WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.p.A. v. MonclersChina / MonclersChina.Com

Case No. D2016-1825

1. The Parties

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

The Respondent is MonclersChina / MonclersChina.Com of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <monclerschina.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2016. The following day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2016, 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.

On September 13, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 in both Chinese and English of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 11, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 17, 2016. 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 produces and markets fashion sportswear. Its name is an abbreviation of "Monesteir de Clermont", the village where it was established. The Complainant owns multiple trademark registrations in multiple jurisdictions, including International registration no. 978819 for MONCLER, registered in 2007, which designates multiple jurisdictions including China; Chinese trademark registration no. 4486670 for MONCLER and device, registered in 2008; and Chinese trademark registration no. 6084721 for MONCLER, registered in 2010. These particular trademark registrations specify clothing in class 25 and they remain current. The Complainant promotes its products worldwide, including in China. The Complainant also operates official websites at "www.moncler.com" and "www.monclergroup.com".

The Respondent is the registrant of the disputed domain name. The disputed domain name was registered on June 28, 2011. The disputed domain name resolves to a website in Chinese, and partly in English, that displays the MONCLER trademark and logo and offers for sale what is alleged to be the Complainant's clothing.

5. Parties' Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant's MONCLER trademark. The disputed domain name consists of that trademark plus the letter "s" and the geographical term "China". The addition of a geographical term increases rather than excludes confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain name. The name of the registrant of the disputed domain name is clearly fictitious as the Complainant could not retrieve any evidence of this entity or its activities. The Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant. The Complainant has not authorized the Respondent to include its MONCLER trademark in the disputed domain name or to make any other use of that trademark. The Respondent uses the disputed domain name to direct Internet users to a website displaying the MONCLER trademark and selling alleged goods of the Complainant, which is not a bona fide offering of goods.

The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainant's trademark at the time that it registered the disputed domain name because it is a well-known mark and also taking into consideration the website's content. The registrant name and organization and contact address in the WhoIs database are fictitious. The disputed domain name resolves to a website that offers, without authorization, goods bearing the MONCLER trademark. The Respondent has not responded to three cease-and-desist letters.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant does not understand Chinese, that the website contains English words and was originally in English, and that the adoption of another language would be troublesome for the Complainant.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The website with which the disputed domain name is used is at least partly in English, from which it is reasonable to deduce that the Respondent understands that language. Further, having had notice of the Complaint in both Chinese and English, the Respondent has not expressed any wish to respond to it or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Analysis and Findings

The Respondent's failure to file a Response does not result automatically in a finding in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the MONCLER trademark.

The disputed domain name incorporates the Complainant's trademark in its entirety as its initial element.

The disputed domain name contains additional elements. One additional element is the letter "s" after "moncler". The Panel considers that too minor a difference to dispel confusing similarity with the Complainant's trademark. Another is the country name "China". The inclusion of a mere geographical term in a domain name does not prevent confusing similarity to a trademark either. See Time Warner Entertainment Company L.P. v HarperStephens, WIPO Case No. D2000-1254; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Nor does the Panel consider that the combination of that geographical term and the letter "s" alters the result.

The disputed domain name also contains the generic Top-Level Domain ("gTLD") suffix ".com" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has already found that the disputed domain name is confusingly similar to the Complainant's MONCLER trademark. The Complainant informs the Panel that it has not authorized the Respondent to include its MONCLER trademark in the disputed domain name or to make any other use of that trademark.

As regards the first circumstance above, the disputed domain name is being used with a website that offers for sale what are alleged to be the Complainant's products. Even if the products are genuine, the website does not accurately disclose the Respondent's lack of any relationship to the Complainant. These facts indicate that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Registrar's WhoIs database shows the Respondent's name and organization in Chinese as "蒙口中国". The first two characters can be transliterated as "Mengkou" and the latter two can be translated as "China". The Respondent's website uses the term "蒙口" as a substitute for "Moncler". However, "蒙口" or "Mengkou" is not "Moncler" nor, for that matter, is it "盟可睐", the Chinese version of the Complainant's trademark, which can be transliterated as "Mengkelai". The Registrar's WhoIs database also shows the registrant name in English as "MonclersChina" and its organization name in English as "MonclersChina.Com". The evidence shows that a company name search in China reveals nil results for the names "monclerschina" and "monclers china". The alleged organization name in English is simply the disputed domain name as registered and not evidence of some rights or legitimate interests in that name. Taking all the evidence into consideration, the Panel considers that the evidence does not indicate that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] 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 [the Respondent's] website or location or of a product or service on [the Respondent's] website or location."

The disputed domain name was registered in 2011, after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant's MONCLER trademark in its entirety, with the addition of the letter "s" and the geographical term "China". The website with which the disputed domain name is used displays the Complainant's MONCLER trademark and logo and offers for sale what are alleged to be the Complainant's products. This all indicates to the Panel that the Respondent was aware of the Complainant and its MONCLER trademark at the time that it registered the disputed domain name and chose to register it as part of the disputed domain name in bad faith.

The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's MONCLER trademark, in connection with a website to offer for sale what are alleged to be the Complainant's products. Given this circumstance and those described in Section 6.2.B. above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <monclerschina.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 20, 2016