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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MONNIER FRERES v. Bryant Lucas

Case No. D2020-0850

1. The Parties

The Complainant is MONNIER FRERES, France, represented by Inlex IP Expertise, France.

The Respondent is Bryant Lucas, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <menuiserie-monnier.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2020, 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 April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 25, 2020. 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 online retail shop specialized on the sales of clothing, jewelry, bags and fashion accessories. Its official website is located at the domain name <monnierfreres.com>.

The Complainant owns the following trademark registrations for MONNIER FRERES (the “MONNIER FRERES trademark”):

- the French trademark MONNIER FRERES with registration No. 3824512, registered on April 18, 2011 for goods and services in International Classes 9, 18, 25 and 35; and

- the European Union trademark MONNIER FRERES with registration No. 9957762, registered on October 17, 2011 for goods and services in International Classes 9, 18, 25 and 35.

The disputed domain name was registered on May 4, 2019. According to the evidence submitted by the Complainant, the disputed domain name resolves to a website offering various brands of luxury goods such as watches and bags.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s MONNIER FRERES trademark, as it incorporates the element “monnier”, which has no meaning in French or English, and is the dominant and distinctive element of the MONNIER FRERES trademark, in combination with the French dictionary word “menuiserie”.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not been authorized by the Complainant to use the MONNIER FRERES trademark or to register the disputed domain name, there is no business relationship between the Parties, and the Respondent and is not commonly known under the name “monnier” and has no trademark rights in it. The Complainant points out that the Respondent has sought to take unfair advantage of the Complainant’s prior rights and business by diverting the Complainant’s clients to the website, associated to the disputed domain name, where the Respondent benefits from the confusion and diversion by receiving pay-per-click commissions.

The Complainant contends that the disputed domain name was registered and has been used in bad faith. According to it, the Respondent has registered the disputed domain name because it knew of the Complainant’s business, in which the Complainant has used the MONNIER FRERES trademark for many years, and the purpose of its registration was to create confusion in Internet users and lead them to believe that the website associated with the disputed domain name is economically linked to the Complainant and will attribute its content to the Complainant. The Complainant points out in this regard that the disputed domain name is used for the online retail sale of clothing, which is an activity identical to that of the Complainant.

The Complainant requests the cancellation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

The Respondent however did not submit a Response in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the MONNIER FRERES trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “menuiserie-monnier”. It consists of the elements “menuiserie” and “monnier”, separated by a hyphen. The first element is a French dictionary word meaning “carpentry”, while the element “monnier” is identical to the dominant element “MONNIER” (which, as submitted by the Complainant, has no meaning in French and English) of the MONNIER FRERES trademark, while the “FRERES” element of the same trademark is a dictionary word meaning “brothers”. In view of this, the Panel accepts that the addition of the element “menuiserie” to “monnier” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the MONNIER FRERES trademark, whose dominant feature “monnier” remains clearly recognizable in the disputed domain name, especially since it is separated by a hyphen from the other element. In cases where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. In such cases, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element. See sections 1.7 and 1.8 of WIPO Overview 3.0.

In addition, as noted in section 1.7 of the WIPO Overview 3.0, the overall facts and circumstances of a case (including relevant website content) may also be relevant for a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. In this regard, as discussed on section 6.B below, the fact that the Respondent has used the disputed domain name for a website offering the online retail sale of clothing, which is an activity identical to that of the Complainant, supports a conclusion that it is likely that the Respondent has targeted the Complainant’s trademark with the registration and use of the disputed domain name, which adds support to a finding of confusing similarity between the disputed domain name and the MONNIER FRERES trademark.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the MONNIER FRERES trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the MONNIER FRERES trademark or to register the disputed domain name, there is no business relationship between the Parties, and the Respondent is not commonly known under the name “Monnier” and has no trademark rights in it. According to the Complainant, the Respondent has sought to take unfair advantage of the Complainant’s goodwill and to divert the Complainant’s clients to the Respondent’s website, in an attempt to receive commercial gain from the online retail sale of clothing, which is an activity identical to that of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the above statements of the Complainant. It has not alleged before the Panel that it has rights or legitimate interests in the disputed domain name and has not submitted any evidence in this regard.

The disputed domain name incorporates the distinctive element of the MONNIER FRERES trademark and has been used for the offering of luxury goods of third-party origin that are similar to the goods offered by the Complainant. In view of this, and in the absence of any evidence to the contrary and of any plausible alternative explanation by the Respondent, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s MONNIER FRERES trademark, has registered and used the disputed domain name in an attempt to exploit the goodwill of the Complainant for commercial gain. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent has registered the disputed domain name eight years after the Complainant registered the MONNIER FRERES trademark and started using it for its business. The disputed domain name is confusingly similar to the MONNIER FRERES trademark and has been used for a website that offers the online retail sale of luxury goods, which coincides with the business activity of the Complainant. This may confuse Internet users that the Respondent’s website is affiliated to the Complainant and that the goods offered on it have their origin with the Complainant. Moreover, the goods offered on the Respondent’s website are of third-party brands, thus competing with the goods marketed by the Complainant.

Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainant’s MONNIER FRERES trademark and of its goodwill when it registered the disputed domain name, and that the Respondent has registered and used the disputed domain name in an attempt to exploit the goodwill of the Complainant and of its trademark for confusing Internet users as to the origin and affiliation of its website and attracting them to it and then offering them goods that compete with the goods of the Complainant.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

7. Decision

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 <menuiserie-monnier.com> be cancelled.

Assen Alexiev
Sole Panelist
Date: June 17, 2020

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