The Complainant is Moncler S.p.A. of Milan, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Trademark Works, Richard Yaming of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Go France Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2014. On March 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 9, 2014. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant, founded in 1952 in Grenoble, France, is an international leader in the field of luxury outerwear and sportswear. The Complainant holds trademark registration for MONCLER since 1963 and currently operates in more than 66 countries and 4 geographical areas worldwide. In 2013, the Complainant employed 1,200 full-time equivalent employees, and in 2012, it had total revenue of EUR 489 million. All these facts made the MONCLER trademark become well-known worldwide.
The disputed domain name was created on October 10, 2011and registered to the Respondent on December 19, 2013. At the time of filing the Complaint, it was used in relation to a pay-per-click webpage redirecting Internet users to third-party websites, including to competitors of the Complainant. The corresponding webpage also displayed an announcement stating that the disputed domain name was for sale.
Several complaints under the UDRP have been filed against the same apparent Respondent, all decided in the favor of the complainants. See, for example, Giorgio Armani S.p.A, Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Richard Yaming,WIPO Case No. D2011-2233 for the domain name ; O2 Holdings Limited v. Richard Yaming,WIPO Case No. D2012-0508 for the domain names , , ; DHL International GmbH v. Richard Yaming,WIPO Case No. D2012-1081 for the domain name ; Arcadia Group Brands Limited, trading as Topshop v. Richard Yaming,WIPO Case No. D2012-1490 for the domain name ; or Pole 3D v Trademark Works LLC,WIPO Case No. D2010-1756 for the domain name . 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark MONCLER, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the MONCLER mark in connection with outerwear and sportswear. The disputed domain name includes the Complainant’s well-known trademark and the generic term “doudoune”, the French term for “puffer jacket”, such item being the Complainant’s main and most renowned product. This Panel agrees with the majority view of UDRP panels1 , that the addition of merely generic, descriptive terms to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MONCLER. B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use its trademarks, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name “monclerdoudoune”. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
The disputed domain name was first created in 2011 and incorporates the Complainant’s well-known mark used since 1952 in connection with outerwear and sportswear together with the word “doudoune” (puffer jacket), a term that designates the Complainant’s main and most famous product.
Further, the disputed domain name resolves to a webpage containing advertising links, from which the Respondent likely benefits through the Registrar’s “Cash Parking” monetization program. This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to the Complaint, nor provide accurate contact details to the Registrar. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
Last but not least, the Complainant listed several UDRP cases filed against the Respondent, all solved in the favor of the complainants. This also constitutes bad faith under paragraph 4(b)(ii) of the Policy that provides the situation when the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview 2.0 explains that a pattern of conduct involves multiple UDRP cases with similar fact situations. Here, the Respondent has been involved in several other similar UDRP cases: domain names containing third-party trademarks and a descriptive or generic word for their business used in connection to link farms, as detailed in the Complaint and Section 4 above.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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 name be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: May 16, 2014
1 See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
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