Complainant is Moncler S.p.A. of Milan, Italy, represented by Barzanò & Zanardo Roma S.p.A., Italy.
Respondents are Yao Tom of Fuzhou, Fujian, China; Lee Fei of Fuzhou, Fujian, China; and Geryi Wang of Xiamen, Fujian, China (collectively, "Respondent"). 2. The Domain Names and Registrar
The following disputed domain names (the "Disputed Domain Names") are registered with GoD, LLC. (the "Registrar"): , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2015. On December 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed two amendments to the Complaint on December 11, 2015. Complainant filed a further amendment to the Complaint on December 14, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with six additional disputed domain names added by amendment of the Complaint. On December 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the additional disputed domain names and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 8, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 12, 2016. 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
Complainant states that it is "one of the leader companies in the field of fashion sportwear"; that the "Moncler" name was founded in 1952; that there are 184 "Moncler boutiques worldwide"; and that it is listed on the Italian stock exchange.
Complainant further states, that it is the owner of more than 500 trademark registrations in more than 100 jurisdictions that consist of the word "moncler" (the "MONCLER Trademark"). Complainant has not provided any evidence in support of the foregoing trademark registrations other than a spreadsheet containing relevant data. While the Panel would have preferred to see certificates of registrations or printouts from the relevant trademark offices, the Panel was able to identify1 a number of registrations for the MONCLER Trademark at the website of the United States of America ("United States") Patent and Trademark Office, including United States trademark MONCLER (and device), Registration No. 0975069, registered on December 18, 1973.
Complainant further states that it is the registrant of more than 1,000 domain names that contain the MONCLER Trademark, including .
Complainant further states, and provides evidence to support, that most of the Disputed Domain Names "identically reproduce a substantial portion of the Complainant's official website, adopt the same format and wording, displays pictures drawn from the Complainant's official website, but delivers low quality counterfeit goods"; and that other of the Disputed Domain Names "lead to parking pages offering pay-per-click links, some of which to competitors' websites." 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
Complainant has rights in and to the MONCLER Trademark as a result of the trademark registrations cited above. Complainant further contends that each of the Disputed Domain Names is confusingly similar to this trademark because, inter alia, each of the Disputed Domain Names contains the MONCLER Trademark in its entirety plus additional, "generic word elements" that "increase the likelihood of confusion, since they either refer to the kind of activity performed through the website, i.e., a store selling clothing originating from a particular manufacturer or wholesaler… or to a specific date or place, thus underlying the fact that the store is up to date and is directed to consumers located in a specific geographical area."
Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, Respondent is "not known by the name MONCLER"; "Complainant has not authorized the Respondents to include its well-known MONCLER trademark in the Domain Names, or to make any other use of its trademark in any manner whatsoever"; Respondent uses many of the Disputed Domain Names in connection with websites selling counterfeit goods; and Respondent uses at least two of the Disputed Domain Names in connection with pay-per-click ("PPC") websites that "refer to activities in competition with the Complainant's activities."
The Disputed Domain Names were registered and are being used in bad faith because, inter alia,"Respondent could not ignore the existence of the MONCLER trademark at the time of the registration of the Domain Name[s], not only because MONCLER is a very well-known trademark, but also in consideration of the type of Domain Names registered (consisting of trademark + terms that potential consumers may very well associate with the Complainant's activity) and of the websites' contents"; "almost all Domain Names link to a website offering counterfeit MONCLER goods, and unduly depicting copyrighted pictures taken from the Complainant's official website"; "use of a well-known third party's trademark to benefit from a 'pay-per-click' structure amounts to an intentional use of the Complainant's trademark to profit from the Complainant's reputation and generate commercial gain by creating confusion for Internet users through sponsored links"; and "the fact that the Registrant(s) registered a high number of Domain Names, all including terms commonly used in the market to identify the sale of discounted goods, is clear evidence of the fact that the Domain Names were registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Preliminary Issue: Consolidation
Complainant has requested consolidation, that is, to allow a single proceeding with respect to all of the Disputed Domain Names despite the fact that the Whois records identify three different registrants for the Disputed Domain Names. In support thereof, Complainant cites paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0, which notes that UDRP panels have allowed such consolidation where "(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties." Here, Complainant notes, and provides an "expert witness statement"2 consistent therewith, that the Disputed Domain Names contain common registration elements and that most of the Disputed Domain Names lead to an identical website.
Accordingly, Complainant concludes: "it is clear that all Domain Names are prima facie either own[ed] by the same individual (most probably Yao Tom), or are subject to a common control. Hence the Complainant requests the Panel to treat all Domain Names in a single proceeding. As a matter of fact, it would be quite cumbersome and inequitable for the Complainant to start three separate proceedings in this matter, while the consolidation would be fair and equitable to all parties, in view of the aforesaid common ownership or control. Consolidation would permit to deal in a single proceeding multiple domain name disputes arising from a common nucleus of facts and involving common legal issues. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expenses, and generally fulfills the fundamental goals of the Policy."
Respondent (or the individual Respondents, as the case may or may not be) has not disputed any of the facts or conclusions set forth by Complainant.
Accordingly, in light of the evidence submitted, the Panel determines that consolidation is appropriate. B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MONCLER Trademark. This is consistent with previous decisions under the Policy regarding the MONCLER Trademark. See, e.g., Moncler S.p.A. v. guoqiang zhang,WIPO Case No. D2015-1206 (transfer of ).
As to whether the Disputed Domain Names are identical or confusingly similar to the MONCLER Trademark, the relevant comparison to be made is with the second-level portion of the domain names only, as it is well established that the Top-Level Domain (i.e., ".com") may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.")
Notably, each of the Disputed Domain Names contains the MONCLER Trademark in its entirety. Previous UDRP panels have found that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Oki Data Americas, Inc. v. A,WIPO Case No. D2001-0903. See also Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474 ("when a domain name wholly incorporates a complainant's registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy").
In addition, each of the Disputed Domain Names contains one or more additional words or abbreviations, including, most commonly, the word "outlet". Numerous previous panels under the Policy have found that inclusion of the word "outlet" in a disputed domain name that also contains the complainant's trademark is confusingly similar to the trademark. See, e.g., Guccio Gucci S.p.A. v. yuejuan, maoyuejuan,WIPO Case No. D2015-2089 (transfer of , , , , , , and ); and Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. xian fengdao, ghjktgykityjurthrde degfrvc,WIPO Case No. D2015-1961 (transfer of ). Similarly, the Panel finds the additional words or abbreviations in the Disputed Domain Names are not sufficient to dispel confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia,Respondent is "not known by the name MONCLER"; "Complainant has not authorized the Respondents to include its well-known MONCLER trademark in the Domain Names, or to make any other use of its trademark in any manner whatsoever"; Respondent uses many of the Disputed Domain Names in connection with websites selling counterfeit goods; and Respondent uses at least two of the Disputed Domain Names in connection with PPC websites that "refer to activities in competition with the Complainant's activities."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), for the reasons set forth above.
With respect to those of the Disputed Domain Names that are used in connection with websites offering for sale counterfeit products, Complainant has included communications from multiple customers who apparently purchased products on websites using the Disputed Domain Names, describing such websites and products as "fake," a "scam," "conned" and "incorrect." Respondent has not disputed these communications, which were provided as annexes to the Complaint. Numerous UDRP panels have found such conduct to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 ("Respondent's sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith"; and Fabergé Ltd. v. Management Services,WIPO Case No. D2009-0425 (same)).
With respect to those of the Disputed Domain Names that are used in connection with PPC websites containing links to Complainant's competitors, numerous panels have found such conduct to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Finally, the Panel finds that, by its registration of the 50 Disputed Domain Names, Respondent has engaged in a "pattern" of conduct that also constitutes bad faith, pursuant to paragraph 4(b)(ii) of the Policy, because as paragraph 3.3 of WIPO Overview 2.0 states: "A pattern of conduct can involve… a single case where the respondent has registered multiple domain names which are similar to trademarks."
Accordingly, the Panel finds that Complainant has proven the third element 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 following Disputed Domain Names be transferred to Complainant: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
Douglas M. Isenberg
Sole Panelist
Date: January 18, 2016
1 "A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5.
The statement is provided by a Mr. M. Signorelli, "Head of Global Operations & Technology" at a company apparently known as DcP (Digital Content Protection). Unfortunately, the statement does not provide any of Mr. Signorelli's qualifications. However, the facts set forth therein and in the Complaint are not in contention.
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