September 2011 and June 2012. At the time the Panel renders this decision, all the Domain Names 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 have been temporarily disabled or redirected to parking pages. 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 to cease use of the Domain Names and to transfer them to the Complainant, some of the corresponding websites have been temporarily disabled or redirected to parking pages; 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;
(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) one of the Domain Names is redirected to a website offering goods for sale entirely in English; and other remaining Domain Names actively used have no connection to the Chinese language since they are/were all pointing to websites in French or Italian where in many cases, advertisements, words and statements in English are published and English related currencies are made available;
(d) the Domain Names consist just of English terms or of a combination of an English descriptive term with a non-English word;
(e) while the Respondent is to a certain extent 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. 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 or 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 majority of the Domain Names are/were redirected to websites where the trademark MONCLER features prominently and products 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 products on the websites under some of the Domain Names, passive holding of the Domain Names, the “pattern of conduct” with registration of 44 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 a complaint, a 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 believes that the Complainant has 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.
The Panel notes that all the Domain Names adopt the “moncler + non-distinctive element(s)” mode incorporating the trademark MONCLER in its entirety. Previous UDRP decisions have made it clear that incorporation of the 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 addition of a non-distinctive element to the domain name does not sufficiently differentiate the domain name from the trademark. In the present case, the following generic/descriptive terms added to the Domain Names fail to the Panel to avoid the similarity between the trademark and the Domain Names but rather strongly strengthen the similarity as the terms are related to the Complainant’s business, place of business or an abbreviation thereof: “jacket”, “s”, “doudoune” (French, meaning “jacket”), “france”, “fr” (general abbreviation of “France”), “giacche” (Italian, meaning “jackets”), “mall”, “outlet”, “negozio” (Italian, meaning “shop”), “pascher” (French, meaning “cheap”), “piumini” (Italian, meaning “jacket”), “piumino” (Italian, meaning “jacket”), “spaccio” (Italian, meaning “shop”), “shoppings”, “uomo” (Italian, meaning “man”) and “veste” (French, meaning “jacket”). Besides, other non-distinctive elements, such as figure (1, 2012, 1941 etc.) and hyphen (in the Domain Names and serving as link between the distinctive trademark MONCLER and the generic term) 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 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, the Domain Names are/were redirected to websites which offer for sale prima facie counterfeit MONCLER products (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.
Furthermore, the use of the Domain Name (appearing at first glance as a blog) and theDomain 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.
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 where the Respondent seems 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 ten months all the 44 Domain Names confusingly similar to the Complainant’s trademark MONCLER and directed the majority of the Domain Names to websites where the Complainant’s trademark MONCLER features prominently and products identical to those of the Complainant and bearing the Complainant’s trademark MONCLER are 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. In accordance with the Complainant, part of the Domain Names are/were redirected to websites offering for sale prima facie counterfeit MONCLER products and partially products of the Complainant’s competitors, part redirected to parking page websites, and part are deactivated. As verified by the Center on November 20, 2012 and also confirmed by the Panel when drafting this decision, all the Domain Names are currently deactivated, the Panel whereas accepts that the use and hold, both previously and presently, of the Domain Names fails to justify the Respondent’s use of 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 products on the websites or locations.
The Respondent, having no right or legitimate interests in the trademark MONCLER, registered so many Domain Names (44 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. See Sutton Group Financial Services Ltd. v. GeorgeG o/a George Georgopoulos,WIPO Case No. D2004-0335.
Moreover, the Respondent should have commented on the use of the Domain Names by responding to the cease and desist letter sent twice by the Complainant, failure of which leads the Panel to draw the conclusion that the Respondent is not justified to use the Domain Names.
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 10, 2013
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