WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.P.A. v. Andrew Lee, MX & C CO., LTD
Case No. D2014-0756
1. The Parties
The Complainant is Moncler S.P.A. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is Andrew Lee, MX & C CO., LTD of Selden, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <jackenmoncler.com>, <monclermexom.com>, <monclersupplier.com>, <monclertrend.com> and <monclervetement.com> are registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2014. On May 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 13, 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 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2014.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 18, 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, 1966, in class 25, and
5) United States trademark registration for MONCLER (figurative trademark) No. 0975069 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 names <jackenmoncler.com>, <monclermexom.com>, <monclersupplier.com>, <monclertrend.com> and <monclervetement.com> on October 24, 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. Rene Ramillion initially manufactured equipment for mountain expeditions such as tents, and started manufacturing garments for mountain climbing at the suggestion of French climber Lionel Terray. In 1968, the Complainant states it was the official supplier for the French Olympics team and in 1972 on request for lightweight ski products by the French skiing team, its unique Moncler lightweight 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. During the period 1980 to 1989, the Complainant states it tied up with designer Chantal Thomas and brought about a radical change to 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. The Complainant states it has over two hundred national and international trademark registrations for its well-established luxury sportswear brand MONCLER in more than one hundred countries.
The Complainant states it operates a vast sales network and its worldwide sales by the end of 2013 was about EUR 580 million, of which EUR 87 million was in America, where the Respondent is based. Its products are marketed from two main distribution channels, retail monobrand stores directly operated by the Complainant and wholesale monobrand 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 campaigns edited by well-known 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 a well-known trademark 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 names and points out that the Respondent has provided no company name or contact information on the websites. Further, as no disclaimers are posted, and the websites display the MONCLER trademark it gives customers an impression of being one of the Complainant's websites. Further it also displays images from the Complainant's advertisement campaigns and offers the Complainant's products at discounted prices.
The Complainant submits the disputed domain names are confusingly similar to its mark as they wholly use the mark. The use of the descriptive terms "supplier", "jacken" ("jackets" in German), "vetement" ("clothing" in French), "mexom" ("fur" in Russian), and "trend" with its mark would not affect confusing similarity with its mark as the terms refer to the Complainant's products or the quality of its products.
The Complainant further submits that the Respondent lacks rights or legitimate interests in the disputed domain names, as the Respondent is not a licensee or authorized agent of the Complainant and is not known by the disputed domain names. There are no demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services but the Respondent uses them for selling counterfeit goods. Arguing that no rights or legitimate interests can exist for the sale of counterfeit goods, and that such use is clearly not bona fide use, fair use or noncommercial use of the disputed domain names. Knowledge of the Complainant's trademark is demonstrated by the website featuring the Complainant's products bearing its trademark.
The Complainant states the disputed domain names were registered and are being used in bad faith. The Respondent offers goods under the Complainant's trademark, that appear to be spurious. 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, the Respondent has engaged in a pattern of conduct since at least five such confusingly similar domain names are registered with the trademark of the Complainant. Further, incomplete or inaccurate contact information has been given, which indicates the Respondent's bad faith. The Complainant therefore requests for transfer of the dispute domain names.
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 names.
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names were registered and are 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 names are 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. Manlingtrade, 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 Sale Inc / WTS, WIPO Case No. D2012-2537, Moncler S.r.l. v. wuyuansheng, WIPO Case No. D2010-1670, LG Corporation v. Domains by Proxy, Inc. / satayu basu, 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 names in the present case consist of the entire trademark MONCLER with additional generic words: "supplier", "jacken" ("jackets" in German), "vetement" ("clothing" in French), "mexom" ("fur" in Russian), and "trend". The words used in association with its mark, according to the Complainant, would lead to customer confusion as the words describe the Complainant's products or the quality of its products.
It is well established that the addition of generic or descriptive terms does not exclude the likelihood of confusion with the trademark, particularly when the words used describe the goods or its quality. See for instance U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511 (pertaining to domain names such as <uhaulmovingtruck.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 and Moncler S.r.l. v. Manlingtrade, supra or Moncler S.r.l. v. Zhongyuan Tec, WIPO Case No. D2011- 0471, (where words such as "store", "outlet", "shop", "coat" or "jacket" with the trademark MONCLER were 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 for over fifty years. The Complainant has also provided evidence of its online shop or website from where it sells products to its customers. The use of the words with the trademark, in the context of the present case where the Complainant has established that its MONCLER trademark is distinctive of its goods, renders the disputed domain names confusingly similar to the mark. Therefore the Panel determines the generic terms "supplier", "jacken" ("jackets" in German), "vetement" ("clothing" in French), "mexom" ("fur" in Russian), and "trend" used by the Respondent along with the MONCLER mark renders the disputed domain names 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 names. The Policy under paragraph 4(c), provides for circumstances by which a respondent may demonstrate rights or legitimate interests in a 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 names or has used the disputed domain names in connection with a bona fide offering of goods or services. The Respondent does not appear to be using the disputed domain names 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 websites linked to the disputed domain names. Such evidence includes screen shots of the Respondent's websites offering similar goods as those marketed by the Complainant but at prices lower than the price for the Complainant's original products. Furthermore, the evidence shows that the Respondent makes unauthorized use of the Complainant's trademark on its websites and also uses other promotional material associated with the Complainant's campaigns.
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 names by the Respondent under the circumstances discussed cannot be considered bona fide use that gives the Respondent any rights or legitimate interests in the disputed domain names. 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 names.
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 names were registered in bad faith and are being used in bad faith.
The Complainant has proved its prior rights in the MONCLER mark by establishing its continuous and extensive use of the mark for over fifty years. The circumstances described here show the Respondent knew or ought to have known of the Complainant's trademark, as the Respondent has registered five domain names bearing the MONCLER trademark. By registering the disputed domain names, Internet users searching for the Complainant's websites and goods sold under the Complainant's mark would be confused by the disputed domain names bearing the Complainant's trademark. Such conduct on the part of the Respondent demonstrates that the Respondent has registered the disputed domain names in bad faith and the disputed domain names were not acquired with any bona fide intent or for being used in a bona fide manner. See for instance Six Continents Hotels, Inc. v. Domain Admin - Privacy Protection Service Inc d/b/a PrivacyProtect.org / Raajganesh, RKPlanet, WIPO Case No. D2014-0462 and see 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 names are 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 websites as evidence to show that the Respondent offers for sale products akin to the Complainant's products at lower or discounted prices and thereby intentionally attracts 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 names creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names and as such is considered bad faith registration and use of the disputed domain names 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 provide accurate contact information to the Registrar and the Respondent has not responded in these proceedings or to any communications sent by the Complainant.
Based on the evidence on record and the circumstances discussed, it is found that the Respondent has registered the disputed domain names in bad faith and is using the disputed domain names 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 names <jackenmoncler.com>, <monclermexom.com>, <monclersupplier.com>, <monclertrend.com>, <monclervetement.com> be transferred to the Complainant.
Date: July 2, 2014