WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. Li Yuejuan, Maoyuejuan
Case No. D2017-0107
1. The Parties
The Complainant is Moncler S.p.A. of Milano, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is Li Yuejuan, Maoyuejuan of Shaoguan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <monclerdownjacket.com> (the "Domain Name") 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 January 19, 2017. On January 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 23, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 1, 2017.
The Center appointed David Williams as the sole panelist in this matter on March 8, 2017. 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 an Italian company, Moncler S.p.A. The Complainant's trademark is MONCLER. The Complainant has multiple registrations for its trademark, MONCLER, the first of which dates back to 1963. On the record, the Complainant has provided evidence for International Reg. No. 978819 for MONCLER, registered on June 25, 2007 and designating, among others, China. On August 1, 2014, the Respondent registered the Domain Name. The Domain Name is linked to a website offering for sale products bearing the MONCLER mark.
The Respondent has not made contact with the Complainant. The Respondent takes no part in these proceedings.
5. Parties' Contentions
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it is a leading company in fashion sportswear. Part of its product line includes down jackets, for which it is famous. The Complainant has multiple registrations for MONCLER in China. The Complainant alleges that the Respondent's Domain Name is confusingly similar because it "consists of the well-known MONCLER mark combined with the generic term 'down jacket'." It argues that the addition of "down jacket" creates confusion because it "closely relates to the Complainant's activity, as the 'Moncler down jacket' is one of [Complainant's] main and most renowned garments".
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. First, the Complainant has not authorized the Respondent to use its mark, or to register and use the Domain Name. Secondly, the Registrant does not own a trademark including the word "moncler". Thirdly, the Respondent is not commonly known by the Domain Name. Finally, the Domain Name leads to a website offering goods bearing the MONCLER trademark.
(c) The Domain Name was registered and is being used in bad faith.
The Complainant submits that registration of a domain name that is confusingly similar to its trademark is evidence of bad faith as the Domain Name leads to a website "consisting of a trademark followed by a term that consumers may very well associate with the Complainant's goods and activity". The well-known nature of the Complainant's product, coupled with the particular way in which the Respondent has used the trademark, therefore amounts to bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
(a) "The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used by the Respondent in bad faith."
As a preliminary point, the Panel notes that the Respondent's failure to participate does not automatically result in a decision in favor of the Complainant. As noted above, the Complainant must still satisfy all three elements under the Policy. However, if the Respondent fails to provide justification for its non-participation, the Panel is entitled to draw adverse inferences against the Respondent (Rules' paragraph 14(b); Educational Tertiary Service v. TOEFL, WIPO Case No. D2000-0044). In particular, if the Respondent fails to submit a response, the Panel can accept the Complainant's allegations as true (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
There are no exceptional circumstances justifying the Respondent's failure to reply to the Complainant's submissions. The Panel will therefore assess whether the Complainant has met the requirements under the Policy based on the facts as stated by the Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy contains two elements. First, the Complainant must have rights to the relevant trademark or service mark. Secondly, the Respondent's Domain Name must be "identical or confusingly similar" to the trademark or the service mark in which the Complainant has rights.
The first consideration is whether the Complainant has rights to the trademark MONCLER. The Complainant has multiple registrations for MONCLER around the world, and in China, including the following: Chinese National Reg. No. 6084721 (March 28, 2010) and International Reg. No. 978819 (June 25, 2007). The Panel is satisfied that the Complainant has rights to the trademark MONCLER.
The UDRP panels articulated the test for "confusing similarity" as typically involving a straightforward comparison of the trademark and the alphanumeric string in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. "Confusing similarity" will often result where the respondent's domain name wholly incorporates or reproduces a principal component of the complaint's trademark (see Eauto, LLC v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, WIPO Case No. D2000-0047; Magnum Piercing Inc v the Mudjackers and Garwood S Wilson Sr, WIPO Case No. D2000-1525; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110; Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215).
The Respondent's Domain Name uses the Complainant's trademark, followed by the term "downjacket". Although the Complainant's trademark and the Respondent's Domain Name are not identical, they are nevertheless confusingly similar as the Domain Name fully incorporates the Complainant's mark.
The Respondent's inclusion of the term "downjacket" does little in reality to distinguish the Respondent's Domain Name from the Complainant's trademark – it is a descriptive term that is closely associated with the Complainant's business and products (Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; Moncler S.r.l v. hudietrade, hudietrade hudietrade, WIPO Case No. D2011-0458). The addition of "downjacket" thus does not avoid a finding of confusing similarity.
In addition, the Respondent's Domain Name is dominated by the term "moncler". It incorporates the Complainant's trademark in its entirety. On that basis, those familiar with the Complainant's trademark might assume that there is an affiliation between the Respondent and the Complainant (see Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493).
The Panel finds that the Domain Name is confusingly similar to the MONCLER trademark. The Complainant has met the first element of the Policy.
B. Rights or Legitimate Interests
Without more, the registration of a domain name does not give rise to rights or legitimate interests in that domain name (see Gold Medal Travel Group Plc v. Damir Kruzicevic, WIPO Case No. D2007-1902). Paragraph 4(c) of the Policy provides the circumstances in which a respondent may demonstrate rights or legitimate interests in a domain name. The complainant bears the burden of proof in relation to the three elements of paragraph 4(a) of the Policy. However, once the complainant has shown a prima facie case under 4(c) of the Policy, the respondent has the practical burden of adducing evidence of a right or legitimate interest in a domain name (see Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093).
Paragraph 4(c)(i) of the Policy refers to rights or legitimate interests where there is a bona fide offering of goods or services, while paragraph 4(c)(iii) of the Policy provides the respondent to show its rights or legitimate interests if it uses the trademark noncommercially or fairly without intention for commercial gain.
The Domain Name resolves to a webpage that purports to sell MONCLER down jackets at a discounted retail price. It therefore appears that the Domain Name is being used for the purpose of misleading consumers seeking MONCLER products at a lower price. The Respondent's use of the Domain Name is not a bona fide offering of goods and services under paragraph 4(c)(i), or legitimate noncommercial use of the Domain Name for the purposes of paragraph 4(c)(iii) (Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758; Moncler S.r.l v. hudietrade, hudietrade hudietrade, WIPO Case No. D2011-0458).
The Complainant alleges that it did not authorize the use and registration of the Domain Name. In addition, the Respondent was not in a business relationship with the Complainant. Therefore, there is no evidence suggesting that the Respondent was commonly known by the Domain Name for the purpose of paragraph 4(c)(ii) of the Policy.
The Respondent has not challenged the Complainant's assertions. As a result, the Complainant has made an unrebutted prima facie case that the Respondent does not have rights or a legitimate interests in the Domain Name. The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy is framed in both present and past tense. There are two elements to 4(a)(iii): (a) the registration of the disputed domain name must have been undertaken in bad faith; and (b) the respondent must use the domain name in bad faith (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).
Paragraph 4(b) of the Policy delineates situations where the registration and use of a domain name will involve bad faith. Paragraphs 4(b)(iii) and (iv) are relevant for present purposes:
(a) "you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(b) 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."
The first consideration is whether the Respondent registered the Domain Name in bad faith. The Complainant contends that the famous nature of its trademark prevents the Respondent from claiming that it was unaware of the Complainant's rights. In Jupiters Limits v. Aaron Hall, WIPO Case No. D2000-0574, the well-known nature of the Complainant's name, coupled with the fact that the Respondent was located in the same mailing address as the Complainant's business, meant that it was "inevitable that the Respondent registered the domain name in full knowledge of the Complainant's rights and interests." The Complainant has been marketing and promoting its business since 1952. The Complainant first registered MONCLER fifty-four years ago, in 1963. The Complainant provides goods to a large consumer base including in China. Given that the Respondent offers for sale products purported to be the Complaint's products, the Respondent's knowledge of the Complainant's trademark at the time of registration is obvious. This finding, together with the Respondent's lack of rights or legitimate interests in the Domain Name, leads the Panel to conclude that the Domain Name has been registered in bad faith (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Centurion v Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The second consideration is whether the Respondent is using the Domain Name in bad faith. The Respondent does not have a connection with the Complainant's products. The Respondent's Domain Name purports to sell products associated with the Complainant's business at a discounted rate.
The pictures of the products on the webpage do not conform to the Complainant's standards of quality. As a result, the Respondent's conduct has the potential to disrupt the Complainant's business by causing loss of sales, loss of ability to transact with consumers, and commercial detriment for the purposes of paragraph 4(b)(iv) of the Policy (Moncler S.r.l v. hudietrade, hudietrade hudietrade, WIPO Case No. D2011-0458). In addition, the Panel accepts that consumers are induced to believe that goods are original, when they are not.
The cumulative circumstances of the case lead the Panel to the conclusion that the Respondent has registered and used the Domain Name in bad faith. The third criterion is met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <monclerdownjacket.com>, be transferred to the Complainant.
Sir David AR Williams KNZM, QC
Date: March 22, 2017