WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

APM Monaco SAM v. Hong Min Lin, Yiwu Yaoyan E-commerce Co., Ltd.

Case No. D2019-1253

1. The Parties

The Complainant is APM Monaco SAM, Monaco, represented by Advance China IP Law Office, China.

The Respondent is Hong Min Lin, Yiwu Yaoyan E-commerce Co., Ltd. (“鸿敏 林, 义乌市耀言电子商务有限公司”), China.

2. The Domain Name and Registrar

The disputed domain name <monaco-apm.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 8, 2019.

The Center verified that the Complaint, together with the amended 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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2019.

The Center appointed Rachel Tan as the sole panelist in this matter on July 9, 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.

4. Factual Background

The Complainant is a contemporary fashion jewelry brand headquartered in Monaco. Founded in 1982, the Complainant was named after the founder and jewelry designer, Ariane Prette. 30 years later, the Complainant operates over 200 retail stores spanning 25 countries and territories, including Monaco, China, Japan, Australia, France, and the United States of America (“United States”). The Complainant has appointed celebrities and social media influencers as its brand ambassadors including the famous Chinese actress, Yao Chen.

The Complainant trades under the APM MONACO trade mark and owns the following registration:

International Registration No. 1280118, registered on September 17, 2015, covering amongst others “jewelry goods, jewelry trade goods, amulets [jewelry], rings [jewelry]” in International Class 14. The International Registration designates a large number of countries including China, the European Union, Japan, and the United States.

The Complainant holds the domain name <apm-monaco.com> which re-directs to its official website “www.apm.mc”. The Complainant’s official Chinese website can be accessed from the domain name <apm-monaco.cn>.

The disputed domain name was registered on December 10, 2018. The disputed domain name resolves to an inactive website which states “[o]ops, something went wrong” and “[t]his shop is unavailable”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its prior APM MONACO trade mark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant further contends that the Respondent registered the disputed domain name with full knowledge of the Complainant and its trade mark, which constitutes bad faith. Moreover, the Respondent registered and is using the disputed domain name primarily for the purpose of disrupting the normal business of the Complainant, which constitutes bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the APM MONACO trade mark.

The Panel notes that the disputed domain name fully encompasses both word elements of the Complainant’s APM MONACO trade mark but in reverse order. The two words are also separated by a hyphen. Both word elements, “monaco” and “apm”, are recognizable in the disputed domain name. The hyphen mirrors the fact that the Complainant’s trade mark is made up of two words. It is permissible for the Panel to ignore the Top-Level Domain (“TLD”) suffix, in this case, “.com”.

In cases where a domain name incorporates the entirety of a trade mark, 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 UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Given that the Complainant’s APM MONACO trade mark is instantly recognizable within the disputed domain name, the Panel finds that it is confusingly similar to the Complainant’s mark.

Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In circumstances where the Complainant possesses exclusive rights to the APM MONACO trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.

The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “monaco-apm”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to the term “monaco-apm”. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s APM MONACO trade mark or register the disputed domain name. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s APM MONACO trade mark is widely used and registered around the world. In particular, the Complainant operates retail stores in multiple cities throughout China and has an active online presence there.

The Respondent appears to be an individual located in Yiwu city, China. The Respondent registered the disputed domain name well after the registration of the Complainant’s APM MONACO trade mark and the opening of its first store in China. By 2018, the Complainant had a substantial commercial operation in China and would have acquired a high degree of fame in the country.

The disputed domain name currently resolves to an inactive website containing statements which lead Internet users to believe that the website has malfunctioned. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Panelists will look at the totality of the circumstances in each case and consider the relevant factors, which include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0.

In the present case, the Complainant’s APM MONACO trade mark is inherently distinctive and evidence has been submitted to prove that the mark has gained a high reputation in China. The Panel notes that the Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Moreover, there is nothing to suggest that the Respondent could make good faith use of the disputed domain name.

Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

7. Decision

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 <monaco-apm.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: July 23, 2019