WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. guoqiang zhang
Case No. D2015-1206
1. The Parties
The Complainant is Moncler S.p.A. of Milan, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is guoqiang zhang of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <italiamoncleroutlet.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2015. On July 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
On July 17, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On July 20, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not comment within 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, both in English and Chinese, of the Complaint, and the proceeding commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on August 26, 2015. 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 leading Italian company in the field of fashion sportswear. It was founded in 1952 and is known for its mountain-climbing and skiing apparel and equipment. The Complainant supplied technical equipment to the Italian K2 expedition in 1954 and the French Makalu expedition in 1955; and was the official supplier of the French alpine ski team in the 1968 winter Olympics.
The Complainant has over the years expanded its scope of products and the MONCLER trade mark has since become known as a luxury fashion brand. The Complainant currently has 184 boutiques worldwide, 13 of which are in Italy and 16 in China. In 2013, the Complainant was listed on the Italian stock exchange. Its total revenue for the year amounted to 694 million Euros, with around 64.5 million Euros generated in China.
The Complainant owns more than 500 national, Community and International trademark registrations across more than 100 jurisdictions (including in China) which comprise the word MONCLER. The earliest registration dates back to 1963.
The Complainant owns more than 1,000 domain name registrations comprising the MONCLER trade mark, including <moncler.com> and <monclergroup.com>.
The disputed domain name was registered on October 18, 2013.
A signed declaration was provided by the Complainant’s brand manager confirming that the goods sold by the Respondent from the website to which the disputed domain name resolved were counterfeit.
5. Parties’ Contentions
(1) The Complainant asserts that its MONCLER trade mark is a well-known mark due to the Complainant’s long-standing use and huge promotional and advertising investments (in the region of 15 million Euros in 2014). The disputed domain name is confusingly similar to the Complainant’s MONCLER trade mark since it consists of the said trade mark and two other elements which are of a non-distinctive character, i.e., the words “italia” and “outlet”. The word “italia” refers to the Complainant’s territory of origin and the territory of origin of the consumers to which the Respondent’s website was redirected (the website had been in the Italian language). The term “outlet” refers to the kind of activity performed through the website, namely a store selling the goods of a particular manufacturer.
(2) The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name for these reasons: (i) the Respondent is not known by the name Moncler nor by the name “italiamoncleroutlet.com”; (ii) the Complainant has not authorized the Respondent to use the well-known MONCLER mark as part of a domain name; and (iii) the Respondent is not an authorized dealer, licensee or distributor of the Complainant.
Furthermore, until several days before the time of the filing of the Complainant, the Respondent was illegitimately using the disputed domain name for the purposes of selling counterfeit products, as verified by the Complainant’s brand manager. The Respondent’s website also reproduced photographs from the Complainant’s official website. Several letters were sent to the Respondent and Internet Assigned Numbers Authority (IANA) by the Complainant’s representatives regarding the illegitimate website content. The Complainant noted that subsequent thereto, the Respondent’s website was temporarily (and periodically) removed but later reappeared.
The use of a third party’s well-known trade mark in the disputed domain name to attract potential consumers to the Respondent’s website is not “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue” (paragraph 4(c)(iii) of the Policy).
(3) The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent cannot ignore the fact that the Complainant’s MONCLER trade mark is very well known. The content of the Respondent’s website shows that the Respondent was aware of the existence of the MONCLER trade mark. The offer for sale of counterfeit products bearing the MONCLER mark is not use in good faith. The Respondent has therefore registered and used the disputed domain name to intentionally attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location (paragraph 4(b)(iv) of the Policy). The subsequent unavailability of the Respondent’s website does not change the circumstances of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding.”
The language of the Registration Agreement is Chinese but the Complainant has requested that English be adopted as the language of the proceeding. The reasons given were the following:
(i) The Complainant and its representatives do not understand Chinese and it would therefore be quite burdensome and expensive for the Complainant to have to translate the Complaint and annexes into Chinese. Requiring the translations to be done would delay the proceeding.
(ii) The Respondent operated its website in Italian and not Chinese, clearly with the intention to create the impression that its website is one of the Complainant’s websites. If the Respondent is capable of understanding and running a website in Italian, it must be capable of understanding English which is the most widely-used language in international business and commercial activities.
The Respondent did not respond on the issue of the language of the proceeding.
In the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel determines that English shall be the language of the administrative proceeding. Paragraph 10(c) of the Rules requires panels to “ensure that the administrative proceeding takes place with due expedition”. With these considerations in mind and in light of what the Complainant has submitted on the issue, the Panel is of the view that it would be appropriate for English to be the language of the proceeding. If the Complainant were required to submit all the documents in Chinese by having them translated, the costs would be prohibitive and unduly delay the proceeding. The Panel further notes that the disputed domain name incorporates the English term “outlet” which refers to a point from which goods are sold/a retail outlet. This reflects that the Respondent must have some understanding of the English language.
The Respondent was given the opportunity to respond on the issue of the language of the proceeding but did not. Furthermore, the Panel notes that all of the Center’s communications to the parties have been transmitted in both English and Chinese.
In the circumstances and, with a view to ensuring due expedition in the progress of the proceeding, the Panel accordingly determines that English should be adopted in this case.
B. Identical or Confusingly Similar
The Complainant has established it has rights in the MONCLER trade mark.
The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s MONCLER trade mark as this mark is clearly identifiable within the disputed domain name. Furthermore, it is a well-established principle that the addition of generic or descriptive terms to a trade mark in a domain name is generally regarded as being insufficient to remove the confusing similarity to the trade mark. In the context of the Complainant’s country of origin and nature of its business, the Panel is of the view that the Respondent’s addition of the words “Italia” (Italian for “Italy”) and “outlet” in the disputed domain name further adds to the confusion with the Complainant’s MONCLER trade mark.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been established by the Complainant.
C. Rights or Legitimate Interests
The Panel is persuaded by the evidence and statements submitted by the Complainant that a prima facie case has been established that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not receive any authorization or licence to use the well-known MONCLER mark and there is no evidence that it has been commonly known by the name “Moncler” or the disputed domain name.
The Respondent’s copying of portions of the Complainant’s website and sale of counterfeit Moncler products are circumstances which reflect a clear lack of rights or legitimate interests in the disputed domain name. A further negative inference is drawn from the Respondent’s failure to respond to the Complainant’s cease and desist communication and to file a response in this administrative proceeding.
In the absence of any contrary evidence from the Respondent to contradict the case established by the Complainant, the Panel accordingly finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been established by the Complainant.
D. Registered and Used in Bad Faith
The Complainant has provided testimony of the counterfeit nature of the products that were sold by the Respondent from its website at the disputed domain name <italiamoncleroutlet.com>. This as well as the fact that the MONCLER mark is well known and the Respondent sought to create a false impression that its website is of Italian origin and connected to the Complainant and/or endorsed by the Complainant are circumstances which fall squarely within paragraph 4(b)(iv) of the Policy.
This is a clear case of cybersquatting and illegitimate use of a third party’s trade mark both in a domain name and in the content of the related website. The Panel determines that registration and use in bad faith are found in this case.
The Panel therefore holds that paragraph 4(a)(iii) of the Policy has been established by the Complainant.
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 <italiamoncleroutlet.com> be transferred to the Complainant.
Date: August 30, 2015