Moncler S.P.A. v. Trani Johanna et al.
Claim Number: FA1701001714210
Complainant: Moncler S.P.A. of Milano, Italy.
Complainant Representative:
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC of Atlanta, Georgia, United States of America.
Respondent: Trani Johanna of Shanghai, Fujian, International, CN.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: DotSite Inc.; DotStore Inc.; GMO Registry, Inc.; Pearl Woods, LLC; Snow Sky, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
James Bridgeman, as Examiner.
Complainant submitted: January 25, 2017
Commencement: January 27, 2017
Default Date: February 13, 2017
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 has provided clear and convincing evidence that it has rights in the trade mark MONCLER inter alia through its U.S. Trade Mark Registration No. 803,943, registered February 15, 1966 in international class 25, for use with clothing. Complainant has furthermore provided evidence in the form of a print out of its website that said mark is in current use by Complainant.
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.
Identical or Confusingly Similar [URS1.2.6.1]
Having compared Complainant’s MONCLER mark and the disputed domain names this Panel finds that each of the disputed domain names is either identical to or confusingly similar to the MONCLER trademark.
· The gTLD extensions The gTLD extensions <.shop >, <.store>; <.today>; <.city>; <.today>, <.site> may be ignored for the purpose of comparison of Complainant’s mark and the disputed domain names.may be ignored for the purpose of comparison.
· The disputed domain names <outletmoncler.shop> and <outletmoncler.store> are confusingly similar to Complainant’s MONCLER mark as each consists of the MONCLEAR mark in combination with a non-distinctive first element: This Examiner finds that in each case the mark MONCLER is the dominant and distinctive element of the domain name.
· All other domain names in dispute (which are listed above) are confusingly similar to Complainant’s mark as they each consist of the MONCLER mark as the initial element in combination with the non-distinctive following elements: disputed domain names consist of Complainant’s MONCLER mark as the principal, initial and dominant element followed by the following generic and/or descriptive second element and the gTLD extension: <berlin>, <best>, <deals>, <japan>, <jp>, <jp>, <mall>, <mall>, <mart>, <new>, <outlet>, <outletvip>, <onlinesell>, <online>, <sale>, <sell>, <shopping>. <spain> ; <vip>, <xmas> and <xmasjacket>. In each case Complainant’s mark is the dominant and distinctive element.
Respondents Rights or Legitimate Interest [URS 1.2.6.2]
Complainant has made out a clear and convincing prima facie case that Respondent has no rights or legitimate interest in the disputed domain names. In such circumstances the burden of production shifts to Respondent who has failed to respond. There is no evidence that Respondent has made any demonstrable preparations to use any of the domains in connection with a bona fide offering of goods or services. The evidence in fact proves the contrary i.e. that the Respondent is making bad faith use of the domain names to offer competing or counterfeit goods to the public taking advantage of Complainant’s goodwill and trademark; the Whois records show that Registrant is known as “Trani Johanna” and not by the disputed domain names or any similar name.
Bad Faith Registration and Use [URS 1.2.6.3]
Complainant has made out a clear and convincing case that Respondent registered and is using the disputed domain names in bad faith without Complainant’s permission, to resolve to websites that purport to sell MONCLER branded clothing but which Complainant believes to be counterfeit because they use Complainant’s photographs without permission; some products bearing MONCLER trademark are not actually manufactured or distributed by Complainant. In other instances indicated below, Respondent is using the disputed domain name to offer for sale garments and accessories which compete with Complainant’s products and is thereby using the disputed domain names to take predatory advantage of Complainant’s goodwill and reputation. It is improbable that there is any bona fide explanation as to why any of the disputed domain names which are so confusingly similar to Complainant’s distinctive mark was chosen and is being used in the fashion described in the Complaint.
Complainant has furnished screenshots of the websites to which the disputed domain names resolve, downloaded on January 12 and January 25 2017 each of which illustrates that the websites to which the disputed domain names resolve are being used by Respondent to offer garments similar to and competing with Complainant’s products and a number of the websites furthermore use Complainant’s mark in such a way as to give the impression that the website is associated with Complainant.
After reviewing the Complainant’s submissions, this Examiner determines that Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. This Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<monclerberlin.store><monclerbest.store><monclerdeals.store><monclerjapan.today><monclerjp.city><monclerjp.today><monclermall.shop><monclermall.store><monclermart.shop><monclermart.store><monclernew.shop><monclernew.store><moncleronline.shop><moncleronline.store><moncleronlinesell.site><moncleronlinesell.today><moncleroutlet.shop><moncleroutletvip.shop><moncleroutletvip.store><monclersale.store><monclersell.today><monclerselll.today><monclershopping.today><monclerspain.shop><monclerspain.store><monclervip.shop><monclerxmas.shop><monclerxmas.store><monclerxmasjacket.store><outletmoncler.shop><outletmoncler.store>
James Bridgeman, Examiner
Dated: February 14, 2017
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