WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.p.A. v. Trani Johanna, newbeta

Case No. D2017-0547

1. The Parties

Complainant is Moncler S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.

Respondent is Trani Johanna, newbeta of Shanghai, China; of Jiangsu, China; of Fujian, China; of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrar

The 194 disputed domain names in the listing that follows (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”):

<blackfridaymoncler.com>, <blackfridayvipmoncler.com>, <blackfridayvipmoncler.info>, <jacketmonclernorge.com>, <japanmoncler.com>, <japanmonclersell.com>, <londonmoncler.com>, <moncleram.com>, <moncleramdeal.com>, <moncleramsell.com>, <moncleramshop.com>, <moncleramsoho.com>, <moncleratdeals.com>, <moncleratstore.com>, <moncleratstore.info>, <monclerbedeals.com>, <monclerbeoutlet.com>, <monclerberlin.com>, <monclerbest.com>, <monclerbest.info>, <monclerbestjp.com>, <monclerbestny.com>, <monclerblackfridayvip.com>, <monclerbritain.com>, <monclerbuyam.com>, <monclerbuybr.com>, <monclerbuyf.com>, <monclerbuyj.com>, <monclerbuytokyo.com>, <monclercaonline.com>, <monclercasale.com>, <monclerdealam.com>, <monclerdealbr.com>, <monclerdealf.com>, <monclerdealj.com>, <monclerdeal.net>, <monclerdealsat.com>, <monclerdealsbe.com>, <monclerdealsuk.com>, <monclerdealsus.com>, <monclerdealsvip.com>, <monclerdealtokyo.com>, <monclerdear.com>, <monclerdearing.com>, <monclerdestore.com>, <monclerdestore.info>, <monclerealca.com>, <monclerengland.com>, <monclerfn.net>, <monclerfour.com>, <monclerfrance.co>, <monclerfrdeals.com>, <monclerfrvip.com>, <monclerhotdeal.net>, <monclerhotsale.net>, <monclerhotsell.com>, <monclerhotsell.info>, <monclerhotsell.net>, <monclerilsale.com>, <monclerilstore.com>, <monclerinsale.com>, <monclerisrael2016.com>, <monclerjacketca.com>, <monclerjacketxmas.info>, <monclerjp.asia>, <monclerkorea.com>, <monclermall.asia>, <monclermallvip.com>, <monclermaya.biz>, <monclermaya.com>, <monclermodler.com>, <monclernew.info>, <monclerninkisell.com>, <monclerninnkisell.com>, <monclernoreg.com>, <monclerone.com>, <moncleronline.org>, <moncleronlinesale.net>, <moncleronlinesell.com>, <moncleronlinesell.info>, <moncleronlinesell.net>, <moncleronsell.com>, <moncleronselling.com>, <moncleronselljp.com>, <moncleronsell.net>, <moncleronshopping.com>, <moncleroutletat.com>, <moncleroutletbe.com>, <moncleroutletca.com>, <moncleroutletukdeals.com>, <moncleroutletukvip.com>, <moncleroutletvip.info>, <monclerout.net>, <moncleroutsell.net>, <moncleroutwear.com>, <moncleroutwears.com>, <monclersaleam.com>, <monclersalebr.com>, <monclersaledear.com>, <monclersalef.com>, <monclersalefr.com>, <monclersalej.com>, <monclersalesale.com>, <monclersaletokyo.com>, <monclersale2017.com>, <monclersellam.com>, <monclersellbr.com>, <monclersell.com>, <monclerselldear.com>, <monclersellf.com>, <monclersellhot.com>, <monclersell.info>, <monclerselljapan.com>, <monclersellj.com>, <monclerselll.com>, <monclerselll.info>, <monclerselll.net>, <monclersell.net>, <monclerselltokyo.com>, <monclerselltokyo.net>, <monclersell2017.com>, <monclerseoul.com>, <monclershopam.com>, <monclershopbr.com>, <monclershopj.com>, <monclershopping.net>, <monclershoppping.com>, <monclershopvip.com>, <monclerspain.com>, <monclerspain.info>, <monclerstoreca.com>, <monclerstorejp.com>, <monclerstoreuk.com>, <monclersupersale.com>, <monclerthree.com>, <monclertokyostore.com>, <monclertokyo2017.com>, <monclertwo.com>, <monclerukoutletdeals.com>, <monclerukoutletvip.com>, <monclerukvip.com>, <monclervipat.com>, <monclervipbe.com>, <monclervipdeals.com>, <monclervipfr.com>, <monclervipjp.com>, <monclervip2016.com>, <monclervip2017.com>, <monclerxmasat.com>, <monclerxmases.com>, <monclerxmas.info>, <monclerxmasjacket.com>, <monclerxmaspromo.com>, <monclerxmasru.com>, <monclerxmasuk.info>, <moncler2017buy.com>, <moncler2017deal.com>, <moncler2017go.com>, <moncler2017sale.com>, <moncler2017sell.com>, <tokyomoncler.com>, <2016monclerselltokyo.com>, <2016monclerselltokyo.net>, <2016monclershop.com>, <2016monclervip.com>, <2016monclerxmas.com>, <2017moncleratsaledr.com>, <2017moncler.com>, <2017monclerforsalebr.com>, <2017monclerforsaledr.com>, <2017monclerforsellbr.com>, <2017monclerforselldr.com>, <2017monclerfrance.com>, <2017monclerfrancedeal.com>, <2017monclerfrancesale.com>, <2017monclerfrancesell.com>, <2017monclerfranceshop.com>, <2017monclerjacket.com>, <2017monclerjapan.com>, <2017moncler.net>, <2017moncleroffsalebr.com>, <2017moncleroffsaledr.com>, <2017moncleroffsellbr.com>, <2017moncleroffselldr.com>, <2017moncleronlinesalebr.com>, <2017moncleronlinesellbr.com>, <2017moncleronsell.com>, <2017moncleroutsaledr.com>, <2017monclersale.com>, <2017monclersell.com>, <2017monclerselling.com>, <2017monclersell.net>, <2017monclertokyo.com> and <2017tokyomoncler.com>.

3. Procedural History and Preliminary Issue – Consolidation

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2017. On March 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 20, 2017 and March 21, 2017, the Registrar transmitted by email to the Center its verification responses confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the registrant information, Complainant filed an amendment to the Complaint on March 24, 2017.

The Center verified that the Complaint together with the amendment to 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 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2017. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on April 21, 2017.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 2, 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.

Consolidation: Complainant has requested consolidation to allow a single proceeding with respect to all of the 194 Domain Names. Complainant contends that in line with other UDRP decisions, the consolidation of multiple domain name registrants as respondents in a single administrative proceeding may be appropriate in certain circumstances under paragraphs 3(c) or 10(e) of the Rules, provided that complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.

In this case, Complainant submits that, in view of the following information, the Domain Names are under the control of the same registrant:

- Although the WhoIs information for some registrations is slightly different, all of the Domain Names are registered in the name of Respondent, “Trani Johanna”.

- The registrant for the Domain Names uses three different postal addresses, which differ only for the indication of the country (which is either China or the United Kingdom), the provinces and the ZIP code, while the street and city are always the same. The second and third postal addresses are incorrect – no city named “Shanghai” exists in the United Kingdom and, with regard to the third postal address based in China, Shanghai is not located in the Fujian province.

- The Domain Names have all been registered with the same registrar and use the same Domaincontrol.com domain name servers. Furthermore, the Domain Names all incorporate Complainant’s registered and

well-known trademark, MONCLER, in combination with descriptive and/or geographical terms.

- The majority of the Domain Names were or are pointed to almost identical websites (the only difference being the language in some cases), imitating the look and feel of Complainant’s official website, offering prima facie counterfeit Moncler products for sale and indicating common email addresses as contact details.

Respondent has not disputed any of Complainant’s arguments, allegations or factual submissions made in support of its request for consolidation.

The Panel determines that consolidation is appropriate in this case. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), observes that consolidation may be proper where “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.” Here, the Panel determines, on the balance of the probabilities, that all of the Domain Names are subject to common ownership and control by Respondent, who has used the same registrant name but slightly different postal addresses (some with false details). Further, many of the Domain Names link to identical or similar webpages, using common email addresses for contact details and plagiarizing content from Complainant’s webpages. In view of the circumstances, it would be burdensome and inequitable to require that Complainant start multiple proceedings for the numerous Domain Names registered by Respondent.

Accordingly, the Panel determines that consolidation is appropriate.

4. Factual Background

Complainant is a leading company in the field of luxury outerwear and sportswear, offering stylish and comfortable clothing and accessories for men, women and kids. Founded in 1952 in Grenoble, France, the company took its name from the abbreviation of Monestier-de-Clermont, an Alpine town near Grenoble. The Moncler products, used by various expeditions for climbing at high altitude in previous years, were chosen in 1968 as the official supplier for the French Olympic team and on the occasion, Complainant changed its logo from the Mount Eguit, rising up over the town, to a little rooster. In 1972, further to the request of the French ski team for a lightweight product offering flexibility and maneuverability while skiing, the Monlcer lightweight down jackets were first manufactured. Complainant’s development continued and in 1980 a collaboration began with the designer Chantal Thomas, which lasted until 1989, changing radically the products’ appearance: buttons instead of zippers, fur trim, satin, reversible fabrics. In 1999, the first spring/summer collection was presented and in 2002, for the brand’s 50th anniversary, a couture collection, enriched with embroidery by the designer François Lesage, was created. The focus on the styling of the products became definitive with the acquisition of the brand in 2003 by Italian entrepreneur and fashion enthusiast, Remo Ruffini. In 2006, the first fashion collection for women was launched. Today MONCLER is considered a luxury brand for sportswear.

Complainant first registered the MONCLER trademark in 1963 and has used it in more than 100 countries for more than 50 years in connection with its products. Complainant operates within an extensive sales network: the sales at the end of 2015 were approximately EUR 880 million worldwide, out of which nearly EUR 333.5 million was in Asia and EUR 268.5 million was in Europe, where Respondent is based. Complainant’s products are marketed through two main distribution channels: the retailer channel, with mono-brand stores managed directly by Complainant, and the wholesale channel with mono-brand or multi-brand stores managed by third-parties. The MONCLER trademark has been supported by advertising campaigns worldwide through television and other media, including international magazines with broad circulation, inter alia, Vogue, Vanity Fair and GQ. Complainant’s advertising investments have amounted to more than EUR 57.8 million.

Complainant is the owner of more than 200 trademark registrations worldwide for MONCLER, including the following marks:

- International Trademark Registration No. 269298 for MONCLER (word mark), registered on May 11, 1963 and renewed thereafter in classes 20, 22, 24, 25;

- International Trademark Registration No. 504072 for MONCLER (word mark), registered on June 20, 1986, and renewed thereafter in classes 9, 18, 20, 25, 28;

- International Trademark Registration No. 991914 for MONCLER (figurative mark), registered on October 13, 2008 in classes 3, 9, 14, 18, 25, 28 and 35;

- European Union Trademark Registration No. 003554656 for MONCLER (word mark), registered on February 11, 2005 in class 3;

- European Union Trademark Registration No. 005796594 for MONCLER (word mark), registered on January 28, 2008 in classes 3, 9, 14, 16, 18, 22, 24, 25 and 28;

- International Trademark Registration No. 1197643 for M MONCLER (figurative mark), designating also China, dated September 13, 2013 in classes 3, 9, 14, 18, 25, 26, 28 and 35.

In order to protect its MONCLER mark on the Internet, Complainant has registered over 1,200 domain names identical to or encompassing the mark in several different Top-Level Domains (“TLDs”). The website “www.moncler.com”, to which most of Complainant’s domain names are redirected, generates a significant number of visits. Complainant also has a strong presence online through social media including Facebook, Twitter and YouTube.

Respondent registered the Domain Names between November 1, 2016 and January 18, 2017. The majority of the Domain Names link to websites, which include Complainant’s figurative trademarks and some images taken from Complainant’s official ad campaigns, but lacking a disclaimer of non-affiliation. On these sites, Respondent offers for sale unauthorized products under the MONCLER mark at discounted prices and without disclosing any information about the company managing the online stores, circumstances which raise the possibility that the products are counterfeited. The jacket named Moncler Clio is offered for sale on Complainant’s official website at EUR 1,150, while the same product is offered for sale at EUR 331 on the sites corresponding to the majority of the Domain Names. By clicking on the “About Us” section of these sites targeting English-speaking consumers, a brief description of Complainant’s history and products’ characteristics is given, with the same text of the “Privacy Policy” as provided on Complainant’s official website at “www.moncler.com”. Only 4 out of 194 Domain Names – namely, <monclersellbr.com>, <monclersellj.com>, <monclerukoutletvip.com>, <2017moncleroffsellbr.com>) – resolve to error pages and not to the above-described online stores.

Respondent is also the registrant of an additional 15 domain names incorporating the MONCLER trademark, registered under various country code Top-Level Domains (“ccTLDs”), which are not part of this case.

Complainant’s representative sent a cease and desist letter to Respondent on February 9, 2017 by email (to the address indicated in the WhoIs records for the Domain Names and to the addresses recovered on the websites to which the Domain Names resolve) and by post, requesting Respondent to immediately deactivate the websites and transfer the Domain Names. Complainant received no response to these communications.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that the 194 Domain Names registered by Respondent are confusingly similar to the MONCLER trademarks in which Complainant has rights.

Complainant contends it is a well-established principle that the domain names wholly incorporating a trademark and, in particular, one as famous as the MONCLER mark, are found to be confusingly similar for purposes of the Policy, despite that they may contain descriptive or generic terms. The Domain Names in this case include non-distinctive elements such as “outlet”, “shop”, “vip”, “store”, “promo”, “black Friday”, “2017” and geographical indications, such as “Tokyo”, “London” and “Israel”. Complainant claims these terms do not affect the confusing similarity between the Domain Names and Complainant’s mark; instead, they reinforce the likelihood of confusion, as the terms used in combination with the MONCLER mark refer to places where, or occasions on which, Complainant’s products could be bought, or evoke, as in the case of “vip”, particular treatment that a person could receive. Complainant states that Internet users are led to believe that the Domain Names are registered and used by Complainant or by authorized third parties, in order to promote Complainant’s products on the Internet.

Complainant also states that the addition of a generic Top-Level Domain (“gTLD”) or ccTLD should be disregarded as insignificant for purposes of determining the similarity between the Domain Names and the MONCLER mark, because the TLDs are functionally necessary to operate the domain name system.

In light of the above, Complainant contends that the Domain Names are confusingly similar to its prior registered MONCLER trademarks in which it has rights according to paragraph 4(a)(i) of the Policy.

(ii) Rights or legitimate interests

Complainant states that Respondent is not a licensee or an authorized agent, or in any other way authorized to use Complainant’s MONCLER trademark. Upon information and belief, Complainant states that Respondent is not commonly known by the Domain Names as an individual, business or other organization, and MONCLER is not the family name of Respondent. In this regard, it is worth noting that MONCLER is an invented word with no meaning in foreign languages and, as recognized by previous UDRP decisions involving Complainant, is not a word that traders would legitimately choose unless seeking to create an impression of an association with Complainant.

Complainant states that Respondent has not provided Complainant with any evidence of its use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before notice of this dispute. Instead, the majority of the Domain Names re-direct to commercial websites publishing Complainant’s figurative trademarks and official images, thereby imitating Complainant’s official websites. On these sites, unauthorized discounted Moncler branded products, prima facie counterfeit, have been offered for sale. Complainant contends that such conduct demonstrates that Respondent does not intend to use the Domain Names in connection with any legitimate purpose. Further, their use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because Respondent has been gaining from the sales of the products bearing the MONCLER trademarks.

Complainant states that, as to the likelihood of confusion created by Respondent’s publication of MONCLER marks and some official images without any disclaimer of non-affiliation, previous UDRP decisions have held there can be no legitimate interest when a respondent uses the trademarks to create the impression of an association with the complainant. With regard to Respondent’s offer for sale of products bearing MONCLER marks, Complainant considers that, given they have been offered at very low discounted prices and in the absence of any information about the company managing the websites, this suggests that the products are likely counterfeit.

With reference to the Domain Names that, according to Complainant’s verifications and for the time being, are no longer or were never re-directed to active websites (i.e., Domain Names passively held), Complainant contends that absent some contrary evidence from Respondent, this passive holding does not constitute legitimate noncommercial or fair use. Moreover, Complainant maintains that Respondent’s prior use of the majority of the Domain Names, which in most cases were pointed to the above-described infringing websites, cannot be considered as fair or noncommercial use and cannot confer to Respondent any rights in the MONCLER mark or the right to register domain names including this mark. For all the Domain Names currently resolving to error pages, Complainant cannot conceive of any possible right or legitimate interest on the part of Respondent in the Domain Names incorporating the MONCLER mark, which is highly distinctive and exclusively referable to Complainant.

As additional factor, Respondent did not reply to the cease and desist letter sent by Complainant’s representative. Complainant contends that Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations.

Complainant therefore concludes that Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

(iii) Registered and used in bad faith

Complainant contends that in light of the use of its MONCLER trademark since 1963, the amount of advertising and sales of Complainant’s products, the intensive use of the marks worldwide, and also in the United Kingdom and China where Respondent is purportedly based, Respondent could not have possibly ignored the existence of Complainant’s trademark registrations confusingly similar to the Domain Names when Respondent registered the Domain Names. The actual knowledge of the MONCLER trademark by Respondent at the time of registration of the Domain Names is demonstrated by the fact that Respondent registered more than 200 domain names confusingly similar to Complainant’s mark, some of them on the same day or within a very short time, in different gTLDs and ccTLDs (including 15 additional ccTLD registrations not included in this case), re-directing the majority of them to sites where Complainant’s trademark features prominently and products bearing MONCLER marks are sold. In light of the above, Complainant maintains that Respondent was aware of Complainant’s rights in the famous MONCLER mark, and registered the Domain Names with an intention to refer to that mark.

Regarding bad faith use, Complainant states that the majority of the Domain Names have been used in connection with websites publishing Complainant’s trademarks and official images and offering for sale unauthorized discounted products bearing the MONCLER trademark. Such conduct demonstrates that the only purpose of Respondent was and is to use the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to such websites, creating a likelihood of confusion and to take unfair advantage from the well-known character of Complainant’s MONCLER mark for Respondent’s own profit.

Complainant contends that with regard to the Domain Names that are no longer or were never re-directed to active websites (i.e., are passively held), prior UDRP panels have held that the fact that a respondent’s website appears to have been subsequently deactivated does not preclude a finding of bad faith in respect of the use that had been made of the disputed domain name. Further, it is well-settled that the passive holding of a domain name may, in certain circumstances, constitute evidence of bad faith use. Here, Complainant maintains that the confusingly similar nature of the Domain Names to Complainant's MONCLER mark, the highly distinctive character of that mark, the fact that it is widely known in the fashion industry, the lack of any reply from Respondent as to the reason why the Domain Names were registered, and the use of the other active registrations to profit from the probability of association between the Domain Names and Complainant’s mark by selling apparently counterfeit Moncler goods, allows one to conclude that the registration and use of these non-active Domain Names amounts to bad faith.

Complainant also states that Respondent registered the Domain Names in order to prevent Complainant from reflecting its MONCLER mark in corresponding domain names and Respondent has engaged in a pattern of such conduct. Here, Respondent has registered the 194 Domain Names directed against a single Complainant. Further, the registration of 209 domain names confusingly similar to the MONCLER mark (out of which 194 are included in this case) confirms the implausibility of a random registration process.

As an additional circumstance demonstrating bad faith, prior UDRP panels have held that a failure to respond to a cease and desist letter can be evidence of bad faith, as such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

Finally, Complainant indicates that Respondent registered the Domain Names by using inaccurate and/or false contact information, in breach of its registration agreement. In particular, the Respondent’s postal address is allegedly located, according to the WhoIs records for the Domain Names, both in China and in the United Kingdom, which is highly improbable. Further, the second and third postal addresses used by Respondent are false since “Shanghai” as a city does not exist in the United Kingdom or in the Chinese province of Fujian.

In light of all the above, Complainant argues that the Domain Names were registered and are being used in bad faith according to paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and

(iii) Respondent has registered and is using the Domain Names in bad faith.

A. Identical or Confusingly Similar

The Panel determines that Complainant has strong rights in its well-known MONCLER trademark, based on the evidence of Complainant’s numerous trademark registrations for its MONCLER mark all around the world, as well as the use and widespread promotion of that mark for over 50 years in more than 100 countries.

For purposes of determining whether the Domain Names are confusingly similar to Complainant’s MONCLER mark, the test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Names and the trademark. See WIPO Overview 2.0, paragraph 1.2 (“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name […]”).

Here, Complainant’s well-known MONCLER trademark is highly distinctive and comprised of an invented word. Each of the Domain Names contains Complainant’s MONCLER mark in its entirety. Previous UDRP panels have found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Moncler S.p.A. v. Yao Tom, Lee Fei, Geryi Wang, WIPO Case No. D2015-2244 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). As found in a previous UDRP case involving the MONCLER mark, “[t]hat is particularly true where the trademark is highly recognizable and well-known, as in the instant case.” Moncler S.r.l. v. hudietrade, hudietrade hudietrade, WIPO Case No. D2011-0458.

The Panel finds that the 194 Domain Names involved in this case are confusingly similar to Complainant’s MONCLER trademark. The addition of descriptive terms (such as “sale”, “sell”, “store”, “outlet”, “shop”, “vip”, "store", “promo”, “black Friday”, “2017”) and geographical indications (such as “Tokyo”, “London”, “England” and “Israel”) does not diminish the confusing similarity, particularly because the MONCLER mark is both highly distinctive and well-known and because the added terms are connected with Complainant’s market for its products. The Panel is aware that previous UDRP decisions have similarly found confusing similarity in cases in which the MONCLER mark was included in its entirety in domain names encompassing descriptive terms and/or country designations. See, inter alia, Moncler S.p.A. v. Yao Tom, Lee Fei, Geryi Wang, supra; Moncler S.r.l. v. Manlingtrade, WIPO Case No. D2011-0548; Moncler S.r.l. v. hudietrade, hudietrade hudietrade, supra; Moncler S.r.l. v. Shuangying Chen, WIPO Case No. D2011-0416; and Moncler S.r.l. v. Sandra Brown, WIPO Case No. D2010-1674.

Accordingly, Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy.

Here, Complainant has submitted that Respondent has no rights or legitimate interests in respect of the Domain Names because Respondent is not a licensee or authorized agent of Complainant; Respondent is not commonly known by the Domain Names or the Moncler name; and Respondent uses a vast majority of the Domain Names in connection with infringing websites (containing no disclaimers) that sell unauthorized discounted Moncler branded products, many of which are possibly counterfeit goods. Further, as to the Domain Names that resolve to error pages, there is no plausible explanation for Respondent’s adoption and use of the invented term “moncler” in the Domain Names in association with generic and descriptive terms, all of which are related in some manner to the products and business of Complainant. See Moncler S.r.l. v. hudietrade, hudietrade hudietrade,supra; see also PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság v. Chenmei Mei Chen / Private WhoIs pepejeans-uk.org, Private WhoIs pepejeans-uk.net, WIPO Case No. D2012-0441 (“The unauthorized use made by the Respondent of the websites under the disputed domain names, where the Complainant’s trademark features prominently and products bearing its trademarks are sold, make it hard to imagine that the Respondent could ever establish any rights or legitimate interests.”).

The Panel determines that Complainant has satisfied its burden of providing sufficient evidence to make out a prima facie case that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to provide a response to challenge any of Complainant’s evidence or allegations.

Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith.

Regarding registration in bad faith, the Panel finds that Respondent targeted Complainant and its MONCLER trademark when it registered the 194 Domain Names involved in this case, all of which include the MONCLER trademark in its entirety and the vast majority of which are used to link to websites selling unauthorized Moncler branded goods at a discount, indicating the possibility that the products offered on these websites are counterfeit goods.

The Panel observes that the Domain Names were registered within a relatively short period between November 1, 2016 and January 18, 2017, and well after Complainant’s distinctive MONCLER trademark had become internationally well-known. See Moncler S.R.L. v. Kina Vanderzee, WIPO Case No. D2013-0641 (“the Respondent decided to register not one, but five domain names, all confusingly similar to the Complainant’s trademark on the same day and subsequently redirected the majority of those disputed Domain Names to websites where the Complainant’s branded products were offered for sale confirms that the Respondent had actual knowledge of the Complainant’s rights in the MONCLER trademark.”); see also Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the fact that the trademark ‘MONCLER’ is

well-known and that Respondent was or should have been aware of this […], if he would have carried out a trademark search, constitutes an element indicating bad faith”.).

As to use of the Domain Names in bad faith, the Panel notes that the websites to which the majority of the Domain Names resolve display Complainant’s trademarks, official images and text, all without authorization or disclaimers, and offer for sale discounted products bearing the MONCLER trademark, which raises the possibility that the goods offered are counterfeit, as alleged by Complainant. As observed by the panel in a similar case in Moncler S.r.l. v. Silin Trade, WIPO Case No. D2011-0511,

“Each website features goods identical to those offered by Complainant under Complainant’s MONCLER and MONCLER & Design trademarks […]. The design of the websites incorporates Complainant’s MONCLER and MONCLER & Design trademarks, and many of these items featured on the websites are advertised using Complainant’s MONCLER trademark […]. The use of Complainant’s trademarks in these manners combined with the use of the domain names to sell goods identical to those provided by Complainant is indicative of an intent to deceive consumers into believing that the domain names are somehow associated with, affiliated with, and/or endorsed by the Complainant.”

The Panel finds that Respondent is intentionally using the MONCLER trademark to attract consumers, who might be seeking Complainant and its products. This conduct demonstrates that Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to these websites, creating a likelihood of confusion and taking unfair advantage of Complainant’s well-known MONCLER mark for Respondent’s own profit.

Moreover, in view of the facts and circumstances in this case, the Panel finds bad faith use as to the Domain Names that are not linked to an active website. These Domain Names are part of an abusive pattern of conduct by Respondent targeting Complainant and its MONCLER trademark, and preventing Complainant from reflecting its mark in a corresponding domain name. See, e.g., Guccio Gucci S.p.A v. Wode, WIPO Case No. D2013-0632 (“The registration of 165 Domain Names incorporating the GUCCI Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.”); see also Moncler S.r.l. v. Shuangying Chen, WIPO Case No. D2011-0416 (in light of the registration of various domain names consisting of MONCLER, the panel held that “[t]his pattern of conduct by the Respondent is another clear indication of bad faith.”). Thus, “the fact that part of the disputed domain names are currently inactive does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case.” Moncler S.r.l. v. Shuangying Chen, supra (citing Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki, WIPO Case No. D2008-1867).

Finally, the use of false contact information constitutes a further indication of bad faith on the part of Respondent. See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474 (“the Panel considers that providing fake contact information when registering a domain name is also indicative of bad faith. Domain name registrants are required to provide accurate and updated contact information.”).

In conclusion, the Panel finds, on the balance of the probabilities, that Respondent registered and is using the Domain Names in bad faith. Accordingly, Complainant has satisfied the third element 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 following Domain Names be transferred to Complainant:

Christopher S. Gibson
Sole Panelist
Date: May 23, 2017