The Complainant is MONCLER S.R.L. of Italy, represented by Studio Barbero, Italy.
The Respondent is Guangsheng Ma of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2012. On December 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2012, 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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on January 30, 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 is the owner of several national and international MONCLER trademark registrations worldwide including the following:
- International Trademark Registration for MONCLER, Reg. No. 269298, registered on May 11, 1963, and in classes 20, 22, 24 and 25;
- International Trademark Registration for MONCLER, Reg. No. 504072, registered on June 20, 1986, in classes 09. 18, 20, 25 and 28;
- International Trademark Registration for MONCLER, Reg. No. 978819, registered on June 25, 2007, in classes 03, 09, 14, 16, 18, 22, 24, 25 and 28;
- United Kingdom Trademark Registration MONCLER, Reg. No. 856043, registered on November 1, 1963, in class 25;
- United States Trademark Registration for MONCLER, Reg. No. 803943, registered on February 15, 1966, in class 25; and
- United States Trademark Registration for MONCLER (figurative trademark), Reg. No. 975069, registered on December 18, 1973, in class 25.
The disputed domain name was registered on December 25, 2009. 5. Parties’ Contentions A. Complainant
The Complainant was founded in 1952 and took its name Moncler from the abbreviation of Monestier-de-Clermont, an Alpine town near Grenoble, France. In 1968 the Complainant changed its logo from the Mount Eguit, rising up over the town, to a little rooster. In 1972, the Complainant’s lightweight down jackets were first manufactured. Today, the Complainant offers luxury outerwear and sportswear. The Complainant’s sales at the end of 2010 were of more than EUR 282 million worldwide of which more than EUR 210 million in Europe and nearly EUR 18 million in America.
The Complainant is the owner of more than 500 national and international trademark registrations comprising MONCLER worldwide. The first MONCLER trademarks were registered in 1963, and the Complainant has been using them in more than 100 Countries for about 50 years in connection with its products. The Complainant has registered over 450 domain names identical to or comprising the mark MONCLER under several different TLDs. The Complainant’s website linked to the domain name generated from September 2011 to March 2012 about 3,500,000 visits. The Complainant’s products are advertised and offered for sale by the Complainant on the website at “www.store.’’, which generated between September 2011 and March 2012 more than 3,800,000 visits.
The Complainant has sent a cease and desist letter on November 8, 2012, requesting the Respondent to immediately deactivate the website and to transfer the disputed domain name, and a reminder on November 14, 2012. The Respondent has not replied.
The disputed domain name is identical to the trademark MONCLER in which the Complainant has rights. The top level domain “.tv” is merely instrumental to the use in Internet and cannot be considered as an element capable of reducing confusing similarity between a trademark and a second level domain name when these are identical.
The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark MONCLER. MONCLER is an invented word mark. Upon information and belief, the Respondent is not commonly known by the disputed domain name as an individual, business or other organization and MONCLER is not the family name of the Respondent. The Respondent did not intend to use the disputed domain name in connection with any legitimate purpose and the use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent has gained from the sales of prima facie counterfeit products. In the light of the Respondent's incorporation in the disputed domain name of MONCLER, which is highly distinctive and exclusively referable to the Complainant, the Complainant cannot conceive of any possible rights or legitimate interests which the Respondent could have in the disputed domain name.
In light of the use of the MONCLER trademark since 1963, the amount of advertising and sales of Complainant’s products, the intensive use of the trademark worldwide, the Respondent could not have possibly ignored the existence of the trademark registration identical to the disputed domain name when it was registered. The Respondent’s knowledge of the MONCLER trademark is demonstrated by the fact that the Complainant’s trademark features on the web site linked to the disputed domain name and that products bearing the MONCLER trademarks are sold. The Respondent was certainly well aware of the Complainant’s rights in the MONCLER trademark. The Respondent’s purpose with the registration of the disputed domain name was to capitalize on the reputation of the Complainant's mark by diverting Internet user seeking products under MONCLER mark to its own website for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and/or the goods offered or promoted through its website.
The disputed domain name is used in bad faith redirecting the Internet users to a web site where the Complainant’s trademarks and official products’ images are published and MONCLER branded products, prima facie counterfeit, are offered for sale at prices which are much cheaper than for the original products.
The Respondent also owns the domain name which demonstrates that the Respondent is familiar with registering third-parties’ trademarks as domain names. The Respondent indicated in the WhoIs a postal address which is clearly false. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has relied on the registrations of the MONCLER trademarks. By the registrations submitted by the Complainant, the Panel finds that the Complainant holds rights to the MONCLER trademarks.
In accordance with the consensus view, the Panel may disregard the top-level domain “.tv” when deciding if the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
In accordance with this, the disputed domain name and the Complainant’s registered trademark MONCLER are identical in the meaning of paragraph 4(a)(i) of the Policy. The first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the Respondent to prove its rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has stated that the Respondent has not been authorized by the Complainant to use the MONCLER trademark in any way. The Complainant has submitted printouts from the website linked to the disputed domain name as well as printouts from its own website. The Panel finds that the printouts submitted prove that on the website linked to the disputed domain name the Respondent has presented pictures identical to the Complainant’s products with the MOCLER trademark and offered them for sale at prices significantly cheaper than the prices on the Complainant’s website.
In view of the submissions of the Complainant, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name, but uses the Complainant’s mark with an intention to derive commercial advantage from the trademarks of the Complainant. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent. Further, there are no indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In the light of the findings above, the Panel finds that the Complainant has made a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that if by using the domain name a registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its website or location or of a product or service on the registrant’s website or location, that shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that, on the website linked to the disputed domain name, the Respondent has offered for sale products referred to as MONCLER products with remarkably low prices compared to the Complainant’s.
As mentioned under the “Rights or Legitimate Interests” section above, the Respondent has been using the Complainant’s photographic material in connection with the Complainant’s trademark. The Panel finds that the Respondent’s use of the disputed domain name to offer products for sale marketed as MONCLER products, together with the Complainant’s photographic material and its trademarks, is sufficient to indicate both registration and use in bad faith. Also, the Panel finds that the Respondent’s domain name registration , of which the Complainant has submitted WhoIs-information, provides an indication of a possible pattern of bad faith registrations.
The Panel finds, particularly in the absence of any reply from the Respondent, that the Complainant has fulfilled its evidentiary burden and proved that the disputed domain name has been selected and registered with the Respondent’s prior knowledge of the Complainant’s rights in the MONCLER trademark and with the clear aim of taking advantage of Internet users’ confusion between the disputed domain name and the Complainant’s trademark. Hence, the Panel finds that the Respondent’s registration and use of the disputed domain name intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to inter alia the source of its website and, therefore, in bad faith in the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled. 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.
Jonas Gulliksson
Sole Panelist
Date: February 13, 2013
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