WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.p.A. v. Andries Bogdan Alexandru

Case No. DRO2017-0002

1. The Parties

The Complainant is Moncler S.p.A. of Milano, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.

The Respondent is Andries Bogdan Alexandru of Bacau, Romania, self-represented.

2. The Domain Name and Registry

The disputed domain name <moncler.ro> is registered with ROTLD (the “Registry”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2017. On March 16, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 17, 2017, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2017 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 28, 2017 (hereinafter the Complaint and the amended Complaint referred both together as the “Complaint”).

The Center sent an email communication to the parties on March 23, 2017 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant submitted a request for English to be the language of the proceeding on March 27, 2017. The Respondent did not submit any communication regarding the language of the proceeding.

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 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2017. The Respondent sent an email communication to the Center on April 13, 2017 requesting the notification of the Complaint to a new email address and for the Center to recalculate the response due date. The Center acknowledged receipt of the Respondent’s communication and informed that the Respondent may expressly request an additional four calendar days in which to respond to the Complaint, that extension does not preclude any additional extensions that may be given further to paragraph 5(e) of the Rules and that in the absence of any extension, the last day for sending any Response was April 23, 2017. Accordingly, the Center notified the Parties on April 27, 2017 that it will proceed to appointment of the Panel. The Respondent sent an email communication to the Center on April 28, 2017 again requesting the recalculation of twenty days from April 18, 2017 to submit a response. The Center noted that it would forward the Respondent’s communication to the Panel’s attention for its consideration upon appointment.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 5, 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.

Language of the proceedings

Although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian, the Complainant requested the change of the language of this UDRP proceeding from Romanian to English, in accordance with paragraph 11 of the Rules for a reasoning found persuasive by this Panel. In this sense, the Panel considers that there are sufficient evidences that the Respondent is fluent in English as he declares in his personal “FaceBook” page and uses English to define himself as the manager of “one of the oldest outlet in Romania”.

In addition, considering that the Respondent had addressed his correspondence in these proceedings to the Center in English, and taking into account that the Respondent has not objected to the proceeding being conducted in English, the Panel concludes that, according to the Rules, paragraph 11(a), the language of the proceeding shall be English.

4. Factual Background

The Complainant, Moncler S.p.A., is a company incorporated in Milan, Italy. Founded in 1952, the Complainant is one of the leading companies in the field of fashion sportswear.

Based on the information provided by the Complainant, it has its own mono-brand stores in many countries. Currently, there are 207 Moncler boutiques worldwide, of which over 50 are located in Europe, 16 in the United States of America, 5 in Hong Kong, China, 26 in China, etc. (see “www.moncler.com”).

The Complainant has exclusive rights in numerous trademarks comprising the term MONCLER worldwide since 1963. MONCLER-related trademarks (MONCLER Marks) cover more than 100 jurisdictions. Due to its longstanding use, and the promotional and advertising investments, the MONCLER trademark is well-known.

The Complainant also owns over 1,000 domain names comprising the MONCLER trademark under all different Top-Level Domains (“TLDs”) and is present on several social networks, such as Facebook, Twitter, YouTube, etc., (see “www.facebook.com/moncler”; “www.twitter.com/monclerofficial”; “www.youtube.com/monclerofficial”) and runs various websites, including at the following addresses “www.moncler.com”; “www.monclergroup.com”.

The Respondent is a Romanian individual, Andrieș Bogdan Alexandru, and he registered the disputed domain name on September 13, 2011. At the date of these proceedings, the site under the disputed domain name remains inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

- the disputed domain name is identical to the Complainant’s earlier and well-known trademarks as it exclusively consists of the term MONCLER followed by the country code Top-Level Domain (“ccTLD”) “.ro”.

- the Complainant never authorised the Respondent, or any other third party to include its well-known MONCLER trademark in the disputed domain name, nor to make any other use of its trademark in any manner whatsoever.

- according to a clearance search among trademarks having effects in Romania, there are 29 trademarks containing MONCLER having effects in Romania, all in the name of the Complainant, which evidences that the Respondent does not own any MONCLER trademark in Romania.

- the Respondent has not been commonly known by the disputed domain name. Further, the disputed domain name is currently inactive and this cannot be considered use in connection with a bona fide offering of goods and services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

- MONCLER being a fanciful word, strengthens the circumstance that the disputed domain name was registered for the sole scope of misleading potential consumers, to tarnish the Complainant’s trademark and to prevent the Complainant from reflecting its trademark in a corresponding domain name.

- given the Respondent’s incorporation in the disputed domain name of a trademark which is well-known on a global basis and is indelibly associated with the Complainant, it is not possible to conceive any possible right or legitimate interest which the Respondent could have in the disputed domain name.

- the Respondent promotes the sale of MONCLER goods on his “FaceBook” page, along with other goods bearing well-known third-party trademarks. These goods are likely to be counterfeit, as it appears from their quality “www.facebook.com/Factory-Outlet-800002526684959”. Therefore, it is reasonable to foresee that, if the Respondent were to use the disputed domain name in the future, it would likely be to sell MONCLER counterfeit goods.

- the disputed domain name was registered in bad faith, as the Respondent registered the disputed domain name containing the Complainant’s trademark without authorisation and promotes the sale of MONCLER goods on his “FaceBook” page, which existed since before the date of registration of the disputed domain name.

- as far as use in bad faith is concerned, the Respondent passively holds the disputed domain name and this represents bad faith in the following circumstances: (i) the Complainant’s trademark has a strong reputation, is highly distinctive and is widely known on a global basis; (ii) the Complainant’s trademark is registered also in Romania; (iii) the Complainant never authorised the Respondent to reproduce its trademark in the disputed domain name and the available evidence does not show whatsoever actual or contemplated good faith use of the domain name; (iv) taking into account the nature of the disputed domain name and in particular the fact that it is identical to the Complainant’s trademark, the Internet users would inevitably link the disputed domain name to the Complainant and the Complainant’s activity, so that one cannot conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be in bad faith; (v) the fact that the Respondent never used the disputed domain name is a clear indication that the Respondent holds the disputed domain name to prevent the Complainant from reflecting its trademark under the “.ro” ccTLD; (vi) the fact that the Respondent indicates himself as a manager of one of the oldest outlets in Romania selling MONCLER goods, (which are likely to be counterfeit goods), entails that any possible use of the disputed domain name would be in bad faith.

B. Respondent

Aside from the emails on April 13, 2017 and April 28, 2017, referenced above, the Respondent did not reply to the Complainant’s contentions.

The Panel notes that in response to the Respondent’s email on April 13, 2017, the Center forwarded the notification documents and indicated that the Respondent may expressly request extension to file a response. As no request was submitted, the Center notified the Parties of the commencement of Panel appointment process on April 27, 2017.

In relation to the Respondent’s email on April 28, 2017, this Panel finds that no exceptional circumstances has been provided by the Respondent and the communications under this proceeding had been sent properly to all the available contacts by the Center as required under the Policy and the Rules.

The Panel proceeds to the decision on the merits taking into account the circumstances of the case.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy requires that the Complainant show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Based on the assertions of the Complainant and the evidence presented supporting these assertions, the Panel finds that the Complainant holds rights in the MONCLER marks.

This Panel also finds that the disputed domain name is identical to the Complainant’s registered MONCLER marks because it fully incorporates the dominant element of the MONCLER marks and merely adds the ccTLD “.ro”, which is typically disregarded under the first element analysis.

For all the reasons above, the Panel finds that the disputed domain name is identical to the MONCLER marks and that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, who had full knowledge of the Complaint.

In the opinion of this Panel, it is self-evident that the Complainant never authorised the Respondent to include its MONCLER trademark in the disputed domain name, nor to make any other use of its trademark in any manner whatsoever. Moreover, the Panel notes that the Respondent has not been commonly known by the disputed domain name. Further, the disputed domain name is currently inactive and there is no indication that it has ever been used before. Therefore, this Panel could not identify any use of the disputed domain name in connection with a bona fide offering of goods and services or any legitimate noncommercial or fair use of the disputed domain name.

This Panel agrees with the Complainant that, given the disputed domain name is identical to the MONCLER trademark which is well-known in the fashion industry on a global basis and is indelibly associated with the Complainant, it is not possible to conceive in the circumstances of this case any possible right or legitimate interest which the Respondent could have in the disputed domain name (see DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097).

Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The disputed domain name was registered and it has been used in bad faith.

From the evidences provided by the Complainant, it clearly results that the Respondent registered a disputed domain name identical to the Complainant’s trademark without authorization and promotes the sale of MONCLER goods on his “FaceBook” page, which existed since before the date of registration of the disputed domain name.

Further, the disputed domain name is currently inactive and the Respondent passively holds the disputed domain name and this represents, in the opinion of this Panel, bad faith use considering the following circumstances in this proceeding: (i) the Complainant’s trademark has a strong reputation, is highly distinctive and is widely known on a global basis; (ii) the Complainant’s trademark is registered also in Romania where the Respondent is located; (iii) the Complainant never authorised the Respondent to reproduce its trademark in the disputed domain name and the available evidence does not show whatsoever actual or contemplated good faith use of the domain name; (iv) taking into account the nature of the disputed domain name and in particular the fact that it is identical to the Complainant’s trademark, the Internet users would inevitably link the disputed domain name to the Complainant and the Complainant’s activity, so that one cannot conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be in bad faith; (v) the Respondent has never used the disputed domain name and prevents the Complainant from reflecting its trademark under the “.ro” ccTLD; (vi) the fact that the Respondent indicates himself as a manager of one of the oldest outlets in Romania, and that he is selling goods identified as MONCLER goods, (according to the Complaint likely to be counterfeit goods), entails that any possible use of the disputed domain name would be in bad faith.

In the light of the findings above, the Panel concludes that the disputed domain name was registered and has been used in bad faith under paragraph 4(b)(iv) of the Policy.

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 <moncler.ro> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: May 19, 2017