WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H & M Hennes & Mauritz AB v. Jordan Feramisco
Case No. D2017-1460
1. The Parties
Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Jordan Feramisco of Sherman oaks, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <monkidiscount.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2017. On July 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2017.
The Center appointed Leon Trakman as the sole panelist in this matter on August 29, 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
Complainant is a widely known fashion brand with a global market, has six brands: H&M, COS, Monki, &Other Stories, Weekday and Cheap Monday. It currently has 4,200 stores, in 64 markets and 23 H&M online markets, Complainant is one of the world’s leading fashion companies. Its first Monki store opened 2006 in the Swedish city of Gothenburg. It opened its 100th Monki store in Shanghai in 2015. In the United States, its Monki brand is sold through various retailers.
Complainant is the owner of the registered trademark MONKI as a word mark in several jurisdictions including in the United States where Respondent resides. The mark consists of “monki” as a word mark and as a figurative mark. Complainant provides a list of registered trademarks including in the United States, commencing in 2008 (registration number 3501963 on September 16, 2008) and continuing to 2013 (registration number 4417256 on October 15, 2013). Complainant also provides evidence that it has registered several domain names under Top-Level Domains containing the term “monki”, such as <monki.com> (1998), <monki.clothing> (2014) and <monki.discount> (2015). Complainant provides evidence that it uses the domain names to connect to a website through which it informs potential customers about its MONKI mark and products.
Respondent is Jordan Feramisco of Sherman oaks, California, United States.
Respondent registered the disputed domain name <monkidiscount.com> with PDR Ltd. d/b/a PublicDomainRegistry.com on December 29, 2016. Complainant provides evidence that the disputed domain name directs Internet users to a website which sells fashion ware not being products of Complainant, or produced under any of its trademarks or domain names.
5. Parties’ Contentions
Complainant alleges, in accordance with the Rules that: the disputed domain name is confusingly similar to the trademark of Complainant; Respondent has no rights or legitimate interests in the disputed domain name, and Respondent has registered and used the disputed domain name in bad faith. Complainant also requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <monkidiscount.com> is identical to Complainant’s mark, other than the addition of “discount.” Adding this non-distinctive suffix “discount” is insufficient to distinguish the disputed domain name from Complainant’s mark. The word “discount” is often used within a retail business as a means of demonstrating that it is an official outlet of the mark, here MONKI, but where products are being are sold at a discount. In Chloé S.A.S. v. John Steven, Yiheng, WIPO Case No. D2014-1379, dealing with the domain name <chloe-discount.info>, the panel held: “The trade mark CHLOÉ is clearly identifiable in the disputed domain name. The addition of the generic term and hyphen “-discount” in the context of facts of this case does not serve to remove the confusing similarity between the disputed domain name and Complainant’s trade mark.” The same arguments apply in the instant case. The disputed domain name <monkidiscount.com> is confusingly similar to the trademark MONKI.
Nor does the addition of the generic Top-Level Domain (gTLD) “.com” render the disputed domain name distinctive. It is well-recognized in UDRP cases that a gTLD suffix, such as “com” in the instant case, will not derogate from the disputed domain name being confusingly similar to Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.11. See too International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581. There the Panel stated: “In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test”. The following should apply in the current case and the disputed domain name should be considered as confusingly similar to the registered trademark MONKI.
B. Rights or Legitimate Interests
The Panel holds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent has no personal or legal connection to the trademark. Respondent is not known by the name Monki. Nor is there any evidence on record to suggest that Respondent has any interests in the disputed domain name. Respondent also has no legal relationship with Complainant. Nor does Respondent have any authority, express, implied, ostensible, or by ratification from Complainant to use the disputed domain name. There is also no evidence on record that Respondent is employed by Complainant, legally entitled to act as agent of Complainant, or is otherwise acting as an affiliate or associate of Complainant.
C. Registered and Used in Bad Faith
The Panel holds that Respondent has registered and used the disputed domain name in bad faith.
Complainant’s trademark, MONKI, is a well-known mark in the fashion industry. It is most unlikely that Respondent was unaware of Complainant’s mark and global business when Respondent registered the disputed domain name. Complainant’s trademarks and domain names significantly predate Respondent’s registration of the disputed domain name. Complainant’s Monki brand was established in 2006 and first registered as a trademark in the United States in 2008. That registration took place eight years before Respondent registered the disputed domain name.
Complainant also provides significant evidence of its global business conducted under its trademark, MONKI, about which Respondent was most likely fully aware in registering a confusingly similar domain name, and in purporting to sell fashion products under a confusingly similar name. Given the use of the disputed domain name, and the purpose for which it was registered, there is no reasonable conclusion to draw other than that Respondent registered it in bad faith.
The disputed domain name was also used in bad faith. Respondent’s purpose in using the disputed domain name is to induce online consumers to visit its website under the misapprehension that it is either the website of Complainant, or is otherwise authorized or endorsed by Complainant to sell its, Complainant’s, clothes at a discounted price. Complainant also provides evidence that Respondent offered a large quantity of presumably “knock-off” or counterfeit products using Complainant’s mark. This misleading use includes the incorporation of a banner along the top line of the website and at the center of the website that is reasonably intended to further convince customers accessing the website that the website is owned or operated by Complainant, its agent or affiliate.
An examination of the website to which the disputed domain name directs Internet traffic clearly purports to replicate in form, structure and substance, Complainant website. The nature and presentation of clothes for sale also purports to replicate the nature and presentation of clothes on Complainant’s website. From the perspective of an Internet user, the downscaling of the presentation on the website accessed through the disputed domain name is likely to be attributed to Complainant selling at discount prices, rather than to products being sold by a seller who is wholly unaffiliated with Complainant.
Respondent’s website also requests Internet users accessing it to provide usernames and passwords for the purpose of purchasing products from that site. Such a request is most likely to create further confusion in the minds of Internet users who provide such information, as well as confidential financial data in making purchases, in the reasonable belief that they are purchasing from, and providing such information to, Complainant. Such actions are likely to further undermine the reputation and standing of Complainant in the industry in the belief that Internet users are providing such information to Complainant directly, or through its agent, subsidiary, or affiliate.
Complainant draws attention to a similar case it filed with WIPO, addressing the sale of counterfeit products. There the panel held that respondent’s domain name was confusingly similar to complainant’s mark, that respondent did not have any rights or legitimate interests in the disputed domain name and had registered and used it in bad faith. See H & M Hennes & Mauritz AB v. Donnie Lewis, WIPO Case No. D2017-0580. The Panel endorses that decision on facts that are comparable to those in the instant case.
As further evidence of Respondent’s bad faith use of the disputed domain name, Complainant adduces evidence that it sent a notice of infringement to Respondent’s email address listed in the WhoIs on February 8, 2017, as well as a notice to the concerned hosting provider alleging Respondent’s violation of Complainant’s intellectual property rights. Complainant advised Respondent of the allegedly unauthorized infringement by Respondent of Complainant’s trademark and requested that Respondent transfer the disputed domain name to Complainant. Complainant sent reminders on five further occasions, February 15, 2017, February 28, 2017, March 3, 2017, May 15, 2017 and finally on May 24, 2017. Respondent did not respond to any of the correspondence above from Complainant. Such failure to respond constitutes further evidence of bad faith registration and use of the disputed domain name. For comparable cases, see e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Accordingly, the Panel holds that Respondent has unreasonably misled users into believing that the disputed domain name is associated with the business of Complainant, that Respondent is using a confusingly similar name in respect of which it has no rights nor interests for the purpose of financial gain in offering for sale fashion products other than those of Complainant to purchasers who reasonably believe that they are products of Complainant. Respondent has also failed to respond to Complainant’s request to cease and desist in its use of the disputed domain name. Such conduct, viewed cumulatively, constitutes ample evidence of bad faith registration and use of the disputed domain name, and demonstrates, convincingly, that Respondent has not intended to use the disputed domain name to make a good faith offering of products to consumers, but on the contrary, has acted in bad faith, including by threatening Complainant’s reputation among actual and potential purchasers of its products.
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 <monkidiscount.com> be transferred to Complainant.
Date: August 30, 2017