WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. Dominique Lacroix
Case No. D2019-1017
1. The Parties
The Complainant is Moncler S.p.A., Italy, represented by Studio Barbero, S.r.l., Italy.
The Respondent is Dominique Lacroix, China.
2. The Domain Names and Registrar
The disputed domain names <moncleonline.com>, <monclercloth.shop> and <monclerclub.shop> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 3, 2019, 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 May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2019.
The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on June 14, 2019. 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 Moncler S.p.A., an Italian company, was established in France in 1952 and produces high-fashion outerwear and sportswear for men, women and children for the international market under the MONCLER mark (“MONCLER Mark”). Complainant’s MONCLER goods are offered for sale in retail locations or through Complainant’s own or third-party websites. In 2018 global sales exceeded EUR 1.42 billion.
Complainant is the proprietor of more than 200 trademark registrations dating from 1963, including the following:
- International trademark No. 269298 for MONCLER (word mark) in classes 20, 22, 24, and 25, registered on May 11, 1963;
- International trademark No. 504072 for MONCLER (word mark) in classes 9, 18, 20, 25 and 28, registered on June 20, 1986;
- European Union trademark No. 5796594 for MONCLER (word mark) in classes 3, 9, 14, 16, 18, 22, 24, 25 and 28, registered on January 28, 2008.
Complainant has registered over 1200 domain names that incorporate the Moncler Mark, and operates its main website at the domain “www.moncler.com”.
Respondent registered the Domain Names <moncleonline.com> and <monclerclub.shop> on May 14, 2018. The Domain Name <monclercloth.shop> was registered on May 16, 2018. According to the evidence submitted by Complainant, all three Domain Names used to resolve to online shops in Japanese, offering MONCLER-branded apparel. The Domain Name <moncleonline.com> currently resolves to an inactive website. Both <monclercloth.shop> and <monclerclub.shop> still resolve to Japanese-language online shops offering MONCLER-branded apparel.
5. Parties’ Contentions
In respect of paragraph 4(a)(i) of the Policy, Complainant submits that the MONCLER Mark, which is derived from the abbreviation of a French Alpine town called Monestier-de-Clermont is, due to Complainant’s significant investments in research and development, marketing, sales and distribution channels, and the significant client based, a famous and well-known trademark worldwide. The MONCLER Mark is extensively promoted through high profile advertising campaigns worldwide. The Domain Names registered by Respondent are confusingly similar to Complainant’s trademarks because they wholly incorporate the MONCLER Mark. The Domain Names include non-distinctive elements that do not affect the confusing similarity, but rather reinforce the likelihood of confusion. Previous UDRP panels have found confusing similarity where the Moncler Mark is wholly incorporated into a domain name encompassing generic terms and/or country designations. The Top-Level Domains do not help distinguish the Domain Names from the MONCLER Mark.
In respect of paragraph 4(a)(ii) of the Policy, Complainant submits that Respondent is not a licensee of Complainant, nor is it an authorized agent or in any other way authorized to use Complainant’s Moncler Mark. Complainant believes that Respondent is not commonly known by the Domain Names, nor is “Moncler” the family name of Respondent. “Moncler” is an invented word and previous UDRP panels have found that it is not one that traders would legitimately choose unless seeking to create an association with Complainant. Respondent has not provided any evidence of a bona fide offering of goods or services using the MONCLER Mark. Rather, Respondent is offering low-price unauthorized goods that appear to be counterfeit on websites that imitate Complainant’s websites, and Respondent’s websites lack any disclaimer of affiliation with Complainant, further demonstrating lack of legitimate interest. Finally, Respondent did not reply to Complainant’s cease-and-desist letter.
Complainant has shown prima facie evidence of Respondent’s lack of rights or legitimate interests, and Respondent has not refuted this evidence.
In respect of paragraph 4(a)(iii) of the Policy, Complainant maintains that bad faith in respect of registration is evidenced by the following circumstances. Respondent could not have been unaware of Complainant’s long-established and intensively promoted mark when registering the Domain Names, which are confusingly similar to the Domain Names. Previous UDRP panels have found the Moncler Mark to be well-known, which indicates that Respondent knew or should have known about this trademark. Further, actual knowledge of the MONCLER Mark is demonstrated by the fact that the three Domain Names were registered in a short period of time and that the Domain Names redirect to websites featuring Complainant’s marks and offering for sale branded goods bearing Complainant’s marks.
Complainant alleges Respondent is using the Domain Names in bad faith by using them in connection with websites publishing Complainant’s trademarks and official images and offering for sale counterfeit products bearing the Moncler Mark. Respondent is thereby using the Domain Names to intentionally attempt to attract, for commercial gain, users to such websites, creating a likelihood of confusion and taking unfair advantage of the well-known character of the trademark. Respondent registered the Domain Names in order to prevent Complainant from reflecting its Moncler Mark in corresponding domain names. Indeed, Respondent is engaging in a pattern of conduct by registering multiple domain names related to a single complainant, and previous complaints filed to the Center and other arbitral bodies against Respondent concern both numbers of Complainant’s and other parties’ marks. Finally, Respondent’s failure to respond to the cease-and-desist letter is further evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the MONCLER mark through at least International and European Union trademark registrations, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s MONCLER Mark with the Domain Names, the Panel finds that the Domain Names <monclercloth.shop> and <monclerclub.shop> wholly incorporate and are confusingly similar to Complainant’s Moncler Mark. It is the consensus view of UDRP panels that the addition of a generic Top-Level Domain (“gTLD”) to a domain name does not prevent the domain name from being confusingly similar to complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
In respect of <moncleonline.com>, the Panel finds that the Domain Name is not identical to Complainant’s MONCLER Mark, since this Domain Name is missing the terminal letter “r” thereof. However, the Panel does find that this Domain Name is confusingly similar to Complainant’s Mark because it “contains sufficiently recognizable aspects of the relevant mark” (see WIPO Overview 3.0, section 1.9). At the time of the filing of the Complaint, this Domain Name also resolved to a website offering MONCLER goods for sale. It is the Panel’s view that this Domain Name is a deliberate misspelling of Complainant’s MONCLER Mark.
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Names. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Names or is pursuing a legitimate business activity or legitimate noncommercial use of the Domain Names under this name. Complainant’s rights in the MONCLER Mark predate the registration of the Domain Names by more than 50 years.
Two of the Domain Names contain Complainant’s MONCLER Mark in its entirety, and the third Domain Name contains a term nearly identical to this mark, which cannot constitute fair use because such use effectively impersonates or suggests affiliation with the mark owner. See WIPO Overview 3.0, section 2.5.1.
The commercial activity of Respondent in connection to the Domain Names directing users to online shops offering for sale goods with Complainant’s MONCLER Marks and featuring Complainant’s proprietary images cannot support a finding of rights or legitimate interests in the Domain Names. See WIPO Overview 3.0, section 2.5.3.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oréal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s trademark.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names were registered and are being used in bad faith. The Panel concurs with previous UDRP panels that have found that the MONCLER marks are well-known. (See, for instance, Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049; Moncler S.R.L. v. Wenfei Zheng, WIPO Case No. D2012-2115; Moncler S.R.L. v. Shujin Shen, WIPO Case No. D2012-2009; Moncler S.r.l. v. Silin Trade, WIPO Case No. D2011-0511).
The Panel finds that the evidence in the record demonstrates that Respondent chose each of the three Domain Names deliberately for the purpose of attracting Internet users seeking information about Complainant and its products. Complainant’s rights in the Moncler Mark predates the registration of the Domain Names by more than 50 years. The Domain Names, registered during a period of three days, contain Complainant’s MONCLER Mark in its entirety or with insignificant alterations. Complainant’s significant activities to popularize its mark through advertising is well-documented. There can be no question that Respondent chose the Domain Names in full awareness of Complainant’s mark and for the purpose of attracting Internet users for its own commercial gain.
At the time of the filing of the Complaint, all three Domain Names resolved to a website offering unauthorized low-price MONCLER products that Complainant suspects are counterfeit. Said websites feature Complainant’s proprietary images and lack any disclaimer clarifying that Respondent is not affiliated with or authorized by Complainant as the right holder. In the absence of any evidence to the contrary, all these activities demonstrate bad faith.
Respondent’s pattern of activity in registering domain names that are identical to third-party marks (including the same MONCLER mark), and its failure to submit a response or to provide any evidence of actual or contemplated good faith use in this case, further demonstrate bad faith.
The totality of the circumstances, supported by the evidence supplied by Complainant, clearly demonstrates bad faith in the registration and use of the Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <moncleonline.com>, <monclercloth.shop> and <monclerclub.shop> be transferred to Complainant.
Date: June 28, 2019