WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. Cimpress Schweiz GmbH
Case No. D2018-0992
1. The Parties
The Complainant is Moncler S.p.A. of Milan, Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is Cimpress Schweiz GmbH, Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <mcncler.com> ("Domain Name") is registered with Tucows Domains Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 4, 2018. On May 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2018.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on June 6, 2018. 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 date of the Domain Name registration was confirmed by the Registrar to be April 13, 2018.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with an error message, and the website currently appears to be inactive.
The Complainant provided evidence of registration of its trademarks, which include, inter alia, International Trademark Registration for "MONCLER" (word mark) No. 269298 registered on May 11, 1963 and duly renewed thereafter in classes 20, 22, 24, 25, designating also Switzerland; and International Trademark Registration for "MONCLER" (word mark) No. 504072 registered on June 20, 1986, and duly renewed thereafter in classes 09, 18, 20, 25, 28, designating also Switzerland.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant's mark, as well as correspondence from the Respondent, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complainant in the present proceedings is Moncler S.p.A., one of the leaders in the field of luxury outerwear and sportswear for men, women and children. Founded in 1952 in Grenoble by the French entrepreneur René Ramillon, together with André Vincent, the company took its name from the abbreviation of Monestier-de-Clermont, an Alpine town near Grenoble. In 1968 the MONCLER products, used by various mountain climbing expeditions were chosen as the official supplier of apparels for the French Olympics team. In 1972, MONLCER lightweight down jackets for skiing were first manufactured. In the 1980s, the outdoor garments became widely popular for urban use as well. The Complainant claims that MONCLER is indisputably considered as a luxury brand for sportswear.
The Complainant claims that it has registered the trademark MONCLER since as long as 1963 and has been using it in more than 100 Countries for more than 50 years in connection with its products. In order to further protect its trademark MONCLER also on the Internet, the Complainant has registered over 1,900 domain names identical to or encompassing the trademark "MONCLER" under several different TLDs.
The Complainant states that it operates within an extensive sales network with sales at the end of 2017 about EUR 1,193.7 million worldwide, out of which nearly EUR 196.5 in Americas and EUR 501.7 in Europe where the Respondent is prima facie based. Furthermore, the trademark MONCLER was and presently is strongly supported by intensive advertising campaigns worldwide through television and other media including important international magazines with broad circulation.
The Complaint alleges that the Complainant became aware of the registration of the Domain Name – which resolved to a parking page because a senior Officer of the Complainant received a message on April 16, 2018 coming from an email address using the Domain Name which was purportedly sent by the CEO of the Complainant. Said email reported in the subject line description "Bonifico" (which means "bank transfer" in Italian) and requested to process two payments (a copy of which was provided as evidence by the Complainant). In view of the above-described use of the Domain Name in connection with the creation and use of a fake email address impersonating the Complainant's CEO, to send fraudulent communications, the Complainant immediately instructed its Authorized Representatives to pursue all the necessary actions to recover the Domain Name.
The Complaint alleges that the Respondent has only used the Domain Name as part of a common fraudulent scheme and said use cannot be certainly considered an offer of bona fide goods or services, nor a legitimate noncommercial or fair use. The Respondent's use of the Domain Name to create an email address similar to the real email address of a senior Officer of the Complainant and send a fraudulent email creating the impression that it had been sent by the CEO of the Complainant is part of a fraud scheme to trick recipients into believing that they were dealing with said person and, thus, perform the requested payments and/or business tasks. See, along these lines, the following decisions issued against the very same Respondent, which was involved in some recent cases related to the creation and use for fraudulent purposes of fake email addresses based on domain names confusingly similar to trademarks: Select Equity Group, L.P. v. Cimpress Schweiz GmbH, WIPO Case No. D2017-1140; L'Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043.
The Complaint states that a Cease and Desist letter to the Respondent was thus sent, on April 26, 2018, by email and via registered mail, addressing it to the contact details published in the WHOIS database, requesting to immediately cease any use of the Domain Name and proceed with its transfer to the Complainant. No response was received from the Respondent.
The Complaint also alleges that a request for suspension of the Domain Name was also sent to the concerned Registrar on April 27, 2018, since, pursuant to the verifications conducted on the MX Records of the disputed Domain Name, an email account had actually been set for the Domain Name through the mail hosting service provided by the Registrar. On April 30, 2018 the Registrar suspended the Domain Name, as shown in the current WhoIs records and confirmed by the following reply received from the Registrar. As a result of the suspension, the Domain Name is currently not resolving to an active website.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark MONCLER in respect of a broad range of goods and services. MONCLER is a famous and well-known trademark worldwide. The Domain Name is confusingly similar to the trademark owned by the Complainant. The substitution of a single letter in this case does not sufficiently distinguish the disputed Domain Name from the Complainant's trademarks and does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. The Domain Name has been used for fraudulent purposes, since the Respondent created an email address based on the Domain Name which included the name and surname of the Complainant's CEO and delivered an email communication to the – existing – email address of the Complainant's senior Officer requesting to process payments. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MONCLER and that the Complainant has established a well-known reputation in the mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. In the present case, the Domain Name contains the Complainant's trademark in its entirety, except for a single typographical variation, which does not preclude a finding of confusing similarity. The substitution of the second letter "o" in the Complainant's trademark with a "c" in the Domain Name underpins confusing similarity, considering the similar visual appearance between these two letters. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark." See also, paragraph 1.9 of WIPO Overview 3.0: "a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers."
This holding is consistent with previous UDRP panels that have held that minor alterations cannot indeed prevent a finding of confusing similarity between the trademark and the domain name (see, for example, Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259, LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679) and that the substitution of a single letter is insignificant for purposes of confusing similarity (see, e.g., Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant's trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, that the Respondent lacks rights or legitimate interests in the Domain Name. (See also paragraph 2.13 of WIPO Overview 3.0, "Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.")
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark MONCLER and uses it to further its fraud scheme.
Furthermore, the Panel finds persuasive the Complainant's arguments that the Respondent had actual knowledge of the Complainant and its trademark MONCLER at the time of the registration of the Domain Name, as demonstrated by the evidence that the Respondent, within a few days of registration of the Domain Name, sent an email from a fake address based on the Domain Name and impersonating the Complainant's CEO, requesting to proceed with payments. Therefore, it is clear that the Respondent registered the Domain Name for fraudulent purposes.
The Panel finds that such fraudulent use constitutes use in bad faith and is consistent with what has been repeatedly found by panels in similar cases, see, e.g., L'Oréal v. Domains By Proxy, LLC, Registration Private, DomainsByProxy.com / Robert Bowman, WIPO Case No. D2017-1387; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043, where the panel stated that "Respondent has used the disputed domain name as a fake email address in order to impersonate the CFO of Complainant A and mislead some employees, recipients of the emails. The fraudulent intentions of the Respondent are hereby clearly unveiled, and enable the Panel to conclude that the disputed domain name is used in bad faith"; Halliburton Energy Services, Inc. v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2015-2094, where the panel held that "Respondent appears to have used the Disputed Domain Name to engage in a 'phishing' identity theft scheme and fraud upon Complainant and its vendors, by sending emails using the Disputed Domain Name and purported to be from Complainant".
Given the evidence of the Complainant's rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the fraudulent email in which the Respondent impersonates the Complainant in ordering a transfer of funds, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <mcncler.com> be transferred to the Complainant.
Ellen B Shankman
Date: June 20, 2018