The Complainant is APM MONACO SAM, Monaco, represented by Advance China IP Law Office, China.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Hong Min Lin, Yi Wu Shi Yao Yan Dian Zi Shang Wu You Xian Gong Si, United States.
The disputed domain name <monacoapm.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 August 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 30, 2019.
The Center verified that the Complaint together with the amended 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 September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on October 10, 2019. 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.
The Complainant is a fashion jewelry manufacturer headquartered in Monaco. It was founded in 1982 and was named after the founder and jewelry designer, Ariane Prette. After initially producing pieces for many great names in the jewelry business, the Complainant went on to specialize in the production and sale of design-focused jewelry.
The Complainant presently owns over 200 retail stores around the world, covering 25 countries and districts, including Monaco, United States, United Kingdom, France, China, Japan, Singapore and Australia.
The Complainant is the owner of several trademark registrations for APM MONACO, including the following, as per trademark certificates submitted as annexes to the Complaint:
- International trademark registration No. 1280118 for APM MONACO (figurative mark), registered on September 17, 2015 and designating also China, in class 14;
- United States trademark registration No. 5047470 for APM MONACO (figurative mark), registered on September 27, 2016, in International class 14.
The Complainant is also the owner of the domain names <apm.mc>, which is used by the Complainant to promote its services under the trademark APM MONACO, and <apm-monaco.com>, registered on June 2, 1999 and redirected to the website “www.apm.mc”.
The disputed domain name <monacoapm.com> was registered on May 4, 2019 and is currently pointed to a web page stating “[o]ops, something went wrong” and “[t]his shop is unavailable”.
The Complainant contends that disputed domain name <monacoapm.com> is confusingly similar to the trademark APM MONACO in which the Complainant has rights, as it reproduces the composing letters in
Complainant’s trademark, even though written in reverse order, with the mere addition of the generic Top-Level domain “.com”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that, as also proved by a United States Patent and Trademark Office online database search, the Respondent has no trademark rights in MONACO APM.
The Complainant also highlights that the Respondent is neither a licensee of the Complainant, nor has it ever been authorized by the Complainant to use the trademark APM MONACO or register the disputed domain name.
Moreover, the Complainant submits that the Respondent does not even possess a business name or personal name comprising the trademark MONACO APM and is indeed exploiting the reputation and distinctiveness of the trademark to its advantage.
The Complainant also asserts that the Respondent has no other civil rights or interests in the disputed domain name and that, though the disputed domain name currently resolves to an inactive website, it might have been selling products with the trademark APM MONACO in the past.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith since:
- the Respondent must have been well aware of the Complainant and its rights at the time of registration of the disputed domain name as the Complainant’s trademark is well-known and a Google search for “Apm Monaco” would have revealed the presence of the Complainant and its trademark;
- the Respondent registered and uses the disputed domain name primarily for the purpose of disrupting the Complainant’s business since, in light of the highly confusing similarity between the disputed domain name and the Complainant’s domain name <apm-monaco.com> and the redirection of the disputed domain name to a web page stating that the shop is unavailable, Internet users are induced to believe that something went wrong in the Complainant’s official website, which severely affects the normal promotion and business of the Complainant;
- the Respondent’s passive holding of the disputed domain name amounts to bad faith as the Complainant’s trademark APM MONACO is a fanciful mark created by the Complainant which enjoys high degree of distinctiveness and reputation, and the Respondent has intentionally concealed its identity in the WhoIs records of the disputed domain name;
- the Respondent Hong Min Lin also registered the domain name <monaco-apm.com>, which was subject of another UDRP proceeding initiated by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of trademark registrations for APM MONACO in several countries of the world, as mentioned under Section 4 above.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, both word elements of the Complainant’s trademark APM MONACO are entirely reproduced in the disputed domain name, although in reverse order, with the mere addition of the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269). The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
In light of the fact that the trademark APM MONACO has been widely used and registered by the Complainant in several countries of the world since several years before the registration of the disputed domain name, including in China, where the Complainant operates retail stores in the main cities, the Panel finds that the Respondent, which appears to be an individual located in China, was more likely than not aware of the Complainant’s trademark at the time of registration of the disputed domain name.
As to the use of the disputed domain name, the Panel notes that it is currently pointed to an inactive website containing statements which lead Internet users to believe that the website is not functioning properly. As held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the “passive holding” of a domain name does not prevent a finding of bad faith where such conclusion is supported by the circumstances of the case, including the following: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0.
In the case at hand, the Panel is satisfied that the Complainant’s trademark APM MONACO has gained reputation also in China, as also stated in the prior UDRP case brought by the Complainant APM Monaco SAM v. Hong Min Lin, Yiwu Yaoyan E-commerce Co., Ltd., WIPO Case No. D2019-1253 (<monaco-apm.com>). The Panel also notes that the Respondent has failed to submit a Response and has concealed its contact information in the WhoIs records. Moreover, nothing in the records suggests that the Respondent could have made, or could make, good faith use of the disputed domain name.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <monacoapm.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: October 24, 2019