WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.r.l. v. Silin Trade
Case No. D2011-0511
1. The Parties
Complainant is Moncler S.r.l. of Milan, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati of Torino, Italy.
Respondent is Silin Trade of Fujian, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <monclergibbit.com>, <moncler-meop.com>, <moncler-shop10.com>, and <moncler-vermoo.com> are registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2011. On March 21, 2011, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 22, 2011, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 23, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On March 23, 2011, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on March 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 21, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 4, 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.
Language of the Proceeding
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. In this case, the language of the registration agreements for the disputed domain names is Chinese. Complainant filed arguments in support of English being recognized as the language of the proceedings based partly on the observation that English is the most commonly used language of international business. The Center requested comments from Respondent regarding the language of the proceedings by the deadline of March 28, 2011. Because Respondent did not object by the deadline, the Center initiated the administrative proceeding and sent all further communications to Respondent in the English and Chinese languages. The Center also invited Respondent to submit a response in the English or Chinese languages.
In light of these circumstances, the Panel concludes that it will proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English and issue a decision in English.
4. Factual Background
Complainant Moncler S.r.l. is an Italian company in the field of sportswear and sport bags. Complainant was founded in France in 1952 and owns registrations for its MONCLER and MONCLER & Design trademarks valid in multiple jurisdictions including the United States of America, the European Community, and the People’s Republic of China for clothing and related items in Class 25.
The disputed domain names <moncler-meop.com> and <moncler-vermoo.com> were created on October 11, 2010, while the disputed domain names <moncler-shop10.com> and <monclergibbit.com> were created on October 28, 2010 and October 29, 2010, respectively. All of the disputed domain names are registered with Bizcn.com, Inc. The literal content of the websites featured at the disputed domain names is in Italian and English, and each website advertises clothing items for sale and features Complainant’s MONCLER and MONCLER & Design trademarks. Specifically, Complainant’s MONCLER trademark is featured in the descriptions of the items, and Complainant’s MONCLER and MONCLER & Design trademarks are featured in many of the images of the items offered for sale. Additionally, Complainant’s MONCLER & Design trademark is displayed in the web browser address bar when each of the disputed domain names is accessed.
Complainant claims to operate 2,000 retail locations in Italy, France, Germany, the People’s Republic of China, Japan, and the United States of America and claims to be a market leader for its products with a current global turnover of EUR 70 million. Complainant maintains that its goods have developed significant reputation worldwide, citing as examples their use by expedition teams when climbing the Karakoroum and Makalu mountains in 1954 and 1955 and by their use as uniforms by the French Olympic team in the 1968 Winter Olympic Games. Complainant also claims that its goods are widely recognized due to their association with paninaro fashion and culture of the early 1980s in Italy because young boys who were part of this movement tended to wear Complainant’s clothing.
Complainant alleges that Respondent’s domain name registrations <moncler-meop.com>, <moncler-vermoo.com>, <moncler-shop10.com>, and <monclergibbit.com> are likely to cause confusion because each domain name is composed of Complainant’s MONCLER trademark and non-distinctive words. Complainant maintains that Respondent could not have been unaware of Complainant’s trademark rights when registering the disputed domain names because Respondent is from the People’s Republic of China, one of the largest markets for Complainant’s products. Further, Complainant maintains that Respondent is not associated with Complainant, maintains that Respondent has never been commonly known by the “Moncler” name, and alleges that Respondent is using the domain names to sell counterfeit goods.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The common element in all of the disputed domain names is Complainant’s MONCLER trademark. The Panel notes that Complainant has registered trademark rights in the MONCLER trademark in multiple jurisdictions including the People’s Republic of China, the country where Respondent is domiciled. Moreover, the MONCLER trademark has been cited as a well-known trademark. See, i.e., Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (observing that respondent “should have been aware” of complainant’s MONCLER trademark when registering a domain name incorporating the mark because it is well-known),
Complainant maintains that each of the domain names are confusingly similar to its MONCLER trademark because they (1) incorporate the MONCLER trademark, and (2) incorporate non-distinctive terms. In support of this argument, Complainant has provided the following reasons why the “meop”, “vermoo”, and “gibbit” portions of the disputed domain names are non-distinctive:
“Meop” in <moncler-meop.com>: “[t]he international acronym for ‘maximum expected operating pressure’, indicating a peculiar solidity of the product, especially in a juvenile jargon which borrowed it from the military use through the movies”;
“Vermoo” in <moncler-vermoo.com>: “[t]he name of a popular video website in the Far East”;
“Gibbit” in <monclergibbit.com>: “[e]ither juvenile jargon for ‘give it’ or a misspelling of ‘giubbotti’, the Italian name for jackets”
Complainant has not provided a specific reason why the “shop10” portion of the <moncler-shop10.com> domain name should be found to be non-distinctive, however Complainant has cited a prior UDRP decision involving a domain name which incorporated “shop” and was held to be confusingly similar to the trademark at issue, namely J. Choo Limited v. Paris, WIPO Case No. D2010-2086 (holding the disputed domain name <jimmychooshop.net> to be confusingly similar to the registered JIMMY CHOO trademark).
The Panel does not agree that the “meop”, “vermoo”, and “gibbit” terms are non-distinctive. Complainant has not provided sufficient evidence to support its claim that these terms are widely known as described above, and the Panel is not aware of any previous decisions involving domain names utilizing these terms which cited one or more as non-distinctive elements.
Regarding “shop10”, the Panel agrees that this is a non-distinctive element. Prior panels have held that “shop” is non-distinctive and that the use of numbers in a domain name does not prevent a finding of confusing similarity. See, e.g., Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager, WIPO Case No. D2010-1269 (holding that the “shop” suffix of the domain name <mercedes-shop.com> “only heightens the possible confusion” between the domain name and the MERCEDES trademark because “it implies an authorized online sales outlet for Mercedes vehicles and parts”), SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall, WIPO Case No. D2006-0793 (holding that the “11” portion of the domain name <tradingpost11.com> was “not enough either to detract from the similarity” between the domain name and the TRADING POST trademark or “the confusing nature of that similarity”), and Hermes International v. Pan Bing Huang, WIPO Case No. D2010-2275 (holding that the 2010 portion of <hermes2010.com> did not distinguish the disputed domain name from the HERMES trademark).
Although the Panel does not agree that the additional elements in the domain names <moncler-meop.com>, <moncler-vermoo.com>, and <monclergibbit.com> are non-distinctive, the incorporation of Complainant’s distinctive MONCLER mark in each supports a finding of confusing similarity. Each utilizes Complainant’s distinctive MONCLER trademark at the beginning of its alphanumeric string, and each incorporates additional literal elements which do not create a separately recognizable term when combined with “moncler”. The use of a distinctive or well-known trademark in its entirety has been cited by numerous panels in support of findings of confusing similarity, more notably Dell Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0721 (finding <dellalo.com> confusingly similar to the well-known DELL trademark because the term “dellalo” as a whole did not create a term “that would allow it to be clearly distinguished from the Complainant’s mark”) and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (finding confusing similarity between the domain name <eautolamps.com> and the EAUTO trademark, observing that “when a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”).
Accordingly, the Panel finds that the domain names are confusingly similar to the MONCLER trademark in which Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Complainant has registered trademark rights in MONCLER which precede the creation of the domain names between September and December of 2010. These rights are recognized in Respondent’s residence country of the People’s Republic of China, where they can be traced to 1983.
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s MONCLER trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term ”moncler”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The record shows that Complainant owns rights in its MONCLER trademark in Respondent’s home country of the People’s Republic of China which can be traced to 1983. Each of the disputed domain names registered by Respondent incorporates Complainant’s distinctive MONCLER trademark in its entirety. The Panel is unaware of any meaning for the term “moncler” which would support a finding of legitimate registration.
It is clear from the content of the websites associated with the disputed domain names that Respondent is aware of Complainant. Each website features goods identical to those offered by Complainant under Complainant’s MONCLER and MONCLER & Design trademarks, and each of the disputed domain names, once accessed, displays Complainant’s MONCLER & Design trademark in the web address bar. The design of the websites incorporates Complainant’s MONCLER and MONCLER & Design trademarks, and many of these items featured on the websites are advertised using Complainant’s MONCLER trademark (e.g., “Moncler Cezanne 2010 uomo EUR188.00”). Moreover, much of the clothing featured in the images for products advertised on the websites features Complainant’s MONCLER and MONCLER & Design trademarks as decorative elements. The use of Complainant’s trademarks in these manners combined with the use of the domain names to sell goods identical to those provided by Complainant is indicative of an intent to deceive consumers into believing that the domain names are somehow associated with, affiliated with, and/or endorsed by the Complainant.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, this constitutes evidence of bad faith registration and use. It is likely that consumers accessing Respondent’s websites will believe that the products and services featured are offered by Complainant. Continued use of the disputed domain names in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(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, <monclergibbit.com>, <moncler-meop.com>, <moncler-shop10.com>, and <moncler-vermoo.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: May 18, 2011