WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monsoon Accessorize Limited v. los angeles
Case No. D2012-1692
1. The Parties
The Complainant is Monsoon Accessorize Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom.
The Respondent is los angeles of Los Angeles, United States of America.
2. The Domain Names and Registrars
The disputed domain names <monsoonclothing.net> and <monsoon-sale.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 29, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 30, 2012.
The Center verified that the Complaint together with the amended 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 August 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed Christian Pirker as the sole panelist in this matter on September 28, 2012. 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, Monsoon Accessorize Limited is a fashion retailer, selling women’s clothing under the trademark MONSOON since 1973. The company owns about a thousand shops in the United Kingdom and worldwide. The Complainant also owns a website, “www.monsoon.co.uk”, launched 15 years ago.
The Complainant’s trademark MONSOON has been registered for the first time in the United Kingdom on August 16, 1980, (Trademark number 1138912) with the Intellectual Property Office, in connection with class 25 for dresses. Further, the Complainant registered a Community trademark number E3966124 for the word MONSOON which was registered in 2006 in connection with class 25 for articles of clothing. The Complainant also owns numerous other trademarks including the word “MONSOON”.
The Respondent, based in the United States of America, registered the disputed domain name <monsoonclothing.net> on July 11, 2012 and the disputed domain name <monsoon-sale.net> on July 13, 2012.
5. Parties’ Contentions
First, the Complainant claims that the two disputed domain names <monsoonclothing.net> and <monsoon-sale.net> are confusingly similar to its trademark MONSOON. The word “Monsoon” is the main component of the trademark and the adjunction of the words “sale” and “clothing”, which are generic terms, do not distinguish the disputed domain names from the Complainant trademark.
Further, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names because there is no connection with the Complainant, and no authorization to use the trademark MONSOON.
Moreover, according to the Complainant, the use of the disputed domain name is not made with a bona fide offering of goods and services as the Respondent appears to be pursuing fraudulent purposes, the Respondent is not commonly known by the disputed domain names, the Respondent only tries to take advantage of the goodwill which the Complainant has built up in the name MONSOON. The content of the websites linked to the disputed domain names makes a deliberate misrepresentation that they are linked to the Complainant website.
The Complainant claims that the Respondent has registered and is using the disputed domain names to intentionally mislead consumers, since the websites that are linked to the disputed domain names contain the trademark MONSOON, photographs and descriptions copied from the original website of the Complainant, and since the products are offered to sell for substantially reduced prices.
The Complainant requests a sole panelist to issue a decision that the disputed domain names <monsoonclothing.net> and <monsoon-sale.net> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel to:
“Decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4 (a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and
(ii) that the Respondent has no right nor legitimate interests in respect of the domain name ; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The concerned record submitted shows that the Complainant is the owner of MONSOON trademarks recognized in the United Kingdom and in the European Community. The registrations of those trademarks have been made before the registrations of the disputed domain names.
Moreover, a previous UDRP Panel has also recognized that the Complainant is the owner of the MONSOON trademark, see e.g., Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang, Wang Laoji, WIPO Case No. D2012-0996.
The fact that the Complainant’s trademark does not appear to be registered in the United States of America, country in which the disputed domain names are registered, does not affect the merits of the Complainant request. This is not a requirement of the Policy, see e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (“The policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence”) and Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang, Wang Laoji, WIPO Case No. D2012-0996 (“It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s country of residence”).
In similar cases, the UDRP panels have found that adding descriptive words does not avoid the likelihood of confusion between a trademark and a domain name incorporating the said trademark, see e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (“In most cases where a domain name incorporates the entirely of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark”); Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559, Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024.
Here, the trademark MONSOON is entirely included in the disputed domain names and the adjunction of general words as “sale” and “clothing”, which are generic terms, do not distinguish the disputed domain names from the Complainant trademark. Moreover, the words “sale” and “clothing” refer to the Complainant activity and goods related to MONSOON trademark which increase the confusion, see, e.g., Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.
Accordingly, the Panel finds that the disputed domain names <monsoonclothing.net> and <monsoon-sale.net> are confusingly similar to the Complainant’s trademark MONSOON in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable
preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if the respondent have acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the Respondent.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
Moreover, there is no evidence in the file that the Respondent would appear to have rights or legitimate interests in the disputed domain names.
Accordingly, and taking into account the Panel’s findings below, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4 (b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the disputed domain name:
(i) circumstances indicating that the respondent have registered or the respondent have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent have engaged in a pattern of such conduct; or
(iii) the respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.”
The Complainant alleges that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to each of its websites, by creating a likelihood of confusion with the Complainant’s mark.
At first, the Panel notes that the Respondent registered the disputed domain names after the registration of the trademarks by the Complainant. The Complainant was already benefiting from an important presence on the internet, which is also noticed in a previous case, “a simple internet search for “monsoon” and “dress” or “UK” results in links predominantly related to Complainant and Complainant’s website”, see e.g., Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang, Wang Laoji, WIPO Case No. D2012-0996.
Further, in SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Claim No. 94956), a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the disputed domain name. As a consequence, the Panel considers that the Respondent knew or should have known about the existence of the Complainant products and trademarks when he registered the disputed domain names and accordingly that he has registered the disputed domain names in bad faith.
After comparing the Complainant’s website with the two websites linked to the disputed domain names, the Panel notes that they are proposing the same goods. The Respondent is using prominently the word MONSOON, images and products descriptions that are similar, if not identical, from the Complainant’s website. As the Respondent is offering the Complainant’s products at substantially reduced prices, some Internet users and potential clients of the Complainant will without doubt be misled as they believe, wrongfully, that they are contacting with the Complainant.
Accordingly, the Panel accepts as true that the Respondent trades on the goodwill invested by the Complainant in its MONSOON trademark in order to capture the potential consumers. This behavior is also revealing that the Respondent acted intentionally, and was aware of the existence of the Complainant activity and trademarks.
Taking into account the above, the absence of agreement between the Complainant and the Respondent, and the lack of participation in the proceedings of the Respondent, the registration of the two disputed domain names and the use that have been made of them support a finding of bad faith.
Accordingly, the Panel is convinced that the disputed domain names have been registered and are being used in bad faith and that the Complainant has fulfilled the third condition under paragraph 4(a) 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 disputed domain names, <monsoonclothing.net> and <monsoon-sale.net> be transferred to the Complainant.
Dated: October 8, 2012