WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.r.l. v. Name Redacted
Case No. D2010-1677
1. The Parties
The Complainant is Moncler S.r.l. of Milano, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is Name Redacted of Manning, California and Manning, South Carolina, United States of America.
2. The Domain Name and Registrar
The Domain Name <moncler-boutique.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 5, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center likewise informed the Complainant that the Complaint was administratively deficient. On October 11, 2010, the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2010. The Response was filed with the Center on November 2, 2010.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 9, 2010. 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 an Italian company in the field of sportswear and sport bags. It is the owner of the trademark MONCLER registered in many countries and territories worldwide. It owns, inter alia, International Trademark No. 269298 (designating several countries), with registration date May 11, 1963, as well as Community Trade Mark No. 5796594, with filing date March 29, 2007 and registration date January 28, 2008. These trade mark registrations consist of the word MONCLER (the “Trademark”).
The Complainant’s company was founded in 1952 in France. For almost 60 years of activity, the company reached a global turnover of EUR 70 million. It sells mostly winter sporting clothes and bags and has about 2,000 shops in Italy, France, Germany, The People’s Republic of China, Japan and the United States.
The Domain Name was registered on August 5, 2010.
5. Parties’ Contentions
The Complainant submits that it is the owner of a famous trademark as a search under “Moncler” with the search engines Google would easily confirm. It indicates that this fact is also reflected in numerous international press articles which it encloses as evidence. According to the Complainant, Moncler winter sporting clothes enjoy a worldwide reputation. Moncler not only has been the official maker of uniforms of the French team in the 1968 winter Olympic games in Grenoble and equipped the expeditions to the top of the Karakoroum (1954) and the Makalù (1955) mountains, but, in the 1980s, its quilted jackets became the uniform of the so called “paninari” or the “sandwich generation” (young boys frequenting sandwich bars and wearing fashionable clothes). Nowadays the company remains, according to the Complainant, a leader of this specific market.
The Complainant indicates that it is not possible that the Respondent may not have been aware of the trade name and trademark MONCLER and that therefore registration of the Domain Name may only have occurred in bad faith (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
According to the Complainant, the Trademark is so obviously connected with a product, that its very use by someone with no connection with the product suggests opportunistic bad faith (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). Even in a case where the trademark involved was somewhat less famous than the brands Veuve Cliquot or Christian Dior, it was decided that the respondent knew of or should have known of the relevant complainant’s trademark and services at the time it registered the domain name (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
Moreover, the Complainant indicates that upon information and belief, the Respondent has no rights or legitimate interest in respect of the Domain Name, in particular:
- the Respondent is not associated in any way with the Complainant or its distribution network;
- the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name “Moncler” (although it has sold counterfeit MONCLER products);
- there is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.
The Complainant further avers that the Respondent uses the Domain Name in bad faith. The website linked to the Domain Name offers MONCLER branded products for sale. According to examination by the Complainant of the photographs appearing on this website, some of the products offered are blatantly counterfeit.
The Complainant therefore requests the transfer of the Domain Name to the Complainant.
On October 15, 2010, an individual using the email address found on the website at the disputed Domain Name sent an e-mail to the Center in response to the Notification of Complaint and Commencement of Administrative Proeeding, confirming receipt and asking what the problem with the website was and how the problem should be solved.
On October 30, 2010, the individual named as the registrant of the Domain Name sent an e-mail to the Center in reply to the Notification as sent by courier, stating that she had not opened any websites or purchased any domain names. According to this individual, she has been the victim of identity theft on the Internet. She believed it was the result of providing personal information to another website . After this, several e-mails have been exchanged with the Center in which this individual repeatedly maintained that she was the victim of identity theft and that she has been receiving complaints from other parties as well.
6. Discussion and Findings
Preliminary Matter – Redaction of the Respondent’s Name
From the case record and considering the circumstances of this case, the Panel finds that the disputed Domain Name was registered by a third-party without the involvement of the individual identified as the registrant of the Domain Name, and has decided to redact her name from the caption and body of this Decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed Domain Name that includes the name of the referenced individual Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel further directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances.
The Panel now discusses the substantial merits of the case. To qualify for a cancellation or a transfer of the Domain Name, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name contains the Trademark in its entirety and is followed by the descriptive term “boutique”. In line with the principle as established in numerous decisions, the Panel agrees that when a domain name contains in full a complainant’s registered mark, that it may be sufficient to establish confusing similarity. (Dr. Ing. H.c.F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312). In this case, the Panel finds that the addition of the dictionary word “boutique” which is also a term used in connection with retail sales (the business in which the Complainant is engaged) does not distinguish the Domain Name from the Trademark.
The Complainant has therefore satisfied the first condition set out in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Respondent has demonstrated to the satisfaction of the Panel that there is a situation of identity theft and the Respondent does not rebut any of the allegations brought forward by the Complainant, the Panel finds that there cannot be any right or legitimate interests to the Domain Name for purposes of paragraph 4(a)(ii).
Consequently, the second condition has been fulfilled.
C. Registered and Used in Bad Faith
As the Respondent has demonstrated to the satisfaction of the Panel that there is a situation of identity theft and the Respondent does not rebut any of the allegations brought forward by the Complainant, the Panel finds that there is a situation of bad faith (on the side of the person purporting to be the Respondent when registering and using the Domain Name), for purposes of paragraph 4(a)(iii).
Consequently, the third condition has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <moncler-boutique.com> be transferred to the Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto attached that identifies the individual listed as the registrant of the disputed Domain Name in the formal record of registration, and orders that the disputed Domain Name, <moncler-boutique.com>, be transferred from that individual to the Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this Decision.
Willem J. H. Leppink
Dated: November 22, 2010