<2016moncleroutlet.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2017, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are all registered in the name of the Respondents and the contact details are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to each disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 Respondents of the Complaint, and the proceedings commenced on February 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 16, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 27, 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.
4. Factual Background
The Complainant, or its predecessor, was established in France in 1952. Initially, it manufactured equipment for mountain expeditions. In the 1960s, the Complainant began to specialize in clothing for high altitude mountaineering. In the 1980s, it expanded its business further into luxury fashion clothing.
According to the Complaint, sales by reference to the trademark, MONCLER, were EUR 880 million worldwide by the end of 2015. Some EUR 333 million were achieved in "Asia" and around EUR 270 million in "Europe". The Complainant has also spent some EUR 57.8 million in advertising and promotion.
Amongst other things, the Complainant has registered the trademark MONCLER as follows:
- International Trademark Registration for MONCLER (word mark) No. 269298 registered on May 11, 1963 and duly renewed thereafter in classes 20, 22, 24 and 25;
- Japanese Trademark Registration for MONCLER (word mark) No. 0791558 registered on August 23, 1968 in classes 6, 8, 9, 18, 19, 20, 21 and 22;
- International Trademark Registration for MONCLER (word mark) No. 504072 registered on June 20, 1986, and duly renewed thereafter in classes 9, 18, 20, 25 and 28;
- International Trademark Registration for MONCLER (figurative mark) No. 991914 registered on October 13, 2008 in classes 3, 9, 14, 18, 25, 28 and 35;
- European Union Trademark Registration for MONCLER (word mark) No. 003554656 registered on February 2, 2005 in class 3; and
- European Union Trademark Registration for MONCLER (word mark) No. 005796594 registered on January 28, 2008 in classes 3, 9, 14, 16, 18, 22, 24, 25 and 28.
The International Trademark Registrations cover numerous European countries and, in addition, Egypt, Algeria, Morocco, Tunisia, Viet Nam and others.
Apart from the disputed domain names <monclermadrid.info> and <monclermadrid.biz>, all of the disputed domain names resolve to a website which appears to offer MONCLER-brand garments for sale. The Complainant says these websites are unauthorized. It also contends that the garments offered for sale are, or are likely to be, counterfeit in view of the prices being claimed. For example, the MONCLER CLIO is offered for sale from the Complainant's official website at EUR 1,150, but is offered for sale from the Respondents' websites for EUR 332 (claiming to be discounted from EUR 833).
The two disputed domain names, <monclermadrid.info> and <monclermadrid.biz>, resolve to parking pages. The parking pages include click-through links for, amongst other things, clothing brands other than those of the Complainant.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, the complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs records (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Consolidation of Complaints
The Complainant has requested consolidation of its complaints as the details of the registrants of the disputed domain names are different to an extent.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel's powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
In the present case, the individual registrant of all of the disputed domain names is Ndiaye Therese. In a number of cases, but not many, a registrant organization is also given, "newbeta". In the case of all the disputed domain names, the street address of the registrant is given as rue Saint Pierre. In those cases where Ndiaye Therese is the sole registrant, her address is given as Metz in France. In some of the cases where "newbeta" is identified as the registrant organization, the address is stated to be in Okoyama, Japan. In the other cases where "newbeta" is given as the registrant organization, the address is said to be in Tokyo Japan. It seems unlikely, however, that there would be a rue Saint Pierre, by that name, in either Tokyo or Okoyama. Moreover, disputed domain names have been registered in Ms. Ndiaye Therese's name alone (using the address in France) on the same day or shortly after disputed domain names have been registered in Ms. Ndiaye Therese's name with "newbeta" with one or the other addresses said to be in Japan. Further, in all cases, the email address for the registrant is the same. Each of the disputed domain names uses the Complainant's trademark MONCLER as its distinctive component. In these circumstances, the Panel is willing to accept that the Complainant has demonstrated a sufficient basis to find that the all of the disputed domain names are effectively under common control.
As all of the disputed domain names have the same distinctive element, the Complainant's trademark MONCLER, and essentially engage in the same conduct, it appears to the Panel to be fair and equitable to all Parties, and an efficient use of resources, to consolidate all of the disputed domain names in the one Complaint. For ease of reference, the Panel will refer just to the "Respondent" unless it becomes necessary in a particular case to distinguish between disputed domain names registered by Ms. Ndiaye Therese and those registered by her from, or as, "newbeta".
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MONCLER identified in Section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD"), or the country code Top-Level Domain ("ccTLD"), as a functional aspect of the domain name system: WIPO Overview 2.0,paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
There are 148 disputed domain names. Disregarding the gTLD or the ccTLD, each of the disputed domain names consists of the Complainant's trademark, MONCLER. In most cases, the disputed domain name consists of the trademark MONCLER followed by a descriptive element or a geographical element or, in some cases, both. For example, <monclerjapan.com>, <monclerjp.biz>, <monclerjpstore.com>, <moncleroutletjp.com> and <moncleres.cc>. In a few cases, the disputed domain name consists of a descriptive or geographic element followed by the Complainant's trademark MONCLER and, in some of these cases, a descriptive or geographical element also follows the trademark. For example, <2016moncler.com>, <2016moncleroutlet.com> and <cybermondaymoncler.info>.
In each of the disputed domain names, the Complainant's trademark MONCLER is incorporated in full and is clearly recognizable. It is the element which identifies the trade source of or suggested by the disputed domain name. For example, <moncleroutletjp.com> suggests a or the Japanese outlet or store for MONCLER products.
It has long been recognized under the Policy that the formulation of a disputed domain name in this way, combining the Complainant's trademark with descriptive or geographical elements in this fashion, is confusingly similar to the Complainant's trademark for the purposes of the Policy. See for example Telstra Corporation Limited v. Ozurls,
WIPO Case No. D2001-0046 and WIPO Overview 2.0, paragraph 1.9.
Accordingly, the Panel finds that the Complainant has established that each of the disputed domain names is confusingly similar to the Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or 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; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the Complainant's trademark in any of the disputed domain names. Nor is the Respondent affiliated with the Complainant. Plainly, the disputed domain names are not derived from either of the names used by the Respondent. As the Complainant points out, its trademark is an invented or "fancy" term, being constructed from elements in the name of the place where the Complainant was founded, Monestier-de-Clermont. The Complainant's trademark not a plainly descriptive or geographical term. There is no evidence to suggest that the Respondent has any registered trademarks for MONCLER in either of the countries, France or Japan, in which the Respondent has claimed to have an address. Indeed, given the registered trademarks which the Complainant holds in, or extending to the territory of, those two countries, it seems most unlikely that the Respondent would have such registered rights.
As noted above, two of the disputed domain name resolve to parking pages, <monclermadrid.info> and <monclermadrid.biz>. Those pages include amongst other things click-through links to other clothing or fashion purveyors. The use of the Complainant's trademark to resolve to a website which includes click-through links to the websites of potentially competitive websites does not qualify as a good faith offering of goods or services under the Policy. See for example WIPO Overview 2.0, paragraph 2.6. Nor is it a legitimate noncommercial or fair use of the trademark. Accordingly, the Complainant has established a clear prima facie case that the Respondent does not have a right or legitimate interest in either of these disputed domain names.
Shortly before the Complaint was filed, all the other disputed domain names resolved to websites which appeared to promote the Complainant's garments. The Complainant contends that the garments on offer are in fact counterfeit garments. The pricing may support that conclusion. Even if the garments are genuine products, however, the websites do not clearly state the nature of the association between the Complainant and the Respondent. To the contrary, many images and some of the wording convey the clear impression that the websites are official or licensed outlets of the Complainant's products. Such a form of use does not qualify as a legitimate form of use sufficient to qualify as a right or legitimate interest under the Policy. See for example WIPO Overview 2.0, paragraph 2.3.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also in respect of each disputed domain name.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,
WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As already noted, each disputed domain name consists of the Complainant's trademark, MONCLER, and descriptive and geographical elements.
The Complainant's trademark has been registered long before any of the disputed domain names, all of which were registered in the period from November 1, 2016 to December 28, 2016. The trademark MONCLER is not a directly descriptive term. It is a coined or "fancy" term. It has significance, particularly in relation to clothing, only as the trade source of apparel produced by the Complainant. In such circumstances, the Panel readily infers that the Respondent well knew of the Complainant's trademark before she registered any of the disputed domain names. The use made of all but two of the disputed domain names provides further support for that inference.
The Respondent has registered 148 disputed domain names based on the Complainant's MONCLER trademark in the space of two months. The Panel has no hesitation in finding that in doing so the Respondent has engaged in a pattern of conduct aimed at preventing the Complainant from reflecting its trademark in a domain name. Most importantly, the Respondent has engaged in that conduct in circumstances where it has no rights or legitimate interests in the disputed domain names. Furthermore, it appears that the Respondent has given false information about her registration details. As already noted, it is extremely unlikely that the Respondent has the same street address in Metz, France, Tokyo Japan and Okoyama Japan. Moreover, it has proved impossible to deliver correspondence or the official notice of the commencement of proceedings to the Respondent's supposed address in Metz, France.
In these circumstances, the Panel finds that the Respondent has registered each of the disputed domain names in bad faith. The way in which the disputed domain names have been used, as discussed in Section 5.C above, constitutes use in bad faith under the Policy.
Accordingly, the Panel finds that the Respondent has registered and used each of the disputed domain names in bad faith.