WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monsoon Accessorize Limited v. PrivacyProtect.org / biga oba
Case No. D2012-1693
1. The Parties
The Complainant is Monsoon Accessorize Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Eversheds, LLP, United Kingdom.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / biga oba, biga clothing co. of Kalsdorf, Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <monsoondressesuk.org> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (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 name. On August 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition to such communication, the Center further notified the Complainant on the same day that its Complaint was administratively deficient. The Complainant filed an amended Complaint on August 31, 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 September 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 12, 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 is a UK ladies’ fashion retailer that was created in 1973. It now counts over 400 stores in the United Kingdom and more than 600 worldwide.
The Complainant owns numerous trademarks consisting in whole or in part of the term “monsoon”, in particular but not only in the United Kingdom, out of which the first ones have been registered in the 1980’s.
The Complainant carries out its activities online in particular under the domain name <monsoon.co.uk>.
On July 20, 2012, following a complaint that had been filed by the Complainant against Hu Shaotang and Wang Laoji with regards to several domain names which had been registered by the latter, the panel ruled in favor of the Complainant and ordered the transfer of the domain names <monsoondress.net>, <monsoondresses.net>, <monsoon-dress.net>, <monsoon-dresses.net>, <monsoon-dress.com>, <monsoon-dresses.com>, <monsoondressessale.com>, <monsoondressesuk.com> as well as <monsoondressesuksale.com>, Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang, Wang Laoji, WIPO Case No. D2012-0996.
On July 24, 2012, the Respondent registered the disputed domain name <monsoondressesuk.org>. The website to which the disputed domain name resolves (“the Website”) offers numerous clothing products for sale under the trademark MONSOON.
On August 8, 2012, one of the Complainant’s representatives placed an order for dresses through the Website using a Visa card.
On August 9, 2012, the Complainant informed both the Registrant and Visa about the fraudulent activities carried out on the Website. By August 23, 2012, when the Complaint was filed, the Complainant’s representative had not received the dresses he ordered from the Website.
5. Parties’ Contentions
The Complainant first asserts that the disputed domain name <monsoondressesuk.org> is virtually identical to its trademark MONSOON, as the mere additions of the terms “dresses” and “uk” are merely descriptive and do not exclude the likelihood of confusion resulting from the reproduction of the trademark MONSOON in the disputed domain name.
The Complainant then affirms that the Respondent has no rights or legitimate interests in the disputed domain name. It has never been authorized by the Complainant to register the disputed domain name and is not affiliated or connected with the Complainant in any way. The Respondent is not known by the name “monsoon”. The Complainant asserts that the Respondent has no access to the stock of the Complainant’s products, so the Respondent is either supplying counterfeits through the Website or is not supplying anything, or at least not the products described on the Website. The fraudulent use made by the Respondent of the Website cannot amount to a bona fide offering of goods and services, nor to a legitimate non-commercial or fair use purpose; to the contrary, the Respondent is intentionally misleading consumers for commercial gain suggesting that the Website is in some way connected to the Complainant.
Considering what precedes, the Complainant finally considers that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several trademarks consisting in whole or in part of the word “monsoon”.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a generic term like “dresses” is not sufficient to avoid confusion (Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413). The same goes with regards to the addition of a geographical term such as “uk” (see, among others: Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, the addition of such elements rather strengthens the likelihood of confusion, by making Internet users mistakenly believe that the Website might be the Complainant’s official website in the United Kingdom.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Complainant is the owner of numerous MONSOON trademarks. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has it made a legitimate noncommercial or fair use of the disputed domain name, but rather it clearly seems to be in the business of selling counterfeit (or at least unauthorized) products under the Complainant’s trademarks, and also noting that the Website does not accurately and prominently disclose the Respondent’s relationship with the Complainant, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant is the owner of numerous trademarks consisting in whole or in part of the term “monsoon”.
Considering the fact that the Respondent falsely portrays itself as an official retailer of the Complainant’s products, depicting numerous products, be they counterfeited or not, under the trademark MONSOON, there is no doubt in the Panel’s opinion that the Respondent chose and registered the disputed domain name <monsoondressesuk.com> in bad faith. Previous UDRP panels have already ruled that the use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered (Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728).
The reasoning held by the panel in Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang and Wang Laoji, WIPO Case No. D2012-0996, in a very similar case not to say identical can entirely be transposed to the present case:
By registering the disputed domain name using the Complainant’s MONSOON trademark and advertising goods in competition with the Complainant, the Respondent has indeed intentionally diverted traffic from the Complainant’s website.
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, such use constitutes evidence of bad faith registration and use.
As rightfully stated by the panel in Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang and Wang Laoji, WIPO Case No. D2012-0996: “The record shows that Respondents have used the disputed domain names to advertise goods in commercial competition with Complainant and Complainant’s goods. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on the websites linked to the disputed domain names without an accurate disclosure of the Respondents’ relationship with the Complainant illustrates an intent to deceive consumers into believing that the disputed domain names are somehow associated with, affiliated with, and/or endorsed by Complainant and is not bona fide. There is no evidence in the record to refute this conclusion”. This holding obviously applies in the present case.
Consequently, the Panel is of the opinion that the disputed domain name <monsoondressesuk.org> has been registered and is being used in bad faith under the 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 disputed domain name <monsoondressesuk.org> be transferred to the Complainant.
Dated: October 20, 2012