WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.r.l. v. hudietrade, hudietrade hudietrade
Case No. D2011-0458
1. The Parties
Complainant is Moncler S.r.l. of Milano, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
Respondent is hudietrade, hudietrade hudietrade of Barbados.
2. The Domain Names and Registrar
The disputed domain names <acheterdoudounemoncler.com>, <doudounefemmemoncler.com>, <doudounemoncler-femme.com>, <doudounemoncler-homme.com>, <downjacketsmoncler.com>, <femmemoncler.com>, <giubbottimoncler.com>, <giubbottimonclers.com>, <hommemoncler.com>, <monclerdonna.info>, <monclerdonnas.com>, <monclerfemme.net>, <monclerhomme.org>, <moncleronlinestores.com>, <monclershopstyle.com>, <monclersitoufficialesa.com>, <moncleruomo.info>, <offertemoncler.com>, <piuminimonclernegozio.com>, <piuminimonclernegozio.net>, <piuminimoncler.org>, <piuminimonclersit.com>, <piuminimonclerstore.com> and <venditamoncler.com> (the “Domain Names”) are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 10, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Names. On March 11, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 16, 2011.
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 Respondent of the Complaint, and the proceedings commenced on March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2011.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on April 11, 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
The trademark upon which the Complaint is based is MONCLER.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the MONCLER trademark around the world, including in the United States of America, among which the following: United States Registration No. 803943 dated February 15, 1966; United States Registration No. 975069 dated December 18, 1973; International Registration No. 269298 dated May 11, 1963; International Registration No. 504072 dated June 20, 1986; International Registration No. 876150 dated December 13, 2005; European Community Registration No. 5796594 dated January 28, 2008.
According to the documentary evidence and contentions submitted, Complainant was originally founded in France in 1952 and is currently a leading Italian company in the field of sportswear and sport. The Panel notes that MONCLER has been held as a well-known trademark in previous UDRP decisions. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049; Moncler S.r.l. v. linhuiming, WIPO Case No. D2011-0172.
The Domain Names were registered as per the chart below:
Domain Name Registration Date
<acheterdoudounemoncler.com> August 17, 2010
<doudounefemmemoncler.com> September 27, 2010
<doudounemoncler-femme.com> November 11, 2010
<doudounemoncler-homme.com> November 11, 2010
<downjacketsmoncler.com> September 15, 2010
<femmemoncler.com> September 27, 2010
<giubbottimoncler.com> August 16, 2010
<giubbottimonclers.com> February 18, 2011
<hommemoncler.com> August 21, 2010
<monclerdonna.info> September 30, 2010
<monclerdonnas.com> February 18, 2011
<monclerfemme.net> October 03, 2010
<monclerhomme.org> October 03, 2010
<moncleronlinestores.com> August 17, 2010
<monclershopstyle.com> August 17, 2010
<monclersitoufficialesa.com> February 18, 2011
<moncleruomo.info> September 30, 2010
<offertemoncler.com> August 20, 2010
<piuminimonclernegozio.com> October 19, 2010
<piuminimonclernegozio.net> October 19, 2010
<piuminimoncler.org> October 18, 2010
<piuminimonclersit.com> February 8, 2011
<piuminimonclerstore.com> August 16, 2010
<venditamoncler.com> August 21, 2010
5. Parties’ Contentions
Complainant contends that (i) the Domain Names are identical and/or confusingly similar to Complainant’s trademark because they incorporate the MONCLER trademark and the addition of non-distinctive words which do not negate the confusingly similar aspects of the Domain Names; and (ii) there is no way that Respondent may not have been aware of the trade name and trademark MONCLER.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the Domain Names because (i) Respondent is not associated in any way to Complainant or its distribution network; (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name MONCLER; and (iii) there is no evidence of a bona fide non-commercial or other legitimate fair use by Respondent.
Finally, Complainant contends that Respondent is using the Domain Names in bad faith because (i) the Domain Names resolve (except <downjacketsmoncler.com>) to websites offering for sale counterfeits as if they were original MONCLER products; and (ii) Respondent’s inactivity in respect of the <downjacketsmoncler.com> Domain Name amounts to the Domain Name being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to reply to all of Complainant’s contentions by submitting a Response. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. RX America, LLC. v. Matthew Smith. WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may generally be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon AG v. Mti Networks Ltd, WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758. That is particularly true where the trademark is highly recognizable and well-known, as in the instant case.
The Domain Names incorporate the whole of the MONCLER trademark, and therefore may lead the public to think that the Domain Names are somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
In addition, the words “acheter” (buy), “doudoune” (jacket), “femme” (woman), “homme” (man), “downjackets”, “giubbotti” (jacket), “donna” (woman), “onlinestores”, “shopstyle”, “sitoufficiale” (official site), “uomo” (man), “offerte” (offer), “piumini” (jacket), “negozio” (shop), and “vendita” (sale) are all generic or descriptive words closely related to the business activities and products of Complainant.
It has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark is generally to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of domain names. RX America, LLC., supra; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel accepts Complainant’s contentions that Respondent is not associated in any way to Complainant or its distribution network and that Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name MONCLER.
In addition, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “moncler” in the Domain Names in association with generic and descriptive terms which are all related in some manner to the products and business of Complainant. Accordingly, the Panel concludes that the Domain Names were selected and are used by Respondent to take advantage of the notoriety associated with the MONCLER trademark, with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Complainant also argues that Respondent is using the domain names in order to sell infringing products. The Panel notes that the websites to which the Domain Names resolve display a variety of products similar to the original Moncler products with a significant price reduction ranging from around 70% to around 85%. Further, the websites display the MONCLER trademark as if they were either licensed or authorized dealers. Therefore, it is clear that Respondent is intentionally using the MONCLER trademark to attract consumers, who might be seeking products similar to MONCLER original products at lower prices.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the Domain Names, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the Domain Names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel accepts Complainant’s contention that Respondent must have been aware of Complainant’s well-known trade mark when it registered the Domain Names, and concurs with previous UDRP decisions holding that registration of a well-known trademark as part of a domain name is a strong indication of bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. "null", aka Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
The Panel has already found that that the Domain Names were selected and are used by Respondent with the intent to attract for commercial gain Internet users. Complainant also contends that at the time of filing of the Complaint, except for <downjacketsmoncler.com>, all other Domain Names resolved to websites offering MONCLER products which Complainant has upon examination concluded are counterfeit. This is clearly bad faith under paragraph 4(b)(iv) of the Policy. See Moncler S.r.l. v. linhuiming, WIPO Case No. D2011-0172.
Finally, The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. The consensus view in the URDP Panel decisions has been that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity”. (WIPO Overview 2.0, para. 3.2).
In the instant case the majority of the facts referred to above are present and, therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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.com>, <doudounefemmemoncler.com>, <doudounemoncler-femme.com>, <doudounemoncler-homme.com>, <downjacketsmoncler.com>, <femmemoncler.com>, <giubbottimoncler.com>, <giubbottimonclers.com>, <hommemoncler.com>, <monclerdonna.info>, <monclerdonnas.com>, <monclerfemme.net>, <monclerhomme.org>, <moncleronlinestores.com>, <monclershopstyle.com>, <monclersitoufficialesa.com>, <moncleruomo.info>, <offertemoncler.com>, <piuminimonclernegozio.com>, <piuminimonclernegozio.net>, <piuminimoncler.org>, <piuminimonclersit.com>, <piuminimonclerstore.com> and <venditamoncler.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: April 25, 2011