The Complainant is Moncler S.R.L. of Milano, Italy, (the “Complainant”) represented by Studio Barbero of Turin, Italy.
The Respondent is Kina Vanderzee of Hampton, New Hampshire, United States of America, (the “Respondent”). 2. The Domain Name and Registrar
The disputed Domain Names are , , , and , all registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Names. On April 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed Domain Names 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 April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2013.
The Center appointed Ike Ehiribe as the sole panelist in this matter on May 14, 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 in these administrative proceedings is Moncler S.R.L a company located in Milano, Italy, which is described as one of the leaders in the field of luxury and sports wear for women, men and children. The company founded in 1952 in Grenoble, by French entrepreneurs is said to have obtained its name from the abbreviation of Montestier-de-Clermont, an Alpine town near Grenoble. The Complainant owns well over 500 national and international trademark registrations comprising of the mark MONCLER and in the year 1968 the French Olympic team chose the Complainant as the official supplier of apparels for climbing at high altitudes. In the year 1972, the Complainant, at the French Skiing teams request, produced a unique Moncler lightweight down jacket offering greater flexibility and maneuverability whilst skiing. As from the 1980s the Complainant’s focus shifted to the fashion industry as the Complainant’s products started to be perceived as luxury wear in the urban areas.
The Complainant is said to have registered the trademark MONCLER since 1963 and has been using the trademark in more than 100 countries for about 50 years in connection with its products. The Complainant is said to operate within an extensive sales network with sales at the end of the year 2010, exceeding the sum of EUR 282 million worldwide out of which nearly EUR 18 million was earned from sales in the United States of America where the Respondent is based. In addition, the Complainant’s extensive advertising campaigns are carried out worldwide through television and international fashion magazines such as “Vogue”, “Vanity Fair” and “GQ”. The Complainant’s advertising expenditure for the winter period of 2012 amounted to well over EUR 6 million including EUR 1.4 million spent in the United States of America alone. In order to protect the trademark MONCLER on the Internet, the Complainant has registered over 450 domain names comprising of the trademark MONCLER under several different “TLDs”. The Complainant is also said to have a strong presence online in the most popular social medias such as Facebook, Twitter and YouTube as can be verified at “/moncler”; “/monclerofficial” and “/monclerofficial”.
The Respondent in this matter is Kina Vanderzee who is based in the United States of America. The Respondent registered all five disputed Domain Names, namely , , ,(iv) and on December 6, 2012, according to WhoIs database printouts, dated March 28, 2013, from the concerned Registrar, GoD, LLC. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed Domain Names are confusingly similar to the trademark, MONCLER in which the Complainant has world-wide exclusive rights as evidenced by the exhaustive list of trademark registrations attached to these proceedings. The Complainant submits that a finding of confusing similarity under the Policy would normally be made despite the fact that the disputed Domain Names, as in this case, contains descriptive or generic terms, such as: “inter alia” “official”, “jp”, “onlines” “online” and “sale”. In support of this contention, the Complainant relies on a significant number of previous panel decisions where confusing similarity was found in cases where the MONCLER trademark was wholly incorporated into the disputed domain name with the addition of generic terms, including decisions such as: (i) Moncler S.r.l. v. Manlingtrade, WIPO Case No. D2011 -0548, (ii) Moncler S.r.l. v. Shuanging Chen,WIPO Case No. D2011-0416, and (iii) Moncler S.r.l. v. Sandra Brown,WIPO Case No. D2010-1674.
The Complainant further submits that in this case, the generic terms selected by the Respondent for the registration of the disputed Domain Names are more inclined to increase the likelihood of confusion and induce Internet users to assume that there is an association between the disputed Domain Names and the Complainant. With regards to the specific descriptive, terms the Complainant asserts that the terms “online” “official”, “sale” and “jp”, an abbreviation of Japan, is likely to confuse Internet users to believe that the websites might be the Complainant’s websites in Japan. In this regard the Complainant relies on a number of cases including Moncler S.r.l.v. Xi Yang,WIPO Case No. D2012-2031.
In addition, the Complainant contends that even if the contents of a respondent’s website is generally disregarded, previous panels have taken into account an intention on the part of the respondent to confuse Internet users to arrive more readily at a conclusion of confusing similarity. The Complainant in support cites a previous decision in Moncler S.R.L. v. World Top Sale Inc./ WTS,WIPO Case No.D2010-1089, amongst other decisions. Therefore, in the present case, as it is argued, in particular with regards to the disputed Domain Name , that disputed Domain Name imitates the look and layout of the Complainant’s official website thereby reinforcing the Internet user’s impression that the disputed Domain Name belongs to the Complainant. Equally, it is argued that the mere addition of the top level suffix “.com” to the disputed Domain Names does not in any way dispel the notion of confusing similarity as found and held in previous decisions such as Telecom Personal, S.A., v N, Inc.,WIPO Case No. D2001-0015.
On the question of rights or legitimate interests in the disputed Domain Names, the Complainant states that the Respondent is not a licensee, an authorised agent of the Complainant or in any other way authorized to use the Complainant’s trademark MONCLER. In this regard, reference is made to the case of Pharmacia & Upjohn Company v. Moreonline,WIPO Case No.D2000-0134, where it was held that the mere registration or earlier registration of a disputed Domain Name does not establish rights or legitimate interests in a disputed domain name. The Complainant also states that upon information and belief, the Respondent is not commonly known by the disputed Domain Names as an individual, business entity or other organization. Also the Respondent is said to have failed to provide any evidence of her use of, or demonstrable preparations to use, the disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant observes that the disputed Domain Names no longer point to active websites. In the circumstances the Complainant relies on the case of Teachers Insurance and Annuity Association of America v. Wreaks Communication Group,WIPO Case No. D2006-0483, to contend that in the absence of evidence to the contrary, passive holding of a domain name does not constitute legitimate noncommercial or fair use. The Complainant also argues that in so far as three of the disputed Domain Names, namely , and prior to the commencement of the these proceedings resolved to commercial websites where the Complainant’s figurative trademarks and official images were published and prima facie counterfeit MONCLER branded products were offered for sale; such conduct clearly shows that the Respondent did not intend to use the disputed Domain Names in connection with any legitimate purpose and therefore it is hard to imagine that the Respondent could ever establish any rights or interests, see also Moncler S.r.l. v. Wuyuansheng,WIPO Case No. D2010-1670.
On the final issue of bad faith registration and use by the Respondent, the Complainant asserts that taking into account the existence and use of the trademark MONCLER since 1963 and the extensive advertising campaign of the Complainant’s products in the United States of America, where the Respondent is based, the Respondent could not have been unaware of the existence of the Complainant’s trademark at the time the disputed Domain Names were registered. In this regard the Complainant refers to a previous decision in Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049, whereas in this case the Respondent was based in the United States and the respondent’s failure or refusal to conduct a trademark search before registering the disputed domain name was found to be indicative of bad faith use. The Complainant also refers to the fact that the registrations of the disputed Domain Names took place on the same day with the Respondent subsequently redirecting some of those disputed Domain Names to websites where the Complainant’s products were offered for sale as underscoring the Respondent’s actual knowledge of the existence of the Complainant’s trademark. The Complainant draws attention to the fact that three of the disputed Domain Names have previously been pointed towards websites publishing the Complainant’s trademarks and official images and offering for sale prima facie counterfeit products and, as a consequence, asserts that such conduct demonstrates that the only purpose for which the disputed Domain Names were registered was to intentionally attempt to attract for the Respondent’s commercial gain, Internet users to such websites by creating a likelihood of confusion or deceiving consumers into believing that the disputed Domain Names are affiliated with or endorsed by the Complainant. The Complainant also refers to two of the disputed Domain Names and , which includes the term “official” and the publication of information about the history of the MONCLER trademark, without any disclaimer simply increased the likelihood of Internet visitors believing that the websites were affiliated to or owned by the Complainant.
In further support of the bad faith registration and use of the disputed Domain Names, the Complainant asserts that the Respondent’s conduct following the Respondent’s receipt of the cease and desist letters supports a finding of bad faith registration and use in three ways. First of all the Complainant asserts that the Respondent deactivated the websites to which two of the disputed Domain Names namely and resolved to. Such conduct it is said is a clear indication that the Respondent did not intend to use the disputed Domain Names for any good faith purpose following the decision in Societe National des Chemins de Fer Francais (SNCF) v. Comdot Internet Services Private Limited. /PrivacyP,WIPO Case No. D2008-0026. Secondly, it is argued that the Respondent’s failure to reply to the cease and desist letters from the Complainant can be evidence of bad faith as held in previous decisions such as Bayerische Motoren Werke AG v. This Domain is For Sale Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Thirdly, by reason of the Respondent using incomplete and/or inaccurate contact information to register the disputed Domain Names as demonstrated by the fact that one of the cease and desist letters dispatched to the Respondent’s address by registered post was returned to sender. It is submitted that the use of incomplete or inaccurate address is further evidence of bad faith as held in a number of previous decisions including Ebay Inc. v. Wangming,WIPO Case No. D2006- 1107. In addition, the Complainant refers to the pattern of conduct of the Respondent as evidenced by the registration of five domain names on the same day which are confusingly similar to the Complainant’s trademark MONCLER as another clear indication of bad faith as held in a number of cases such as: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 and Moncler S.R.L. v. Shujin Shen,WIPO Case No. D2012-2009. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel shall draw inferences, as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings. A. Identical or Confusingly Similar
The Panel finds from the unchallenged facts that the disputed Domain Names, are confusingly similar or identical to the Complainant’s well-known trademark MONCLER and indeed the numerous other top-level and country code domain names incorporating the MONCLER trademark currently owned by the Complainant. Undoubtedly, the Panel finds that all five of the disputed Domain Names registered by the Respondent on the same day wholly incorporate the Complainant’s trademark and as argued by the Complainant, the Panel finds that the mere addition of descriptive or generic terms such as “official”, “online” or “sale” etc., followed by the “gTLD “. com” does absolutely nothing to preclude a finding of confusing similarity as neither the descriptive terms nor indeed the generic “TLD” is capable of distinguishing the disputed Domain Names from the Complainant’s well-known trademark. In this regard, the Panel relies on numerous previous UDRP decisions cited by the Complainant such as Moncler S.R.L. v. Shuagying Chen, supra and Telecom Personal, S.A. v. Namezero.Com, Inc., supra. With specific reference to the generic terms “online” and “sale”, see also the recent decision in Swarovski Aktiengesellschaft v. Mei Xudong,WIPO Case No. D2013 -0150, cited by the Complainant with regards to the disputed domain name , where the Panel in that case held that the addition of such terms did nothing to distinguish the domain name from the complainant’s trademark in any significant manner.
The Panel is accordingly satisfied that the Complainant has established that the disputed Domain Names are confusingly similar to the Complainant’s MONCLER trademark. B. Rights or Legitimate Interests
The Panel equally finds that the Respondent has failed to furnish any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Names within the ambit of paragraph 4(c) of the Policy. As revealed in the printouts of the WhoIs databases, the Respondent registered all five disputed Domain Names on the same day, being December 6, 2012 well after the Complainant had acquired well established exclusive rights in its MONCLER trademark in numerous jurisdictions including the United States of America, where the Respondent is based. In the first instance, the Panel finds that the registration of a domain name wholly incorporating a third party’s famous trademark and widely recognized, does not establish the existence of any rights or legitimate interests whatsoever by the Respondent. See in this regard an oft-cited previous UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. 2000-0003. The Panel finds that there is no evidence to suggest that the Respondent is a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark. In the same way, the Respondent has failed to furnish the Complainant with any evidence to indicate that the Respondent intends or intended to use the disputed Domain Names in connection with a bona fide offering of goods or services. In addition to the foregoing, the Panel has seen no evidence to suggest that the Respondent is connected or affiliated to the Complainant or that the Respondent is usually known by any of the disputed Domain Names.
The Panel is therefore satisfied that the Respondent intentionally registered the disputed Domain Names to misleadingly attract Internet users and consumers of the Complainant’s products to websites where the Complainant’s figurative trademarks and official images are published and where the Complainant’s products are offered for sale, for commercial gain. The Panel further agrees that such conduct as exemplified by unauthorized usage on the part of the Respondent cannot result in the Respondent establishing any rights or legitimate interests in the disputed Domain Names. See in particular in this regard Moncler S.r.l. v. Wuyuansheng, supra and generally Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
With regards to the question of bad faith registration and use, the Panel finds that the Respondent registered all five disputed Domain Names in bad faith and has continued to engage in bad faith use. In arriving at this conclusion, the Panel has taken into account several related actions and or inactions of the Respondent as exhaustively listed in the Complaint filed in this case.
In the first instance, the Panel finds that the Respondent could not possibly be unaware of the existence of the Complainant’s world-wide established exclusive rights in its trademark, MONCLER since 1963, even in the United States of America, where the Respondent is located before registering any or all of the disputed Domain Names on December, 6 2012. Considering the Complainant’s extensive advertising campaign in both Europe and the United States, therefore the Respondent’s failure and or refusal to conduct a trademark search prior to the registration of the disputed Domain Names must be, in this Panel’s opinion, indicative of bad faith registration and or use of the disputed Domain Names. In support of this finding, the Panel relies on a previous UDRP decision involving the Complainant and a United States based Respondent in the case of Moncler S.p.A v. Bestinfo, supra.
Secondly, the Panel notes that the Respondent decided to register not one, but five domain names, all confusingly similar to the Complainant’s trademark on the same day and subsequently redirected the majority of those disputed Domain Names to websites where the Complainant’s branded products were offered for sale confirms that the Respondent had actual knowledge of the Complainant’s rights in the MONCLER trademark.
Thirdly, the Panel finds that the Respondent is still engaging in bad faith use by the passive holding of the disputed Domain Names. The evidence shows that three of the websites corresponding to the disputed Domain Names were initially deactivated by the first hosting provider but were suddenly reactivated by the Respondent with a new provider. Such conduct suggests that there is a strong likelihood that the Respondent might re-activate once again the websites corresponding to the disputed Domain Names with a view to exploiting for commercial gain the commercial reputation and goodwill of the Complainant’s trademarks and products.
Fourthly, the evidence shows that the Respondent used some of the disputed Domain Names in connection with websites publishing the Complainant’s images and offering for sale prima facie counterfeit products. The Panel finds such conduct to be indicative of an intention to deceive Internet users into believing that those websites are somehow associated with and or endorsed by the Complainant.
Fifthly, the Panel finds that the Respondent has prevented the Complainant from reflecting its trademark in corresponding domain names and the Respondent has engaged in a pattern of such conduct by registering five disputed Domain Names all confusingly similar to the Complainant’s trademark. Such pattern of conduct is further evidence of bad faith as held in Telstra Corporation Limited v. Ozurls, supra, a case where the respondent registered fifteen domain names all confusingly similar to the complainant’s trademark and Moncler S.r.l v. Shuangying Chen, supra, a case again where the respondent registered several domain names confusingly similar to the Complainant’s MONCLER trademark.
Sixthly, the Panel finds that the Respondent’s failure to respond to the cease and desist letter is further evidence of bad faith as found in Bayerische Motoren Werke AG v. Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. In any event, as indicated above, the Panel has drawn adverse inferences from the Respondent’s failure and or refusal to respond to the cease and desist letter earlier referred to and the evidence and submissions advanced by the Complainant in these proceedings.
The Panel is therefore satisfied that the disputed Domain Names were registered and are being used in bad faith in accordance with paragraph 4(a)(iii) 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.
Ike Ehiribe
Sole Panelist
Date: May 28, 2013
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