The Complainant is monari GmbH, Germany, represented by Klinger & Kollegen, Germany.
The Respondent is Privacy.co.com, Savvy Investments, LLC Privacy ID# 958942, United States of America.
The disputed domain name <monnari.com> is registered with Sea Wasp, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2019, 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.
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 July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on August 22, 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 monari GmbH, a German company selling apparel.
The Complainant is the owner of numerous trademark registrations comprising the mark MONARI.
Those registrations include, for example:
- German word trademark MONARI, No. DE1003827, registered on June 24, 1980, in class 25;
- International word trademark MONARI, No. 526194, registered on July 23, 1988, in class 25;
- German word trademark MONARI, No. DE30226684, registered on July 23, 2002, in classes 3, 9, 14, 16, 18, 21, 24, 25, and 28;
- International word trademark MONARI, No. 791720, registered on September 3, 2002, in classes 3, 18, and 25;
- European Union figurative trademark MONARI, No. 009669151, registered on November 21, 2012, in class 25;
- German word trademark MONARI No. DE302014024214, registered on July 1, 2014, in classes 3, 9, 11, 16, 21, 24, 25, 28, and 35;
- International word trademark MONARI, No. 1250983, registered on August 14, 2014, in classes 18, 24, 25, and 35.
The Complainant also owns the following domain names, which resolve to the official website of the Complainant at “www.monari.de”, which presents the Complainant’s clothing collections: <monari.de>, <monari.eu>, and <monari.com>.
The disputed domain name <monnari.com> was registered on May 30, 2006, and is operated as a pay-per-click website, featuring advertisements for the Complainant’s competitors’ websites offering clothing for women.
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant asserts that the disputed domain name is confusingly similar to prior trademarks and domain names of the Complainant. The Complainant points out that “monari” and “monnari” only differ in the additional letter “n” in the middle of the disputed domain name.
Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks and has not authorized the Respondent to register or use any domain name incorporating or resembling to its trademarks. According to the Complainant, there is no evidence that the Respondent:
- has ever used the disputed domain name, or made any 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;
- has made a legitimate noncommercial or fair use of the disputed domain name;
- has been commonly known by any name corresponding to the disputed domain name.
In addition, the Complainant underlines that the Respondent is using the disputed domain name to host a pay-per-click advertisement website, showing advertisements for websites offering clothing for women that are in competition with the Complainant’s business. The Complainant argues that the Respondent has acquired the disputed domain name on or around January 11, 2010, after its initial registration on May 30, 2010.
Thirdly, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant points out that use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering and amounts to bad faith use. Moreover, the Complainant highlights the fact that the Respondent has repeatedly taken unfair advantage of trademarks of third parties by registering confusingly similar domain names and that the Respondent presently owns 562 domain names. The Complainant adds that the Respondent has engaged in “typosquatting” by registering and using a slight variation of the Complainant’s trademark as a domain name to misdirect Internet users in order to generate revenue to the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the MONARI trademark.
The Panel notes that the disputed domain name <monnari.com> is composed of (i) the element “monnari”, which differs from the MONARI trademark only by the duplication of the letter “n” in the middle of the disputed domain name, (ii) the generic Top-Level Domain (“gTLD”) “.com”.
The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test 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 domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have recognized as “confusing similar” and/or “virtually identical” the use of terms that are a slight variation from a registered mark, consisting for example of the duplication of a letter which does not significantly affect the appearance or pronunciation of the disputed domain name, this conduct being commonly referred to as “typosquatting”, and which have considered that “essential” or “virtual” identity is sufficient for the purpose of the Policy (see, e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).
Regarding the disputed domain name, the Panel finds that the duplication of the letter “n” in the middle of the MONARI trademark is not sufficient to exclude confusing similarity or “virtual identity”.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has not in any manner been authorized by the Complainant to use its MONARI trademark nor to register or use any domain names incorporating or resembling its MONARI trademark, and that the Respondent is not currently and has never been known under the name MONARI.
Moreover, the disputed domain name resolves to a pay-per-click website, showing advertisements for websites offering clothing for women that are in competition with the Complainant’s business, which does not represent a bona fide offering of goods or services.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
First of all, the Panel finds that several of the Complainant’s trademarks were registered before the registration of the disputed domain name in 2006 or its acquisition by the Respondent, supposedly in 2010.
Furthermore, the disputed domain name resolves to a pay-per-click website, showing advertisements for websites offering clothing for women that are in competition with the Complainant’s business, which, as set out above, does not represent a bona fide offering of goods or services and, as such, amounts to bad faith use.
Moreover, according to prior UDRP panel decisions, typosquatting tends to induce an intention on the part of the respondent to confuse users seeking or expecting the complainant, by attracting Internet traffic and diverting it to the websites of the complainant’s competitors, which is a demonstration of bad faith use (see again, e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043).
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s trademark, given that the MONARI trademark is not comprised of dictionary terms and that the Respondent registered a very slight variation of the Complainant’s trademark by a simple duplication of the letter “n” (typosquatting), and also given the use the Respondent made of the disputed domain name (hosting of a pay-per-click website).
In addition, it is established that the Respondent has repeatedly taken unfair advantage of the trademarks of third parties by using confusingly similar domain names.
Consequently, in view of all the circumstances of this case and despite the age of the registration of the disputed domain name, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii) and 4(b).
Therefore, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
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 <monnari.com> be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: September 5, 2019