WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.p.A. v. FOB Moncler, Moncler FOB

Case No. D2016-0424

1. The Parties

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

Respondent is FOB Moncler, Moncler FOB of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <moncleroutletvip.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2016. On March 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On March 7, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 8, 2016, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 11, 2016.

The Center appointed Yijun Tian as the sole panelist in this matter on April 18, 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

Complainant, Moncler S.p.A. is a company incorporated in Milan, Italy. Founded in 1952, Complainant is one of the leading companies in the field of fashion sportswear. Based on the information provided by Complainant, it has its own mono-brand stores in Europe, Asia and in the Americas. There are 184 Moncler boutiques worldwide, of which 30 are in China, including Hong Kong. Complainant’s total revenues for the year 2014 amount to EUR 694 million, with around 64.5 million generated in China and above 130 million in Italy.

Complainant has exclusive rights in numerous trademarks comprising the term MONCLER worldwide since 1963. MONCLER related trademarks (MONCLER Marks) cover more than 100 jurisdictions, including in Hong Kong, China (registration number 300518977 since 2005). It also owns numerous domain names which contain MONCLER Mark, such as <moncler.com> and <monclergroup.com>.

Respondent is FOB Moncler, Moncler FOB of Hong Kong, China.

The disputed domain name was registered on October 21, 2015, which is long after the MONCLER Marks were registered.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <moncleroutletvip.com> is identical or confusingly similar to the MONCLER Marks in which Complainant has rights.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <moncleroutletvip.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

a) Neither Complainant, nor its representatives, understands Chinese. It would be quite burdensome and expensive for Complainant to translate the Complaint with all its annexes in Chinese. It would also unnecessary delay this procedure and would unduly increase Complainant’s damages;

b) The disputed domain name at one time re-directed to the official MONCLER website, which is not in Chinese, but in English. This circumstance demonstrates that Respondent is capable of understanding English, which is the most practiced international language in business and commercial activities;

c) Respondent is based in Hong Kong, China, whose official languages are Chinese and English. Therefore, it is not credible that Respondent does not know English;

d) Respondent registered the disputed domain name under the (fake) name: FOB Moncler, where the term “FOB”¹ is the acronym of the well-known English term: “free on board” under Incoterms 2010.

e) Respondent’s email consists of English common words, namely, “bag”, “cloth” and “shoe”.

f) Respondent’s communicates with the visitors of the website in English (See Annex 3 to the Complaint).

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further provides:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Italy, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name <moncleroutletvip.com> include the English words “outlet” and “vip” (abbreviation of “very important person”) (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <moncleroutletvip.com> was registered in Latin characters and particularly in English language, rather than in Chinese script; (b) the website resolved by the disputed domain name <moncleroutletvip.com> was an English website rather than a Chinese website, and the payment method options at the top-right of the homepage contain English words such as “US Dollar”; (c) the website resolved by <moncleroutletvip.com> appears to have been directed to users worldwide, including English speakers; (d) according to Complainant, Respondent’s email consists of English common words, namely, “bag”, “cloth” and “shoe”; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the MONCLER Marks acquired through registration. Based on the information provided by Complainant, the MONCLER Marks have been registered worldwide since 1963 (including registration in Hong Kong, China since 2007), and Complainant has a widespread reputation as one of the leader companies in the field of fashion sportswear.

The disputed domain name <moncleroutletvip.com> comprises the MONCLER Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the English words “outlet” and “vip”. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The addition of the descriptive terms “outlet” and “vip” as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Moreover, Complainant is one of the most prominent fashion sportswear producers in the world (as mentioned above). Internet users who visit Respondent’s website are likely to be confused and may falsely believe that the disputed domain name <moncleroutletvip.com> is operated by Complainant for providing MONCLER-branded products or services.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the MONCLER Marks.

The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:

(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) legitimate noncommercial or fair use of the disputed domain names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the MONCLER Marks globally since 1963. According to Complainant, Complainant is one of the leading companies in the field of fashion sportswear. It has 184 Moncler boutiques worldwide, of which 30 are in China, including Hong Kong. Complainant’s total revenues for the year 2014 amount to EUR 694 million, with around 64.5 million generated in China and above 130 million in Italy.

Moreover, Respondent is not an authorized dealer of MONCLER branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “moncler” in its business operation or the use of the MONCLER Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MONCLER Mark or to apply for or use any domain name incorporating the MONCLER Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <moncleroutletvip.com> was registered on October 21, 2015, which is long after the MONCLER Marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s MONCLER Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was advertising and offering purported MONCLER products and services through the website resolved by <moncleroutletvip.com>.

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

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

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the MONCLER Marks with regard to its products or services. Complainant has registered its MONCLER Marks internationally. Moreover, the website resolved by the disputed domain name <moncleroutletvip.com> advertised for sale various purported MONCLER products or services.

Respondent would likely not have advertised products or services purporting to be MONCLER products or services on the website if it was unaware of MONCLER’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name.

The Panel therefore finds that the MONCLER Mark is not a mark that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s MONCLER-branded products or services.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website” purportedly offering Complainant’s MONCLER-branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the MONCLER Marks (as well as the content on Respondent’s website resolved by <moncleroutletvip.com> mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolved. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the MONCLER Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website resolved by <moncleroutletvip.com> is either Complainant’s site or the site of an official authorized agent of Complainant, which is not the case.

The Panel therefore concludes that the disputed domain name <moncleroutletvip.com> is being used by Respondent in bad faith.

Regarding the disputed domain name <moncleroutletvip.com> at the time this decision is rendered, the disputed domain name is currently inactive. In terms of inactive domain name, the WIPO Overview 2.0 provides: “with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” (paragraph 3.2., WIPO Overview 2.0).

The WIPO Overview 2.0 further states: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

Based on information provided by Complainant, founded in 1952, Complainant has been one of the most prominent fashion sportswear producers in the world for many years. Complainant has rights in the MONCLER Marks globally since 1963. It has 184 Moncler boutiques worldwide, of which 30 are in China, including Hong Kong. Complainant’s total revenues for the year 2014 amount to EUR 694 million, with around 64.5 million generated in China and above 130 million in Italy. As such, Complainant’s MONCLER Marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain name <moncleroutletvip.com> is used by Respondent in bad faith also.

In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolve is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy.

7. Decision

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 <moncleroutletvip.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 3, 2016

¹ The panel assumes Complainant intended to refer to “FOB” rather than “FOC”