Moncler S.p.A. v. Ndiaye therese / newbeta
Claim Number: FA1703001721573
Complainant is Moncler S.p.A. (“Complainant”), represented by Luca Barbero of Studio Barbero S.r.l., Italy. Respondent is Ndiaye therese / newbeta (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <2016moncler.us>, <lovemoncler.us>, <monclercybermonday.us>, <monclerdeal.us>, <monclerdeals.us>, <monclergood.us>, <monclermart.us>, <monclerny.us>, <moncleronline.us>, <moncleroutlet.us>, <moncleroutletsale.us>, <moncleroutletvip.us>, <monclersalevip.us>, <monclerstore.us>, <monclervip.us>, <monclervipdeals.us>, <monclervipoutlet.us>, <outletmoncler.us>, <outletmonclers.us>, and <outletmonclervip.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2017; the Forum received payment on March 14, 2017.
On March 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <2016moncler.us>, <lovemoncler.us>, <monclercybermonday.us>, <monclerdeal.us>, <monclerdeals.us>, <monclergood.us>, <monclermart.us>, <monclerny.us>, <moncleronline.us>, <moncleroutlet.us>, <moncleroutletsale.us>, <moncleroutletvip.us>, <monclersalevip.us>, <monclerstore.us>, <monclervip.us>, <monclervipdeals.us>, <monclervipoutlet.us>, <outletmoncler.us>, <outletmonclers.us>, and <outletmonclervip.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@2016moncler.us, postmaster@lovemoncler.us, postmaster@monclercybermonday.us, postmaster@monclerdeal.us, postmaster@monclerdeals.us, postmaster@monclergood.us, postmaster@monclermart.us, postmaster@monclerny.us, postmaster@moncleronline.us, postmaster@moncleroutlet.us, postmaster@moncleroutletsale.us, postmaster@moncleroutletvip.us, postmaster@monclersalevip.us, postmaster@monclerstore.us, postmaster@monclervip.us, postmaster@monclervipdeals.us, postmaster@monclervipoutlet.us, postmaster@outletmoncler.us, postmaster@outletmonclers.us, and postmaster@outletmonclervip.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 National Arbitration Forum appointed Darryl C. Wilson, 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 sells luxury apparel. Complainant has rights in the MONCLER mark pursuant to its United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 803,943, registered Fed. 15, 1966). Respondent’s domain names are confusingly similar as they each incorporate the MONCLER mark entirely and merely add nondistinct terms like “outlet”, “sale”, "store", “online”, “ny” and “2016.” The domain names also add the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the domain names. First, the WHOIS information—along with all other information in the record—demonstrates that Respondent is not commonly known by the disputed domain names. Next, the domain names redirect to commercial websites publishing Complainant’s trademarks and official images, imitating the layout of Complainant’s official websites. Further, Respondent is likely offering counterfeit versions of Complainant’s products. Overall, Respondent’s use does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv).
Respondent registered or used the domain names in bad faith. Respondent has registered twenty domain names that infringe on Complainant’s rights, demonstrating a bad faith Policy ¶ 4(b)(ii) pattern. Respondent’s efforts to sell counterfeit versions of Complainant’s goods imputes bad faith under Policy ¶ 4(b)(iv). Additionally, under a nonexclusive analysis of Policy ¶ 4(a)(iii), it should be found that Respondent registered the domain names with false contact information, and Respondent had actual or constructive knowledge of Complainant—additional grounds for bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Moncler S.p.A., of Milano, Italy. Complainant is the owner of numerous international registrations for the mark MONCLER, which it has continuously used since at least as early as 1963, in connection with production and sales of luxury outerwear, sportswear, and accessories for adults and children of both genders in the clothing industry.
Respondent is Ndiaye therese / newbeta, of France and Japan. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes the following exact and/or approximate registration dates for the disputed domain names:
<2016moncler.us>................................................................................... Nov. 28, 2016;
<lovemoncler.us>.................................................................................... Nov. 28, 2016;
<monclercybermonday.us>................................................................. Nov. 26, 2016;
<monclerdeal.us>.................................................................................... Nov. 29, 2016;
<monclerdeals.us>................................................................................. Nov. 28, 2016;
<monclergood.us>.................................................................................. Dec. 15, 2016;
<monclermart.us>................................................................................... Nov. 30, 2016;
<monclerny.us>....................................................................................... Nov. 28, 2016;
<moncleronline.us>................................................................................ Nov. 30, 2016;
<moncleroutlet.us>................................................................................. Nov. 30, 2016;
<moncleroutletsale.us>........................................................................... Nov. 2, 2016;
<moncleroutletvip.us>............................................................................. Nov. 2, 2016;
<monclersalevip.us>................................................................................ Nov. 2, 2016;
<monclerstore.us>.................................................................................. Nov. 29, 2016;
<monclervip.us>...................................................................................... Nov. 28, 2016;
<monclervipdeals.us>............................................................................ Nov. 30, 2016;
<monclervipoutlet.us>........................................................................... Nov. 30, 2016;
<outletmoncler.us>................................................................................... Nov. 2, 2016;
<outletmonclers.us>................................................................................ Oct. 29, 2016;
<outletmonclervip.us>........................................................................... Nov. 30, 2016.
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 pursuant to its USPTO registration (Reg. No. 803,943, registered Fed. 15, 1966). Prior panels have stated, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.” See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). The Panel here finds that Complainant has established rights in the MONCLER mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain names are confusingly similar as they each incorporate the MONCLER mark entirely and merely add nondistinct terms like “outlet”, “sale”, "store", “online”, “ny” and “2016.” The domain names also add the ccTLD “.us.” The foregoing alterations have not been considered to add any distinction for the purposes of a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The Panel here finds that Respondent’s domain names are confusingly similar to the MONCLER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the domain names. First, Complainant notes that the WHOIS information—along with all other information in the record—demonstrates that Respondent is not commonly known by the disputed domain names. Complainant relies on the reasoning in Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006), where the panel looked to the totality of information in the record. Here, the WHOIS lists “Ndiaye therese / newbeta” as registrant of the domain names, and Respondent has not submitted any information to support its rights. The Panel here finds that Complainant has succeeded under Policy ¶ 4(c)(iii).
Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel here finds that Respondent has not sustained its burden in regards to Policy ¶ 4(c)(i).
Complainant contends that the domain names redirect to commercial websites publishing Complainant’s trademarks and official images, imitating the layout of Complainant’s official websites. Further, Complainant posits Respondent is likely offering counterfeit versions of Complainant’s products. Imitating a complainant’s website, and offering counterfeit products weighs against a respondent’s potential rights and legitimate interests. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). The Panel here finds that Respondent’s actions support the conclusion that Respondent is engaged in fraudulent usage of the domain names, presumably for commercial profit, which does not consist of any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent’s efforts to sell counterfeit versions of Complainant’s goods imputes bad faith under Policy ¶ 4(b)(iv). Past panels have found that counterfeit use amounts to bad faith under this prong. 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). The Panel here finds that the use of Complainant’s marks in the manner described above, and the offering of commensurate unauthorized products, is counterfeit use that clearly demonstrates Policy ¶ 4(b)(iv) attraction for commercial gain, and is therefore evidence of bad faith registration and use.
Lastly, under a nonexclusive analysis of Policy ¶ 4(a)(iii), Complainant insists it should be found that Respondent registered the domain names with false contact information, which is an additional basis for finding bad faith. Prior panels have found that false contact information may support a finding of bad faith. See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here, Complainant notes that Respondent’s postal address is “80 Rue Saint Pierre Metz” which is allegedly located in Japan and France, but Complainant’s representative ascertained that the registrant’s postal address in Japan does not exist and also the paper version of the Cease & Desist letter could not be delivered to the postal address allegedly located in France. Accordingly, the Panel here finds that Complainant has provided sufficient evidence to support a nonexclusive finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <2016moncler.us>, <lovemoncler.us>, <monclercybermonday.us>, <monclerdeal.us>, <monclerdeals.us>, <monclergood.us>, <monclermart.us>, <monclerny.us>, <moncleronline.us>, <moncleroutlet.us>, <moncleroutletsale.us>, <moncleroutletvip.us>, <monclersalevip.us>, <monclerstore.us>, <monclervip.us>, <monclervipdeals.us>, <monclervipoutlet.us>, <outletmoncler.us>, <outletmonclers.us>, and <outletmonclervip.us> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 3, 2017
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