WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.r.l. v. Steven Park
Case No. D2011-0434
1. The Parties
The Complainant is Moncler S.r.l. of Milano, Italy (hereinafter “Complainant”).
The Respondent is Steven Park of Chengdu, Sichuan Province, the People’s Republic of China (hereinafter “Respondent”).
2. The Domain Names and Registrar
The following disputed domain names
<venditamonclernegozio.com> are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter the “Center”) on March 8, 2011. On March 8, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On March 9, 2011, Name.com LLC transmitted by email to the Center its verification response confirming that 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 (hereinafter the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2011.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 5, 2011. 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 is a leading designer and producer of sportswear and sport bags known throughout the world. Complainant is the registered owner of the trademark MONCLER in countries around the world, including in the People’s Republic of China. Complaint, Annexes 2 – 11. The registrations in the People’s Republic of China, where Respondent is located, date back to 1982. Complaint, Annex 9. The status of the fame and notoriety of Claimant’s mark has been acknowledged by many UDRP panels. See, e.g., Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.
Complainant has been in business since 1952 in France and currently has more than 2,000 retail outlets in six countries alone, including the People’s Republic of China. Its annual sales are currently in excess of seventy million euro. Complainant provided the official 1968 Winter Olympic Games uniform for the nation of France under its trademark MONCLER and continues to be universally recognized for its winter sporting clothes and bags.
The domain names all consist of the MONCLER trademark together with common words (in French and/or Italian) for “online,” “outlet,” “jacket(s) ”, “buy”, “shop”, “man”, and “woman”. All of the domain names were registered in November and December 2010, the earliest of which were registered on November 30, 2010, postdating virtually all of the trademark registrations of the MONCLER mark by Complainant. Complaint, Annexes 38-62.
The vast majority of the domain names resolve to web sites at which goods featuring Complainant’s registered marks are offered for sale or to web sites which contain links to such web sites. Complaint, Annexes 13 – 14, 16 – 34, and 36 – 37. Two of the domain names (<doudounemonclerenligne.net> and <spacciomoncler.net>) currently do not resolve to a web site. Complaint, Annexes 15 and 35.
5. Parties’ Contentions
Complainant contends that the domain names are confusingly similar to its MONCLER marks, that Respondent has no rights or legitimate interests in respect of the domain names; and that Respondent has registered and is using the domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain names consist of the trademark MONCLER to which Respondent has added non-distinctive words such as “enligne” (the French translation for “online”), “outlet”, “giubbotti” or “doudoune” (respectively the Italian and French translation for “jacket(s)”), “acheter” (the French translation for “buy”), “negozio” (the Italian translation for “shop”), “femme” or “donna” (respectively the French and Italian translation for “woman”), “homme” or “uomo” (respectively the French and Italian translation for “man”), etc. The combination in a domain name of Complainant’s mark and words descriptive of Complainant’s business or products is confusingly similar to Complainant’s mark. Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283 (<fortehotels.com>); The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd, WIPO Case No. D2000-0388 (chasemanhattancorp.com). Accordingly, the Panel finds that the domain names are confusingly similar to trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
The consensus view of UDRP panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
With the exception of <doudounemonclerenligne.net> and <spacciomoncler.net> that do not resolve to a web site, the domain names resolve to web sites offering Moncler products for sale. According to Complainant, all of these products are counterfeits, as determined by Complainant’s examination of the products appearing in Respondent’s web sites, or in web sites resulting from links in Respondent’s web sites. (Complaint, Annexes from 13- 37). UDRP panels have consistently held that the use of a domain name confusingly similar to a well-known trademark in order to sell counterfeit products via the Internet is a typical case of registration and use in bad faith. Cartier International, N.V., Cartier International B.V. v. David Lee , WIPO Case No. D2009-1758.
As to the two domain names which do not resolve to a web site, the fact that they use Complainant’s famous marks, that they are held by Respondent who has utilized numerous other similar marks to resolve or link to web sites at which goods apparently imitating those of Complainant are sold, and that Respondent has no rights or legitimate interests in respect to any of the domain names, is sufficient under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 to constitute bad faith registration and use. Accordingly the Panel finds that all the domain names have been registered and are being used in bad faith.
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 names <acheterdoudounemoncler.net>, <doudounemonclerenligne.com>, <doudounemonclerenligne.net>, <doudounemonclermagasin.com>, <doudounemonclermagasin.net>, <giubbottimonclernegozio.com>, <giubbottimonclernegozio.net>, <monclerdonnait.com>, <monclerdonnanegozio.com>, <monclerenligne.com>, <monclerfemmeenligne.com>, <monclerfemmemagasin.com>, <monclerhommeenligne.com>, <monclerhommemagasin.com>, <monclersitoufficialeit.com>, <moncleruomoit.com>, <moncleruomonegozio.com>, <offertemonclernegozio.com>, <outletmonclerit.com>, <outletmonclersitoufficiale.com>, <piuminiimoncler.com>, <piuminiitmoncler.com>, <spacciomoncler.net>, <spacciopiuminimoncler.com> and <venditamonclernegozio.com> be transferred to Complainant.
M. Scott Donahey
Dated: April 20, 2011