World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Club Monaco Corp. v. clubmonacoonline

Case No. D2011-1186

1. The Parties

1.1 The Complainant is Club Monaco Corp. of Toronto, Ontario, Canada, represented by Greenberg Traurig, LLP, United States of America.

1.2 The Respondent is clubmonacoonline of Laguna Beach, California, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <clubmonacoonline.com> is registered with Melbourne IT Ltd.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2011. On July 13, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed Domain Name. On July 14, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2011.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 15, 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

4.1 The Complainant is a Canadian Corporation doing business in Toronto, Canada. The Complainant is world famous for the line of clothing, accessories and other goods it designs, manufactures and distributes under its registered trademarks. The Complainant has attached copies of United States Patent and Trademark registration certificates for the CLUB MONACO trademarks to these administrative proceedings including the U.S. Registration No. 2,137,573 for CLUB MONACO with a registration date of February 17, 1998 for glasses, watches and other goods. The Complainant’s trademarks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention. The Complainant has spent millions of dollars in advertising and promoting the Complainant’s products and the Complainant generates hundreds of millions of dollars in sales each year. Thus, due to a long history of use throughout the world and in the United States, the Complainant’s trademarks have generated valuable goodwill and reputation and have become inherently distinctive of Complainant’s products.

4.2 The Respondent is located in Laguna Beach, California United States of America, and according to the WhoIs database the disputed domain name <clubmonacoonline.com> was registered on July 23, 2010.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant, apart from owning the famous CLUB MONACO trademarks operates an extensive website featuring information about its goods and activities throughout the world at “www.clubmonaco.com”. The Complainant therefore submits with reference to the Complainant’s United States trademark registrations which create a rebuttable presumption that the Complainant’s trademarks are inherently distinctive, that the disputed domain name is confusingly similar to the Complainant’s trademark, namely CLUB MONACO.

5.2 The Complainant submits further that neither the addition of the generic word “online” nor the suffix “.com” is sufficient to avoid the confusing similarity with the Complainant’s trademark. In this regard, the Complainant relies on a number of cases in support of this contention. First is the case MasterCard International Incorporated v. Hochberger, WIPO Case No. D2006-1050, while the second case is Sony Kabushiki Kaisha v. Inja Kil, WIPO Case No. D2000-1409.

5.3 The Complainant further contends that the Respondent is incapable of demonstrating any rights or legitimate interests in the disputed domain name. In this regard, the Complainant points out that the Respondent only registered the disputed domain name after the Complainant had established exclusive rights in its trademarks. The Complainant argues further in this regard that the registration of a domain name incorporating another party’s famous trademark does not confer any rights or legitimate interests in the domain name. The Complainant refers in this regard to the case PRL USA Holdings, Inc. v. Philip Chang, WIPO Case No. D2006-0093, in which the panel held that the Respondent cannot establish legitimate rights where the Complainant’s trademarks and name are so well known and so widely recognized. Furthermore, it is the Complainant’s contention that the Respondent has generated revenue by trading upon the valuable goodwill and reputation of the Complainant’s trademarks and has fraudulently misled consumers to believe that the Respondent is the Complainant; accordingly, the Respondent lacks any rights or legitimate interests in the disputed domain name.

5.4 On the question of registration and the use of the disputed domain name in bad faith, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. In support to its contention, the Complainant states that the Respondent has used the Complainant’s trademarks for email purposes to create the false impression of authorization by the Complainant, and such usage qualifies as evidence of bad faith registration and use as was held in the case Produit Berger v. Wellmark Supplies, WIPO Case No. D2003-0392. The Complainant also refers to the Respondent’s use of the disputed domain name to entice customers into providing personal information for nefarious purposes, such as identity theft, as very strong evidence of bad faith use. The Complainant has attached a printout of a sample email chain in which the Respondent uses its email account for such purposes. That email is attached to the Complaint (Exhibit D). The Complainant cites the case Grupo Financiero Inbursa, S.A. de C.V.v. Inbuirsa, WIPO Case No. D2006-0614, in which the panel held that the registration and use of a domain name to steal valuable personal information is a “compelling indication of both bad faith registration and use under paragraph 4(b) (iv).” The Complainant also states that where the Respondent uses the Complainant’s famous trademarks to promote the Respondent’s business, bad faith use can be established as was stated in the case PRL USA Holdings, Inc v. Unasi Management Inc., WIPO Case No. D200-1027.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds without hesitation that the disputed domain name <clubmonacoonline.com> is confusingly similar to the Complainant’s well-known trademark CLUB MONACO. Upon ordinary visual comparison of the disputed domain name with the Complainant’s, trademark and website at “www.clubmonaco.com”, it is patently obvious that the disputed domain name wholly incorporates the Complainant’s trademark. The Panel is therefore satisfied as the Complainant argues that the mere addition of the generic word “online” or the suffix “.com” does not in any way sufficiently distinguish the disputed domain name from the Complainant’s trademarks and equally does not prevent the confusing similarity in the minds of Internet visitors and consumers.

6.4 In support of the finding above, the Panel draws support from a number of cases cited by the Complainant in particular the case MasterCard International Incorporated v.Hochberger, WIPO Case No. D2006-1050, in which the panel held that the domain name <mastercardoffers.com> was confusingly similar to the complainant’s MASTERCARD trademark regardless of the addition of the generic word “offers”. The Panel also finds the case Sony Kabushiki Kaisha v. Inja Kil, WIPO Case No. D2000-1409, relevant in this regard in which the domain names <sonycampus.com>, <sonycollege.com>, <sonyacademy.com> and <sonycall.com> were all found to be identical and confusingly similar to the SONY trademark.

6.5 Accordingly, the Panel finds that the Complainant has established the disputed domain name to be confusingly similar to the Complainant’s CLUB MONACO trademark.

B. Rights or Legitimate Interests

6.6 The Panel is also satisfied that no circumstances giving rise to any rights or legitimate interests in the disputed domain name within the ambit of paragraph 4(c) of the Policy exist in this case. As the Complainant contends, the Respondent based in California in the United States, registered the disputed domain name after the Complainant had established worldwide exclusive ownership of its trademarks as evidenced by a number of trademark registrations both in the United States and abroad. As held in previous decisions such as Telestra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and PRL USA Holdings Incorporated v. Philip Chang, WIPO Case No. D2006-0093 the registration of a domain name incorporating a third party’s famous trademark so well-known and so widely recognized does not establish the existence of any rights or legitimate interests by the Respondent.

6.7 The Panel accepts as the Complainant contends that the Respondent has generated revenue by trading upon the valuable goodwill and reputation of the Complainant’s trademark by misleading consumers to believe that the Respondent is indeed the Complainant, accordingly, such dishonest conduct can never be the basis for establishing the existence of rights or legitimate interests in the disputed domain name.

6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.9 With regards to the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed domain name in bad faith and continues to use it in bad faith. The Panel is of the view that the Respondent could not have been unaware of the existence of the Complainant’s worldwide established rights even in the United States where the Respondent is located before deciding to register the disputed domain name. The Panel has also taken into account in this regard the Respondent’s apparent use of the disputed domain name for the purposes of enticing customers into providing personal information for nefarious purposes such as identity theft as very strong evidence of bad faith registration and use. The Panel has carefully scrutinized a printout of a sample email written by the Respondent and dated May 27, 2011 which confirms the nefarious conduct of the Respondent and is further satisfied that such conduct is compelling indication of both bad faith registration and use under paragraph 4(b)(iv) of the Policy as held in Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa, WIPO Case No. D2006-0614. Thirdly, the Panel finds that bad faith use is established in so far as the Respondent is using the Complainant’s famous trademark to promote the Respondent’s business, see PRL USA Holdings Inc. v. Unasi Management, Inc ., WIPO Case No. D2005-1027. Finally, in any event and as earlier indicated, the Panel has taken into account the Respondent’s failure or omission to respond to the Complainant‘s contentions and has therefore made adverse inferences against the Respondent.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith registration and use within the ambit of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <clubmonacoonline.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Dated: August 30, 2011

 

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