WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.R.L. v. Wenfei Zheng

Case No. D2012-2115

1. The Parties

The Complainant is Moncler S.R.L. of Milan, Italy, represented by Studio Barbero, Italy.

The Respondent is Wenfei Zheng of Fujian, China.

2. The Domain Names and Registrars

The Disputed Domain Names <billigemonclerdaunenjacke.com>, <monclerbilligkaufen.org>, <monclerdoudouneparis.org>, <monclerjackenbillig.org>, <ventemonclerdoudoune.com>, and <monclerjackenwien.org> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

The Disputed Domain Names <doudounemonclergilet.com>, <monclercollezione2011.com>, <monclerdoudouneschweiz.com>, <monclerdownjacketssales.com>, <monclerdunjakkedanmark.com>, <monclerenparis.com>, <monclergiubbottiuomo.com>, <monclerhoodie.com>, <monclerjackadam.com>, <monclerjackenherrench.com>, <monclerjackenmunich.com>, <monclerjackenonlinede.com>, <monclerjackenosterreich.com>, <monclerjacketsforcheapuk.com>, <monclerjacketshotsales.com>, <monclerjacketsoutletsuk.com>, <monclerjackorrea.com>, <monclerjakkerudsalg.com>, <moncleronlinefrance.com>, <monclerosterreich.com>, <monclerpiumini-italia.com>, <monclerprijzen.com>, <monclersalecenter.com>, <monclersalemoncleruk.com>, <monclersbelgique.com>, <monclersjackenherren.com>, <monclersjackenkaufen.com>, <monclersjakke.com>, <monclersjassenonline.com>, <monclerspiumini.com>, <monclerssaleonline.com>, <monclersschweiz.com>, <monclerukstockists.com>, <outletmoncleritalia.com>, <piuminimonclersoutlets.com> and <spacciomonclermilano.com> are registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2012. On October 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 25, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 31, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 5, 2012, the Complainant confirmed its request that English be the language of proceeding. The 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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.

The Center appointed Kar Liang Soh as the sole panelist in this matter on December 6, 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 was founded in Grenoble in 1952 and is in the business of luxury outerwear and sportswear. The Complainant’s name, Moncler, is derived from the abbreviation of the name of Monestier-de-Clermont, an Alpine town near Grenoble. Over the last 50 years, the Complainant name and trademark, MONCLER, has been used on the Complainant’s products in over 100 countries. Worldwide sales of products under the trademark MONCLER in 2010 exceeded EUR 282 million, with over EUR 50 million in Asia. The trademark MONCLER is supported by advertising campaigns worldwide through television and other media, including international magazines like Vogue, Vanity Fair and GQ. The Complainant invested over EUR 6 million in advertising for the Fall/Winter 2012 season, with over EUR 400,000 in China alone.

The Complainant has registered the trademark MONCLER extensively worldwide. These registrations include:

The Complainant holds over 450 domain name registrations incorporating the trademark MONCLER, including <moncler.com>, <moncler.cn>, <boutique-moncler.com> and <moncler-asia.net>, to name a few. Most of these domain names redirect to the Complainant’s website at “www.moncler.com”, which generate significant numbers of visits. From September 2011 to March 2012, about 3.5 million Internet users visited the website, including over 140,000 from China. The Complainant’s products are available online via this website. The Complainant’s website features a prominent logo incorporating the word MONCLER (the “MONCLER Logo”):

The Disputed Domain Names were registered between September 7, 2011 and October 26, 2011. On or before the filing date of the Complaint, the Disputed Domain Names <billigemonclerdaunenjacke.com>, <monclerbilligkaufen.org>, <monclerdoudouneparis.org>, <monclerjackenbillig.org> and <ventemonclerdoudoune.com> resolve to websites which offer products under the trademark MONCLER for sale. The trademark MONCLER, the MONCLER Logo and other similar logos were also featured prominently on these websites. These similar logos are shown below:

On or before the filing date of the Complaint, the Disputed Domain Names <monclerdunjakkedanmark.com>, <monclerjackorrea.com>, <monclerjakkerudsalg.com>, <monclerpiumini-italia.com> and <monclersbelgique.com> redirected visitors to parking page websites. On or before the date of the Complaint, the rest of the Disputed Domain Names did not resolve to any websites.

The Complainant issued a cease and desist letter to the Respondent on September 17, 2012 requesting the Respondent to inactivate the websites resolved from the Disputed Domain Names and to transfer the Disputed Domain Names. A reminder was sent to the Respondent on September 24, 2012. The Complainant did not receive any reply from the Respondent. Following these letters, some of the Disputed Domain Names, which previously redirected or resolved to websites, stopped such redirecting or resolving.

Other than the WhoIs information relating to the Disputed Domain Names and the websites resolved therefrom, little else is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Names are confusingly similar to the Complainant’s trademark MONCLER. The Disputed Domain Names incorporate the Complainant’s trademark MONCLER with other descriptive or generic terms;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark MONCLER. The Respondent is also not commonly known by the Disputed Domain Names. There is no evidence that the Respondent is using the Disputed Domain Names in connection with a bona fide offering of goods or services; and

c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent could not have possibly ignored the existence of the Complainant’s trademark registrations. The Complainant’s trademark features prominently on the websites resolved from the Disputed Domain Names and the products offered on the websites bear the Complainant’s trademark. The products offered on the websites are counterfeits. A reasonable person who visits any of the websites is likely to be misled in relation to source, sponsorship, affiliation or endorsement of the website and the products made available on the website. The passive holding of those Disputed Domain Names which did not resolve to any websites also amounted to bad faith. The Respondents have engaged in a pattern of conduct to prevent the Complainant from reflecting its trademark MONCLER in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of Proceeding

The default language of the proceeding is Chinese because the registration agreements for the Disputed Domain Names were in Chinese. The Complainant has requested that English be adopted instead as the language of the proceeding. Having considered the circumstances, the Panel grants the Complainant’s request. The Panel made this determination having regard to various factors, particularly including the following:

a) The Complainant communicates in English and has confirmed that it would be prejudiced if required to translate the Complaint and participate in the proceeding in Chinese;

b) Delay in the proceeding is expected should the Panel maintain Chinese as the language of the proceeding;

c) The Complainant has already submitted the Complaint in English and the Panel is conversant in both English and Chinese;

d) No Response has been submitted. The Respondent also did not respond to the Complainant’s cease and desist letter or to the Center’s language of proceedings communication;

e) The websites resolved from the Disputed Domain Names are entirely in English which indicate that the Respondent is conversant and able to communicate in English; and

f) The Respondent has chosen not to participate in the proceeding and no benefit to the proceeding may be achieved by insisting that Chinese be the language of the proceeding.

6.2. Discussion

The Complainant is required to establish the following limbs of paragraph 4(a) of the Policy in order to succeed in the proceeding:

a) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in the Disputed Domain Names; and

c) the Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The trademark registrations establish that the Complainant has rights in the trademark MONCLER. The Panel finds that all the Disputed Domain Names incorporate the word MONCLER in its entirety. The additional words added as prefixes and suffixes to each of the Disputed Domain Names are descriptive words:

The addition of mere descriptive words does not assist to distinguish a domain name incorporating a trademark from the trademark. Even though <monclerjackadam.com>, <monclerjackorrea.com> and <monclersjassenonline.com> included words of indeterminate meaning, it was immediate apparent that each of these Disputed Domain Names entirely adopted the trademark MONCLER. The impression of the trademark MONCLER in these Disputed Domain Names were so strong that they could not be readily distinguished from the trademark MONCLER. The Panel finds all the Disputed Domain Names are confusingly similar to the trademark MONCLER.

In the circumstances, the Panel holds that the first limb of paragraph 4(a) is made out on the facts.

B. Rights or Legitimate Interests

The Complainant has confirmed that the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark MONCLER. There is no evidence before the Panel suggesting that the Respondent is commonly known by any of the Disputed Domain Names. There is also no evidence that the Respondent is using any of the Disputed Domain Names in connection with a bona fide offering of goods or services. On the contrary, it is notable that the websites which resolved from the Disputed Domain Names purport to further a commercial interest in the marketing of goods under the trademark MONCLER for which the evidence does not show any right or license for the Respondent to do. The websites appear to the Panel to convey that they are affiliated or endorsed by the Complainant. As for those Disputed Domain Names which fail to resolve or resolve to parking pages, the Panel can find no basis under the circumstances that the Respondent has any rights or legitimate interests in the Disputed Domain Names. The Panel is convinced that a prima facie case has been established that the Respondent has no rights or legitimate interests in any of the Disputed Domain Names. No Response having been filed, the prima facie case remains unassailed and the Panel holds that the second limb of paragraph 4(a) is made out on the facts.

C. Registered and Used in Bad Faith

The Panel accepts that the trademark MONCLER is well-known. It is inconceivable that the Respondent was not aware of the Complainant’s trademark rights. The Complainant’s trademark features prominently on the websites resolved from the Disputed Domain Names. The websites offered products which bore the Complainant’s trademark. The selection of over 40 domain names incorporating the trademark MONCLER cannot be coincidental or accidental. The websites resolved from the Disputed Domain Names <monclerdunjakkedanmark.com>, <monclerjackorrea.com>, <monclerjakkerudsalg.com>, <monclerpiumini-italia.com> and <monclersbelgique.com> were clearly intended for commercial gain. These websites were equipped with online shopping capabilities, prominently associating these with the trademark MONCLER and logos obviously and distinctly similar to the MONCLER Logo. The Panel is convinced that the incorporation of MONCLER in all the Disputed Domain Names was deliberate and motivated by a intention to associate with the trademark MONCLER.

Paragraph 4(b)(iv) of the Policy specifies the following situation as an example of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Based on the evidence before the Panel, the Respondent must have adopted <monclerdunjakkedanmark.com>, <monclerjackorrea.com>, <monclerjakkerudsalg.com>, <monclerpiumini-italia.com> and <monclersbelgique.com> to attract Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark MONCLER as to the source, sponsorship, affiliation, or endorsement of the websites or products on the websites in the manner described in paragraph 4(b)(iv). These Disputed Domain Names were therefore registered and are being used in bad faith.

In relation to the other Disputed Domain Names did not resolve to any website (or which previously did so but no longer), the Panel considers their registration and passive holding by the Respondent to be in the same vein as the opportunistic bad faith established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, the registration of multiple domain names incorporating the trademark MONCLER cannot be reasonably explained by other than the conclusion that the Respondent registered and is using all of the Disputed Domain Names in bad faith.

The charges of bad faith alleged against the Respondent and the allegations of purveying counterfeit products are serious. The failure of the Respondent to respond to these charges suggests that the Respondent is either not in a position to defend against these charges or is simply uninterested. Whether the Respondent’s products were indeed counterfeit is beyond the scope of these proceeding to determine. However, the lack of reaction from the Respondent is corroborative of the facts alleged and the conclusion of bad faith registration and use is further reinforced.

The Panel holds that the third limb of paragraph 4(a) is made out on the facts.

7. Decision

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

<billigemonclerdaunenjacke.com>

<doudounemonclergilet.com>

<monclerbilligkaufen.org>

<monclercollezione2011.com>

<monclerdoudouneparis.org>

<monclerdoudouneschweiz.com>

<monclerdownjacketssales.com>

<monclerdunjakkedanmark.com>

<monclerenparis.com>

<monclergiubbottiuomo.com>

<monclerhoodie.com>

<monclerjackadam.com>

<monclerjackenbillig.org>

<monclerjackenherrench.com>

<monclerjackenmunich.com>

<monclerjackenonlinede.com>

<monclerjackenosterreich.com>

<monclerjackenwien.org>

<monclerjacketsforcheapuk.com>

<monclerjacketshotsales.com>

<monclerjacketsoutletsuk.com>

<monclerjackorrea.com>

<monclerjakkerudsalg.com>

<moncleronlinefrance.com>

<monclerosterreich.com>

<monclerpiumini-italia.com>

<monclerprijzen.com>

<monclersalecenter.com>

<monclersalemoncleruk.com>

<monclersbelgique.com>

<monclersjackenherren.com>

<monclersjackenkaufen.com>

<monclersjakke.com>

<monclersjassenonline.com>

<monclerspiumini.com>

<monclerssaleonline.com>

<monclersschweiz.com>

<monclerukstockists.com>

<outletmoncleritalia.com>

<piuminimonclersoutlets.com>

<spacciomonclermilano.com>

<ventemonclerdoudoune.com>

be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: February 11, 2013