WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.R.L. v. World Top Sale Inc / WTS
Case No. D2012-2537
1. The Parties
The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is World Top Sale Inc / WTS of Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <englandmoncler.com>, <monclerbags.com>, <monclerhotsale.com>, <moncler-jp.com>, <monclerliveshop.com>, <monclermoscow.com>, <moncler-newyork.com>, <monclernewyork.com>, <moncler-t-shirt.com>, <moncler-uk.org>, <moncler2013.com>, <newyorkmoncler.com>, <storemoncler.com>, <ukmonclers.com>, <webmoncler.com>, <2012moncler.com>, and <2013moncler.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (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 Domain Names. 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”).
The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice of the Complaint to the Respondent and the proceedings commenced on January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2013.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 4, 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.
Because the Registration Agreement is in English, the Panel accedes to the Complainant’s request that the language of the proceeding be English.
4. Factual Background
The Complainant, founded in 1952 in Grenoble, France, is a leader in the field of luxury outerwear and sportswear. The word “Moncler” derives from the abbreviation of Monestier-de-Clermont, an Alpine town near Grenoble, France.
The Complainant is the owner of numerous national and international trademark registrations for the word mark MONCLER, including International Trademark Registrations No. 269298 registered on May 11, 1963 in classes 20, 22, 24, 25; No. 504072 registered on June 20, 1986 in classes 09. 18, 20, 25, 28; No. 978819, registered on June 25, 2007 in classes 03, 09, 14, 16, 18, 22, 24, 25 and 28; United States Trademark Registration No. 803943, registered on February 15, 1966 in class 25; and Chinese Trademark Registration No. 6084723 registered on March 7, 2010 in class 22.
The Complainant has also registered a figurative trademark containing the word “Moncler”, including United States Trademark Registration No. 975069, registered on December 18, 1973 in class 25 and Chinese Trademark Registration No. 177079, registered on May 15, 1983 in class 25.
The Respondent registered the Domain Names on the following dates: <webmoncler.com> on December 9, 2009, <monclerhotsale.com> on December 10, 2009, <storemoncler.com> on August 11, 2010, <monclernewyork.com> on September 16, 2010, <monclerbags.com> on November 30, 2010, <moncler-t-shirt.com> on May 16, 2011, <moncler-uk.org> on August 20, 2011, <ukmonclers.com> on August 23, 2011, <moncler-newyork.com> on August 24, 2011, <newyorkmoncler.com> on September 14, 2011, <monclermoscow.com> on September 18, 2011, <englandmoncler.com> on October 8, 2011, <monclerliveshop.com> on October 31, 2011, <moncler2013.com> on November 22, 2011, <moncler-jp.com> on November 28, 2011, <2012Moncler.com> and <2013Moncler.com> on May 1, 2012.
At the time of this Compliant, all the Domain Names are directed to websites featuring the Complainant’s MONCLER trademark and offering for sale, at very low prices, products bearing or by reference to that mark. The web site at “www.storemoncler.com” also displays links to web sites offering for sale competing products of third parties.
The Respondent failed to reply to two cease and desist letters before the Complaint was filed.
5. Parties’ Contentions
The Complainant says all the Domain Names are confusingly similar to the Complainant’s MONCLER trademarks and that the Respondent has no rights or legitimate interests in any of the Domain Names, which were registered and are being used in bad faith.
As to confusing similarity, the Complainant says it is well-established that domain names that wholly incorporate a trade mark, in particular one as famous as MONCLER, are confusingly similar for purposes of the Policy, despite the fact that they may also contain descriptive or generic terms, such as, inter alia, “web”, “hot sale”, “store”, “new york”, “bags”, t-shirt”, “uk”, “moscow”, “england”, “live shop”, “2012”, “2013”, “jp” or hyphens.
As to legitimacy, the Complainant says the Respondent is not a licensee or authorized agent of the Complainant nor in any other way authorized to use the Complainant’s trademark MONCLER. Upon information and belief, the Respondent is not commonly known by the Domain Names as an individual, business or other organization and MONCLER is not the family name of the Respondent. The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute.
The Domain Names are redirected to commercial web sites on which the Complainant’s figurative trademarks and official advertising campaigns are published and prima facie counterfeit MONCLER branded products are offered for sale. Such wilful conduct clearly demonstrates that the Respondent did not intend to use the Domain Names in connection with any legitimate purpose and their use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent has been undoubtedly gaining from the sales of prima facie counterfeit products.
Since MONCLER is an invented word, deriving from the abbreviation of the town where the Complainant first launched its production, it is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
Further, the Respondent did not reply to the cease and desist letters.
As to bad faith, the Complainant says in light of its long use of the trademark, the amount of advertising and sales of the Complainant’s products, the intensive use of the trademark worldwide, including in the United States where the Respondent prima facie is presently based, the Respondent could not possibly have ignored the existence of the MONCLER trademark registration when the confusingly similar Domain Names were registered.
The Respondent’s actual knowledge of the MONCLER trademark at the time of the registrations of the Domain Names is demonstrated by the fact that the Respondent registered 17 domain names confusingly similar to the Complainant’s trademark and redirects them to web sites where the Complainant’s trademark features prominently and products bearing its trademarks are sold. See Moncler S.r.l. v. Zhongyuan Tec, WIPO Case No. D2011-0471.
Thus Respondent was well aware of the Complainant’s rights in the famous trademark and registered the Domain Names with clear intentions to refer to the Complainant’s mark.
As to use in bad faith, all the Domain Names are redirected to web sites where the Complainant’s trademarks and official images are published and MONCLER branded products, prima facie counterfeit, are offered for sale.
Hence it is clear that the Respondent’s purpose in registering the Domain Names was to capitalize on the reputation of the Complainant's mark by diverting Internet users seeking products under the MONCLER mark to its own websites 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 websites and/or the goods offered or promoted through its websites. Paragraph 4(b)(iv) of the Policy is therefore applicable to the present case.
As to the web site corresponding to the domain name <storemoncler.com>, publishing links to web sites offering for sale third-parties’ competing products constitutes further evidence of the Respondent’s bad faith.
In using its websites to attract Internet users to sell prima facie counterfeits of the Complainant’s products at prices which are much cheaper than for the original products, the Respondent has also registered and used the Domain Names with the purpose of disrupting the Complainant’s business. Given the huge number of Domain Names so used, all of which include the Complainant’s well known trademark, such conduct cannot be considered a bona fide offering of goods or services and proves Respondent’s bad faith registration and use according to paragraph 4(b)(iii) of the Policy. Further, the Respondent has clearly engaged in a pattern of such conduct, within the meaning of the Policy, paragraph 4(b)(ii). See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
The Respondent is also the registrant of other domain names consisting of well-known third-parties’ trademarks, including <rogerviviershop.com>, <robertocavallishop.com>, <versacebuy.com>, <versaceonlineshop.com> and <bottegavenetacom.com>.
Finally, prior UDRP panels have held that a failure to respond to a cease and desist letter can be evidence of bad faith.
The Complainant seeks the transfer to it of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), the Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) each of the Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Respondent has registered and is using the Domain Names in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it clearly has rights, inter alia, in the MONCLER word mark. The Domain Names are not identical to that mark since they contain additional words. The top level domains “.com” and “.org” are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The test of confusing similarity under the Policy is confined to a comparison of each of the Domain Names and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The content of a respondent’s website is generally disregarded (A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900) unless that content might indicate an intention on the part of the respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn: RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.
Here the addition to the Complainant’s trademark MONCLER of the descriptive words such as “web”, “hot sale”, “store”, “new york”, “bags”, t-shirt”, “uk”, “moscow”, “england”, “live shop”, “2012”, “2013”, “jp” or hyphens does nothing to detract from the distinctiveness of the Complainant’s mark. This alone justifies a finding of confusing similarity. Further, in this case the content of the Respondent’s websites appears designed to reinforce the Internet user’s impression, conveyed by each of the Domain Names, that the Domain Names belong to the Complainant.
The Panel finds each of the Domain Names to be confusingly similar to the Complainant’s MONCLER word mark.
The Complainant has established this element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel accepts that the MONCLER word mark is distinctive and very well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in those domain names: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
As mentioned, the content of the Respondent’s websites appears designed to reinforce the Internet user’s impression that the Domain Names belong to the Complainant. The websites are presented as if they are official websites of the Complainant. “Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services”: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (<madonna.com>).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on its websites or locations.
The Panel accepts the Complainant’s submission that the Respondent must have been aware of the Complainant’s MONCLER mark when registering the Domain Names and that, by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and of the products offered on its websites. As mentioned, under paragraph 4(b)(iv) of the Policy, this shall be evidence of both the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
The Complainant has established this element. It is therefore unnecessary for the Panel to consider the Complainant’s submissions in relation to paragraphs 4(b)(ii) and (iii) of the Policy.
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
<englandmoncler.com>, <monclerbags.com>, <monclerhotsale.com>, <moncler-jp.com>, <monclerliveshop.com>, <monclermoscow.com>, <moncler-newyork.com>, <monclernewyork.com>, <moncler-t-shirt.com>, <moncler-uk.org>, <moncler2013.com>, <newyorkmoncler.com>, <storemoncler.com>, <ukmonclers.com>, <webmoncler.com>, <2012moncler.com>; and <2013moncler.com> be transferred to the Complainant.
Alan L. Limbury
Date: February 6, 2013.