WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. Charly Green
Case No. D2014-0751
1. The Parties
The Complainant is Moncler S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Charly Green of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <monclerspacciopiumini.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2014. On May 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, 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.
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 May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2014.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 9, 2014. 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 in the business of luxury outerwear and sportswear and markets its products under the trademark MONCLER. Details of some of its trademark registrations for the MONCLER mark are:
1) International Trademark registration for MONCLER, No. 269298, registered on May 11, 1963, in classes 20, 22, 24, 25;
2) International Trademark registration for MONCLER No. 504072, registered on June 20, 1986, in classes 09, 18, 20, 25, 28;
3) International Trademark registration for MONCLER No. 978819, registered on June 25, 2007 in classes 03, 09, 14, 16, 18, 22, 24, 25 and 28;
4) United States trademark registration for MONCLER (word mark) No. 0803943, registered on February 15, 1965, in class 25; and
5) United States trademark registration for MONCLER (figurative trademark) registered on December 18, 1973 and renewed thereafter in class 25.
The Complainant owns about four hundred and fifty domain names containing its MONCLER trademark.
The Respondent registered the disputed domain name <monclerspacciopiumini.com> on December 30, 2013.
5. Parties’ Contentions
The Complainant states it was founded in 1952 in Grenoble by French entrepreneur Rene Ramillion and Andre Vincent. Its name is an abbreviation of Monestier- de- Clermont, an Alpine town near Grenoble. Initially manufacturing equipment for mountain expeditions such as tents, it started manufacturing garments for mountain climbing at the suggestion of French climber Lionel Terry. In 1968, the Complainant states it was the official supplier for the French Olympics team and in 1972 on request for light weight ski jackets by the French skiing team, its unique “Moncler” light weight down jackets were first manufactured.
The Complainant states it shifted to fashion in the 1980s when its products were recognized as luxury garments by magazines such as Elle and Madame Figaro due to its lightweight and being extremely warm. During the period 1980 to 1989, the Complainant states it tied up with designer Chantal Thomas and brought about a radical change to the look of its products using fur trim, satin, reversible fabrics and buttons instead of zippers. In 1999 it presented its first spring/summer collection and in 2002 launched a new couture collection with embroidery by Francois Lesage. Remo Ruffini an Italian entrepreneur and fashion enthusiast acquired the brand in 2003 and in 2006 held the first fashion collection for women. Presently MONCLER is a well-established luxury sportswear brand and the Complainant has above two hundred national and international trademark registrations for the mark in more than one hundred countries.
The Complainant states it operates a vast sales network and its worldwide sales by the end of 2013 were about Euro 580 million, of which Euro 87 million were in America, where the Respondent is based. Its products are marketed from two main distribution channels, retail mono brand stores directly operated by the Complainant and wholesale mono brand or multi-brand stores managed by third parties. It has extensively promoted and advertised its mark worldwide through television, other media channels and in international magazines such as Vogue, Vanity Fair and GQ. It also has a strong online presence in social networks such as Facebook, Twitter and YouTube. The Complainant organizes promotional events such as yearly and seasonal advertisement campaigns edited by reknown photographers such as Steven Meisel and Bruce Weber. Due to its extensive research and development work, marketing, sales, distribution channels and its impressive client base, the Complainant asserts its MONCLER trademark is well known worldwide. Its main website at “www.moncler.com” generates significant visits and is linked with its other domain names. Screenshots of its website show its products are offered for sale from the internal pages of its website.
The Complainant has submitted screenshots of the website linked to the disputed domain name and points out that no company name or contact information is provided by the Respondent. Further, it has no disclaimer and gives customers an impression of being one of the Complainant’s websites. It displays the MONCLER trademark and offers the Complainant’s products for sale at lower prices. The Complainant gives an example of the counterfeit goods being sold at lower prices, where the Respondent’s price for a men’s jacket called “ALAIN” is Euro 207, while the Complainant’s price for the original “ALAIN” jacket is Euro 690.
The Complainant submits the disputed domain name is confusingly similar to its mark as it wholly uses the mark. The use of descriptive terms “spaccio” and “piumini” with its mark would confuse consumers, argues the Complainant, as the English meaning for the terms “shop” or “outlet” and “down jacket” refers to its products.
The Complainant further submits that the Respondent lacks any rights or legitimate interests in the disputed domain name, as the Respondent is not a licensee or authorized agent of the Complainant and is not known by the disputed domain name. There are no demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services but the Respondent uses it for selling counterfeit goods. Arguing that no rights or legitimate interest can exist for the sale of counterfeit goods, as such use is clearly not bona fide, fair or noncommercial use of the disputed domain name. Knowledge of the Complainant’s trademark is demonstrated by the website featuring Complainant’s products bearing its trademark.
The Complainant states the disputed domain name was registered and is being used in bad faith. The linked website offers what appear to be spurious goods, but look identical to goods offered by the Complainant under its MONCLER trademark. The Complainant states that the Respondent is misleading customers as to the source, because the Respondent displays without authorization the Complainant’s MONCLER mark. Further, as the Respondent has not responded to any communication sent by Complainant it indicates the Respondent’s bad faith. The Complainant therefore requests for transfer of the dispute domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy under paragraph 4(a) stipulates that the Complainant ought to establish three requisite elements in these proceedings in order to obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name is identical or confusingly similar to a trademark or 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 was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first requirement of paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Complainant has provided details of the background of its adoption and use of the MONCLER trademark. It has also provided evidence of its extensive promotion and advertising of the trademark worldwide. More significantly, the Complainant has filed evidence of its trademark registrations in many jurisdictions. In this context, the Panel notes the earliest registered MONCLER mark dates back to the year 1963, thereby establishing its use of the mark for over fifty years. Based on the material on record, the Panel finds the Complainant has clearly established its rights in the MONCLER mark. The Panel also notes that several previous UDRP Panels have found the Complainant has strong rights in the MONCLER mark. See Moncler S.R.L v. Malingtrade, WIPO Case No. D2011-0548; Moncler S.R.L v. hudietrade hudietrade hudietrade, WIPO Case No. D2011-0458; Moncler S.R.L v. Sandra Brown, WIPO Case No. D2010-1674; Moncler S.R.L v. World Top Sales Inc. /WTS, WIPO Case No. D2012-2537; Moncler S.R.L v. wuyuansheng, WIPO Case No. D2010-1670; Moncler S.R.L v. Daniel Park, WIPO Case No. D2010-0488; Moncler S.R.L v. rui yun, sam wu; WIPO Case No. D2010-1679, Moncler S.R.L v. Shuangying Chen, WIPO Case No. D2011-0416.
The disputed domain name in the present case consists of the entire trademark MONCLER with two additional generic words “spaccio” and “piumini” in Italian. The Complainant has argued that the words when translated to English, “spaccio” means “shop” or “outlet” and “piumini” means ”down jacket”. Both words according to the Complainant would lead to customer recall of its mark, as the word “spaccio” is likely to make customers recall the Complainant’s online outlet and “piumini” or down jacket describes the Complainant’s products.
It is well established that the addition of generic or descriptive terms does not exclude confusing similarity with the trademark, particularly when the words used are describing the goods and services with which the mark is used. See for instance U-Haul International Inc.. v. Affordable Web Productions, WIPO Case No. D2003-0511 (pertaining to domain names such as <uhaulmovingtrucks.com>, <uhaultrailer.com> and <uhaultruckmoving.com>). If the generic terms used with the trademark are likely to have a high level of association or exacerbate the recall in the minds of customers, UDRP panels would be likely to find a disputed domain name confusingly similar with the trademark. See Moncler S.R.L v. Malingtrade [supra] or Moncler S.R.L v. Zhongyuan Tec, WIPO Case No. D2011-0471 (where the use of words such as “store”, “outlet”, “shop”, “coat” or “jacket” with the trademark MONCLER has been found to be confusingly similar to the MONCLER mark).
The Complainant in the present case has provided evidence of its mark being associated and used in commerce with down jackets and being well known in this business. The Complainant has also provided evidence of its online shop or outlet through its website. The use of the Italian words with the trademark, in the context of the present case where the trademark owner is primarily an Italian based entity, and where the Complainant has established that its MONCLER trademark is distinctive of its goods, renders the disputed domain name confusingly similar to the mark. Therefore the Panel determines the generic Italian words “spaccio” and “piumini” used by the Respondent along with the MONCLER mark makes the disputed domain name confusingly similar to the mark.
The Panel finds that the Complainant has successfully established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy under paragraph 4(c), provides for circumstances by which a respondent may demonstrate rights or legitimate interests in the disputed domain name, these are:
(i) Before any notice 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) has been commonly known by the domain name, even if no trademark or service mark rights are acquired; or
(iii) The respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain or misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Panel finds there is no evidence on record that shows the Respondent is commonly known by the disputed domain name or has used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use purposes. Further, the Complainant has clearly stated that the Respondent has no permission or license to use its MONCLER trademark.
The Complainant has provided evidence of the Respondent offering for sale, what appears to be spurious and counterfeit goods from the website linked to the disputed domain name. Such evidence includes screen shots of the Respondent’s website offering similar goods as those marketed by the Complainant but at prices lower than the price for the original products. Furthermore, the record shows that the Respondent makes unauthorized use of the Complainant’s trademark on its website.
The Respondent has not filed a response or made any attempt to rebut the allegations and submissions made by the Complainant. The reasonable prima facie inference that can be drawn from the evidence presented is that the Respondent makes unauthorized use of the Complainant’s trademark to sell what appear to be duplicate products of the Complainant at lower prices. Such use of the disputed domain name by the Respondent under the circumstances would not be considered bona fide use or giving the Respondent any rights or legitimate interests in the disputed domain name. In the absence of any valid defence from the Respondent, and given the facts and circumstances and evidence adduced by the Complainant, the Panel finds the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which the Respondent has not rebutted.
The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant has proved its prior rights in the MONCLER mark due to continuous and extensive use of the mark for over fifty years. The circumstances described here show the Respondent ought to have known of the Complainant’s trademark and that by registering the disputed domain name Internet users searching for the Complainant’s websites and goods sold under the Complainant’s mark would be confused by the domain name bearing the Complainant’s trademark. Such conduct on the part of the Respondent demonstrates that the Respondent has registered the disputed domain name in bad faith and domain name was not acquired with any bona fide intent or used in a bona fide manner. See for instance Six Continental Hotels, Inc. v. Domain Admin – Privacy Protection Services Inc d/b/a Privacy Protect.org/ Raajganesh, RKPlanet, WIPO Case No. D2014-0462 and Moncler S.R.L v.Zhongyuan Tec, [supra](where bad faith was found when the respondent failed to use the disputed domain name in a bona fide manner or with a bona fide intent to offer goods and services distinct from those of the Complainant and was found to have registered and used the domain name in bad faith).
The Complainant has urged that the disputed domain name is being used in bad faith on the grounds that the Respondent has used the Complainant’s mark to confuse and mislead consumers. The Complainant has submitted screen shots of the Respondent’s website as evidence to show that the Respondent offers for sale products akin to the Complainant’s products at a lower price and thereby intentionally attracting customers based on the trademark of the Complainant. Given the circumstances in the present case, the Panel finds the manner in which the Respondent is using the disputed domain name creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and as such is considered bad faith registration and use of the disputed domain name as envisaged under paragraph 4(b)(iv) of the Policy. The Panel also draws additional inference of bad faith from the Respondent’s failure to respond in these proceedings and to the Complainant’s communications.
The Panel finds the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. The Complainant has satisfied the third requirement 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 name <monclerspacciopiumini.com> be transferred to the Complainant.
Date: June 23, 2014