WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moncler S.p.A. v. Christopher Schaerf, Schaerf Woodworking Industry Pty. Limited
Case No. DAU2017-0011
1. The Parties
The Complainant is Moncler S.p.A. of Milan, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is Christopher Schaerf, Schaerf Woodworking Industry Pty. Limited of Carlton North, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <moncler.com.au> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2017. On April 21, 2017, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On May 3, 2017, NetRegistryPty Ltd. 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on June 14, 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.
After the appointment of the Panel, on June 16, 2017, the Respondent sent an email to the Center. In it, the Respondent requested an extension of time to file a Response and stated that “I have attempted to resolve this issue without the need for a Complaint to be filed and heard before a Panellist and, I am hopeful this can still be achieved without the need for this matter to proceed to hearing.”
In response, on June 19, 2017, the Panel issued a procedural order and extended the due date for the decision until July 10, 2017. The parties were requested to inform the Center by June 26, 2017 as to whether they agreed to settle this matter. In the absence of a settlement by that date, the Respondent was requested to provide a Response by June 30, 2017.
The parties gave no reply to that procedural order and the Respondent did not file a Response by the extended date. Accordingly, the Panel has proceeded to issue this decision.
4. Factual Background
The Complainant is an Italian company and operates in the field of fashion sportswear. The Complainant was founded in 1952. The Complainant’s name derives from an abbreviation of Monesteir de Clermont, a French mountain village where the company was initially established. The Complainant says that it is known for its mountain-climbing and skiing apparel and equipment, in particular for its famous down jackets, created in 1954. The company operates in the high-scale fashion field. The Complainant has its own mono-brand stores in Italy, Europe, Asia, Japan, the Americas and Australia. There are 207 Moncler stores worldwide, one of which is located in Melbourne, Australia.
The Complainant is the registered owner of more than 500 national, European and International trademarks comprising the term MONCLER, the first of which dates back to 1963.
The Complainant also owns over 1,000 domain names comprising its MONCLER trademark under different Top-Level Domains and is present on several social media networks.
The Complainant’s mark has been the subject of previous decisions under the Policy. Among others cited by the Complainant these include: Moncler S.r.l. v. Silin Trade, WIPO Case No. D2011-0511, Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488, Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.
The disputed domain name has a creation date of May 2010. The Complainant provided evidence that the disputed domain name leads to a landing page of the Registrar.
In August 2016, the Complainant sent a ‘cease and desist’ letter to the Respondent. In that letter, the Complainant’s representative mentioned that “through its domain name watch service, our Client has become aware of the registration of the domain name <moncler.com.au> in the name of SCHAERF WOODWORKING INDUSTRY PTY. LIMITED.” The letter demanded that the Respondent transfer the (now) disputed domain name to the Complainant, free of charge.
The Respondent replied to that letter, initially on September 12, 2016. The Respondent said that its position was that the disputed domain name was registered in good faith and that “This is demonstrated in correspondence sent to your client on or about April 2013 seeking to work together in representing Moncler in Australia. The procedure to initiate action can of course be costly, and given the above we do not believe any action to recover the domain name will be successful. However, I would be pleased to discuss a reasonable resolution with you.”
The Complainant’s representative replied to this correspondence on September 27, 2016. The Complainant stated that “First and foremost, our client does not recall having had contacts with you in respect to a possible collaboration with MONCLER in Australia. In any event, this circumstance has no impact whatsoever on the legitimacy of the registration of a domain name identical to our client’s earlier trademark rights.”
The Respondent sent a further reply on November 8, 2016 repeating its position that the registration was in good faith and that “We have evidence of correspondence with your client on or about April 2013 confirming our good faith in regard to this mater. As I have previously mentioned, in order to avoid escalation costs, we are prepared to entertain a reasonable commercial settlement.”
5. Parties’ Contentions
The Complainant provides evidence of its registered trademark rights in Australia for MONCLER, the earliest of which dates from 1972. The Complainant says that the disputed domain name is relevantly identical to its registered marks.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that it never authorized the Respondent to include its trademark in the disputed domain name, nor to make any use of its trademark in any manner whatsoever. The Complainant conducted a search on all the available trademark databases to establish if there were any trademarks containing the word “moncler” in the name of the Respondent or in the name of Mr. Christopher Schaerf anywhere in the world. The search has no disclosed results that could lead to the conclusion that the Respondent has legitimate rights or interests in the disputed domain name. The Complainant says that, to the best of its knowledge, there is no other evidence that the Respondent is known by the Complainant’s trademark and the Respondent does not appear to own any other sign used in the course of trade consisting of, or including, the Complainant’s mark.<
The Complainant otherwise says that the Respondent is not making a bona fide offering of goods or services in connection with the disputed domain name. Given that the Complainant’s mark is well-known on a global basis and is indelibly associated with the Complainant, it is not possible to conceive of any possible right or legitimate interest which the Respondent could have in the dispute domain name. The fact that MONCLER is a fanciful word, strengthens the circumstance that the disputed domain name was registered for the sole purpose of misleading potential consumers, to tarnish the Complainant’s mark, and to prevent the Complainant from reflecting its trademark in a corresponding domain name.
In relation to bad faith, the Complainant says that the Respondent has registered a domain name containing a very well-known third party’s trademark without authorization. The Complainant points out that it is sufficient to type “moncler” into “www.google.au” to see that all the search results are related to the Complainant and its mark.
From this, the Complainant says that it is clear that the Respondent registered the disputed domain name in bad faith. The Complainant states that, under paragraph 4(a)(iii) of the Policy, once registration in bad faith has been proved, it is not necessary to also prove use in bad faith. However the Complainant further argues that the Respondent’s passive holding of the disputed domain name amounts to use in bad faith. By reference to the correspondence between the parties prior to these proceedings (mentioned above), the Complainant says that the Respondent is using the disputed domain name to either transfer it to the Complainant for valuable consideration, or to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. Each of them is discussed in turn below, immediately following discussion of how to treat the delay between the creation of the disputed domain name in 2010 and the filing of the Complaint in 2017.
The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Delay in filing of the Complaint
The Panel notes that there has been a substantial period since the Respondent’s registration in 2010 and the initiation of this Complaint in 2017. The Complainant does not explain this delay directly in the Complaint. In correspondence to the Respondent the Complainant says only that it discovered the Respondent’s registration “through its domain name watch service”.
Regardless, the Panel does not consider that this delay is material to this proceeding. Delay in bringing a complaint does not provide a defense per se under the Policy; auDRP panels have recognised that the doctrine or defence of laches does not generally apply under the auDRP: paragraph 4.10 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”).
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it has rights in a mark. The Complainant’s provided evidence of its registered trademark rights in Australia for its MONCLER mark, which are clearly sufficient for this purpose.
The Complainant must next establish that the disputed domain name is identical or confusingly similar to its mark. It is well established that the second level domain suffix “.com.au” is generally disregarded for the purpose of this comparison: see recently e.g., Yahoo! Inc. v. Mac Patchers, Ravi Singh / Dayzed Pty Ltd, Ravi Singh, WIPO Case No. DAU2017-0008. Once that extension is disregarded, it is apparent that the disputed domain name is relevantly identical to the Complainant’s mark.
For this reason, the Panel finds that the disputed domain name is identical to the MONCLER mark in which the Complainant has registered rights.
C. Rights or Legitimate Interests
At a minimum, the burden on the Complainant under the second element of the Policy is to establish a prima facie case against the Respondent. A prima facie case is one that is credible in the absence of evidence to the contrary. This general position under the Policy is the same as that under the UDRP: see the auDA auDRP Overview 1.0, paragraph 2.1.
The Complainant has established a prima face case against the Respondent in relation to this second element under the Policy. The burden is therefore on the Respondent to rebut that argument.
The Respondent has made no substantive answer to the case against him. Following the precedent set out above, this would usually result in a finding for the Complainant against this element, unless there is any other evidence in the case file which casts doubt on the Complainant’s case. There is no such evidence in this case. There is otherwise no evidence of the circumstances set out in paragraph 4(c) of the Policy.
For this reason, the Panel finds that the Complainant has established its case for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered or Subsequently Used in Bad Faith
The third element which the Complainant must show is that the disputed domain name has been registered or used in bad faith. The circumstances in this case indicate that the disputed domain name has at least been registered in bad faith. The Panel makes this finding for the following reasons.
Firstly, the Respondent has made no reply to the case against it. This is despite requesting, and being granted, an extended period of time in which to file a Response (in the event that no settlement was reached).
The best the Panel can find of some response to the case against it, is in evidence of correspondence between the parties prior to the Complaint being filed. In this correspondence, the Respondent vaguely refers to having registered the disputed domain in good faith, and of sending the Complainant some correspondence in 2013 with the intention of establishing some business relationship with the Complainant. The Respondent does not explain why it considers its registration to have been in good faith. The Complainant denied any awareness of the 2013 correspondence. The Respondent provided no evidence of the 2013 correspondence, either in its earlier communications with the Complainant or directly to the Panel.
Secondly, the Respondent was very likely aware of the Complainant and its trademark when it registered the disputed domain name which is entirely and exactly comprised of the Complainant’s mark. The Respondent had no licence or permission to do so. While the Complaint is silent on how the Complainant came to discover the registration of the disputed domain name, the unrebutted case is that the Respondent did not inform the Complainant of the registration or seek any permission for it. There is no evidence that the Respondent has made any active use of the disputed domain name or that it has any legitimate connection with the term “moncler”. The Complainant’s mark appears to be reasonably well-known and, taken together with the Respondent’s exact adoption of it, an inference that the Respondent was aware of that mark when it registered the disputed domain name.
Thirdly, paragraph 4(b)(i) of the Policy provides that there may be evidence of bad faith in circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. Such conduct can, in appropriate circumstances, amount to bad faith. As indicated by the terms of paragraph 4(b)(i), these circumstances do not need to contain an explicit offer to sell the disputed domain name. Such an offer might be drawn from “the tone of the correspondence” between the respondent and the complainant: See auDA auDRP Overview, paragraph 3.1A.
The Panel considers that there is something of this “tone” in the evidence of correspondence between the parties, as attached to the Complaint. In this correspondence, the Respondent offers repeatedly to reach a “reasonable commercial settlement” with the Complainant. This proceeding itself was delayed by the Respondent’s request to reach a settlement with the Complaint or, failing that, to file a Response. There was no subsequent evidence that the Respondent made any such efforts. In circumstances where the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name, it is difficult for the Panel to imagine the grounds for the Respondent to negotiate a “reasonable commercial settlement” with the Complainant. Rather, these circumstances are suggestive to the Panel that the Respondent was angling to invite, but did not get, some financial offer from the Complainant. The Panel considers that this behavior is suggestive of the kind of bad faith described in paragraph 4(b)(i) of the Policy.
For these reasons, the Panel finds that the disputed domain name was registered in bad faith.
Unlike the UDRP, the Policy requires that the disputed domain name was registered or subsequently used in bad faith. As the Panel has found that the disputed domain name was registered in bad faith, it is not strictly necessary to also consider whether it has been used in bad faith. However, for completeness, the Panel notes that it would also find that the disputed domain name has been used in bad faith. While the Respondent has not actively used the disputed domain name in connection with a website, it is well-established under the Policy that the passive holding of a domain name may relevantly constitute a bad faith ‘use’ in appropriate circumstances. The Respondent’s passive holding of the domain name in combination with having no rights or legitimate interests in the name and the likelihood of being aware of the Complainant’s mark can be treated as bad faith use for the purposes of paragraph 4(a)(iii) of the Policy. Previous UDRP and auDRP decisions support this approach: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Bianjade Enterprises Pty Ltd v. Leigh Michael Connelly, WIPO Case No. DAU2003-0003.
The Respondent’s bad faith is further illustrated by the fact that it was informed of Complainant’s rights after receiving a cease and desist letter requesting the transfer of the disputed domain name. See, e.g., Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. The Respondent failed to respond to the substance of that letter. Such a failure to respond seems to the Panel, in the circumstances of this case, inconsistent with good faith conduct. The Panel infers from this failure that the Respondent simply had no good reply to the allegations against it.
Another factor going towards the Respondent’s bad faith is the fame of the Complainant’s mark, and the absence of an explanation from the Respondent from the obvious presumption this creates – which is that the this confusion was deliberate. As argued by the Complainant, and outlined in previous cases under the UDRP, the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be itself an indication of bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all 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 <moncler.com.au> be transferred to the Complainant.
James A. Barker
Date: July 9, 2017