Moncler S.p.A. v. Trani Johanna / newbeta
Claim Number: FA1703001721603
Complainant is Moncler S.p.A. (“Complainant”), represented by Luca Barbero of Studio Barbero S.r.l., Italy. Respondent is Trani Johanna / newbeta (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2017; the Forum received payment on March 14, 2017.
On March 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@2016monclerxmas.us, postmaster@moncleroutwear.us, postmaster@monclervipstore.us, and postmaster@monclerxmas.us. Also on March 21, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global retailer of luxury outerwear and sportswear. Complainant uses the MONCLER mark in conjunction with its business. Complainant registered the MONCLER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 803,943, registered Feb. 15, 1966). Complainant also registered the MONCLER mark with the World Intellectual Property Organization (“WIPO”) (e.g., Reg. No. 269298, registered May 11, 1963) and the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 003554656, registered Feb. 11, 2005). Respondent’s <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> are confusingly similar to Complainant’s MONCLER mark because the mark is incorporated in its entirety, adding generic terms (e.g., “xmas”, “outwear”, “vip”, “store”), the number “2016”, and the “.us” country code top level domain (“ccTLD”).
Respondent has no rights or legitimate interests in <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us>. Respondent is not commonly known by the domain names. Complainant has not authorized or licensed Respondent to use the MONCLER mark. Nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> resolve to websites offering counterfeit products of Complainant, displaying Complainant’s official images and marks.
Respondent registered and is using <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> in bad faith. Respondent registered four domain names infringing on Complainant’s mark in this case, along with 205 additional domain names infringing on Complainant’s mark using different top level domains (“TLDs”), showing a pattern of bad faith registration. Two of the disputed domain names, <moncleroutwear.us> and <monclervipstore.us>, are currently suspended pursuant to a URS determination, further showing bad faith registration. The disputed domain names attract Internet users for Respondent’s commercial gain, thereby creating confusion with Internet users as to Respondent’s affiliation with Complainant. Respondent registered <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> with actual knowledge of Complainant and its rights to the MONCLER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Moncler S.p.A., is a global retailer of luxury outerwear and sportswear. Complainant uses the MONCLER mark in conjunction with its business. Complainant registered the MONCLER mark with the USPTO (e.g., Reg. No. 803,943, registered Feb. 15, 1966). Complainant also registered the MONCLER mark with the WIPO (e.g., Reg. No. 269298, registered May 11, \1963) and the EUIPO (e.g., Reg. No. 003554656, registered Feb. 11, 2005). Respondent’s <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> are confusingly similar to Complainant’s MONCLER mark.
Respondent, Trani Johanna / newbeta, registered <2016monclerxmas.us> on December 6, 2016: <moncleroutwear.us> and <monclervipstore.us> on December 9, 2016: and <monclerxmas.us> on November 30, 2016.
Respondent has no rights or legitimate interests in <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us>. Respondent’s domains resolve to websites offering counterfeit products of Complainant, displaying Complainant’s official images and marks.
Respondent registered and is using <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> in bad faith. Respondent registered four domain names infringing on Complainant’s mark in this case, along with 205 additional domain names infringing on Complainant’s mark using different top level domains (“TLDs”), showing a pattern of bad faith registration. Two of the disputed domain names, <moncleroutwear.us> and <monclervipstore.us>, are currently suspended pursuant to a URS determination, further showing bad faith registration.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the MONCLER mark through registration with USPTO, WIPO and EUIPO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant contends that Respondent’s <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> are confusingly similar to Complainant’s MONCLER mark because the mark is incorporated in its entirety, adding generic terms (e.g., “xmas”, “outwear”, “vip”, “store”), the number “2016”, and the “.us” ccTLD.
Respondent has no rights or legitimate interests in <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us>. Complainant has not authorized Respondent to use the MONCLER mark. Respondent is not affiliated with Complainant. Respondent is not commonly known by the disputed domain names. The WHOIS information lists “Trani Johanna” of “newbeta” as the registrant. Generally, a respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (Given the WHOIS information for the disputed domain names, Respondent is not commonly known by the disputed domain names).
Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> resolve to websites offering counterfeit products of Complainant, displaying Complainant’s official images and marks. “Respondent’s use of the confusingly similar domain name to sell counterfeit versions of [c]omplainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).” Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002).
Two of the disputed domain names, <moncleroutwear.us>, <monclervipstore.us>, are currently suspended pursuant to a URS determination. Complainant urges that this fact should not deter this Panel from finding Respondent has the requisite bad faith for these domain names. In the Panel's opinion, it is Respondent's use prior to the suspension that is the focus of the bad faith question, namely during the period when Respondent was in a position to exercise control over the disputed domain names. Yves Saint Laurent v. Khita Kongsansatien, D2016-0496 (WIPO Apr. 18, 2016). The Panel may therefore consider the “use” of <moncleroutwear.us>, <monclervipstore.us> as it existed prior to their URS suspension.
Respondent registered and used <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> in bad faith. Respondent registered four domain names using Complainant’s mark in this case, along with 205 additional domain names using Complainant’s mark and different TLDs, showing a pattern of bad faith registration. A respondent’s registration of multiple domain names in a current proceeding and prior adverse UDRP history is evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii). See, e.g., Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA 1558045 (Forum July 10, 2014); see also The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA 1576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”). Because of Respondent’s multiple domain name registrations, the Panel finds that Respondent has a pattern of bad faith registration under the Policy.
Respondent’s efforts to sell counterfeit versions of Complainant’s goods shows bad faith under Policy ¶ 4(b)(iv). Panels have agreed that counterfeit use amounts to bad faith. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, Respondent registered <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> with actual knowledge of Complainant and its rights to the MONCLER mark, thereby showing bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <2016monclerxmas.us>, <moncleroutwear.us>, <monclervipstore.us>, and <monclerxmas.us> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 3, 2007
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