WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.r.l. v. linhuiming
Case No. D2011-0172
1. The Parties
The Complainant is Moncler S.r.l. of Milano, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is linhuiming of Nanjing, Jiangsu Province, the People’s Republic of China.
2. The Domain Names and Registrars
The disputed domain name <monclergiacche.com> is registered with Xin Net Technology Corp. The disputed domain names <monclerjacketss.org>, <monclerparis.org> and <moncler2011-outlet.com> are registered with HiChina Zhicheng Technology Ltd. The disputed domain names <moncleronliner.com>,
<moncleronlineshopp.com>, <monclersalet.com> and <monclersoutlets.net> are registered with
Bizcn.com, Inc (all eight together “the Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1, 2011, the Center transmitted by email to Xin Net Technology Corp., HiChina Zhicheng Technology Ltd. and Bizcn.com, Inc. a request for registrar verification in connection with the Domain Names. On February 9, 2011, February 10, 2011 and February 14, 2011, HiChina Zhicheng Technology Ltd, Xin Net Technology Corp. and Bizcn.com, Inc. (together “the Registrars”) transmitted by email to the Center respectively their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On February 14, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant requested English be the language of the proceedings. The Respondent did not comment on the language of the proceeding 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 February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on March 17, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrars, the language of the three registration agreements in relation to the Domain Names is Chinese.
The Complainant’s reasons for requesting the language of the proceedings to be English as set out in its email to the Center of February 14, 2011 are as follows: neither the Complainant nor its legal representatives have Chinese speaking personnel in their employ; the websites connected to the Domain Names (“the Websites”) are in English, French and Italian showing that the Respondent is familiar with European languages and English is the international business language rather than Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceedings and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English and the Respondent did not comment on the language of the proceedings by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
4. Factual Background
The Complainant is an Italian company specialising in the field of sportswear and sports bags under the MONCLER trade mark. The Complainant was originally founded in France in 1952. It has over 2,000 shops worldwide including Italy, France, Germany, China, Japan and the United States of America. It has an annual turnover of 70 million Euros. The Complainant has trade registrations for the MONCLER trade mark globally with the earliest trade mark (International trade mark registration No. 269298) dating back to 1963. Other trade mark registrations include United States trade mark registration No.803943, CTM registration No. 5796594 and Chinese trade mark registration No. 6084721.
The Domain Names were registered in November and December 2010. At the time of the filing of the Complaint, all the Domain Names, except for <monclergiacche.com> which was inactive, were connected to websites offering for sale and selling Moncler products which have been identified as counterfeit by the Complainant. The Panel notes that <monclergiacche.com> is now connected to a website in English and Italian that offers for sale Moncler products at discounted prices just like the other Websites.
5. Parties’ Contentions
The Complainant contends that it is has registered rights in the trade mark MONCLER. MONCLER is a
well-known trade mark because of the Complainant’s long and extensive use of the mark for more than 50 years. The Domain Names are identical or confusingly similar to the MONCLER trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights to the trade mark MONCLER and that MONCLER is a well-known trade mark.
The Complainant’s registered trade mark, MONCLER has been adopted in its entirety and is the dominant portion of the Domain Names. It is now well established that the addition of descriptive, generic or geographical terms to a trade mark in a domain name does nothing to minimise the risk of confusion in order to overcome a complainant’s allegation that a domain name is confusingly similar to the trade mark. This also applies to misspellings of such descriptive and generic terms as is the case here where the following have been added to the Complainant’s MONCLER trade mark - “giacche” (which is a misspelling of giacca or giacchetta which means jacket in Italian), “jacketss”, “onliner”, “onlineshopp”, “salet”, “outlet(s)”, “2011” and the geographical term “Paris”. These terms all relate in some manner to the products and business of the Complainant and it is clearly for this reason that the Respondent has registered the Domain Names. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”, “.org” and “.net”.
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not associated in any way to the Complainant or its distribution network; it has never been commonly known in the normal course of business by the name Moncler and there is no evidence of a bona fide or other legitimate fair use by the Respondent. In fact, quite the opposite, the Websites are commercial sites selling allegedly counterfeit products.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known trade mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s trade mark in its entirety and the Respondent registered eight Domain Names containing the MONCLER trade mark and sells allegedly counterfeit Moncler products on the Websites are, in the Panel’s view, evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. At the time of filing of the Complaint, except for <monclergiacche.com>, all the other seven Domain Names were connected to Websites offering Moncler products which the Complainant has upon examination concluded are counterfeit. As noted in paragraph 4 above, <monclergiacche.com> is now connected to a website that offers for sale Moncler products at discounted prices just like the other Websites. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
As such, taking into account all the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <monclergiacche.com>, <monclerjacketss.org>, <monclerparis.org>, <moncler2011-outlet.com>, <moncleronliner.com>, <moncleronlineshopp.com>, <monclersalet.com> and <monclersoutlets.net> be transferred to the Complainant.
Dated: March 30, 2011