Moncler S.P.A. v.
Claim Number: FA2105001944021
Complainant: Moncler S.P.A. of Padova, Italy.
Complainant Representative:
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC of Atlanta, Georgia, United States of America.
Respondent: Charles Lee of Hang Zhou Shi, Zhe Jiang, International, CN.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: GMO Registry, Inc.
Registrars: West263 International Limited
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: May 5, 2021
Commencement: May 7, 2021
Default Date: May 24, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant, founded in 1952, manufactures and distributes clothing and accessories through more than 300 stories in 41 countries; is listed on the Italian Stock Exchange; posted 2020 annual revenue of 1,440.4 million euros; and employs 4,569 people. Complainant is the registrant of the domain name (created May 14, 2003), where it offers clothing and accessories for sale. Complainant owns nearly 700 registrations worldwide for trademarks consisting of or including “MONCLER”, including U.S. Reg. No. 803,943 (registered February 15, 1966), for use in connection with clothing.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
Complainant, founded in 1952, manufactures and distributes clothing and accessories through more than 300 stories in 41 countries. Complainant is the registrant of the domain name (created May 14, 2003), where it offers clothing and accessories for sale. Complainant owns nearly 700 registrations worldwide for trademarks consisting of or including “MONCLER”, including U.S. Reg. No. 803,943 (registered February 15, 1966), for use in connection with clothing. The MONCLER trademark is registered with the Trademark Clearinghouse and is protected via hundreds of registrations worldwide.
Further, the domain name “is identical or confusingly similar” to the MONCLER Trademark, because the domain name contains this trademark (and only this trademark) in its entirety. WIPO Overview 3.0, section 1.7 (“in cases where a domain name incorporates the entirety of a trademark…, the domain name will normally be considered confusingly similar to that mark”).
With the exception of the addition of the gTLD “.shop”, as which does not form part of the Trade Mark MONCLER, the disputed domain name is confusingly similar to Complainant's registered trademark MONCLER.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Registrant has no legitimate right or interest to the domain name. The Registrant has made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (given Registrant’s public offer to sell the domain name); Registrant is not commonly known by the domain name (given that the Whois record does not identify Registrant as “Moncler”).
[URS 1.2.6.3] The domain name(s)
was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration 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 documented out-of-pocket costs directly related to the domain name; or
b.
Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such
conduct; or
c.
Registrant registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web site or other online location,
by creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Registrant’s web site or
location or of a product or service on that web site or location.
Determined: Finding for Complainant
By offering the domain name for sale for $1,000, Registrant is obviously not making a legitimate noncommercial or fair use of the domain name. By using the domain name in connection with a website advertising it for sale for $1,000, Registrant has acted in bad faith. 3S- Smart Software Solution GmbH v. et al., Forum 1930566 (offering domain for sale “is clear evidence of bad faith”); and DR. SEUSS ENTERPRISES, L.P. v. Daniel L. Devoe, Forum 1927077 (“offering it for sale [is] clearly intended to take predatory advantage of the goodwill belonging to Complainant for his/her own profit” and “general offer for sale to the public prove[s] on the balance of probabilities that the disputed domain name was intentionally chosen and registered and is being used in bad faith”). This is especially true given the strength of the MONCLER trademark (protected by hundreds of registrations for more than 55 years). WIPO Overview 3.0, section 3.1.1 (“distinctiveness of the complainant’s mark” is relevant to bad faith where domain name is offered for sale).
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<moncler.shop>
Antonina Pakharenko-Anderson, Examiner
Dated: May 26, 2021
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