03-Apr-2016
In a recent decision under the Uniform Domain Name Dispute Resolution
Policy (UDRP) before the World Intellectual Property Organization
(WIPO), a luxury fashion sportswear company obtained the transfer of 50
domain names incorporating its trade mark, which were being used to
point to websites either offering counterfeit products for sale or
containing pay-per-click links to competitors’ websites.
This case … shows how although the UDRP is not intended
to tackle every type of infringing activity online, it is often an
effective tool for trade mark holders to address websites selling
counterfeit goods where the domain name in question incorporates their
trade mark.
The Complainant was Moncler S.p.A. a luxury fashion sportswear
company based in Milan, Italy. Founded in 1952, the Complainant owns
over 500 trade mark registrations in the term “Moncler” in more than 100
jurisdictions around the world and is also the registrant of over 1,000
domain names containing the MONCLER trade mark, including
, where the Complainant operates its main website
available at www.moncler.com. The Complainant also has 184 boutiques worldwide and is also listed on the Italian stock exchange.
The respondents were three individuals based in China, Yao Tom, Lee
Fei and Geryi Wang (the Respondents). No other details about the
Respondents were known.
The disputed domain names (the Domain Names) were the following 50
domain names which consisted of the term “Moncler” together with generic
terms and/or numbers:
monclersaleie.com |
monclersaleukoutlet.com |
monclersaleireland.com |
monclersaleuk2015.com |
ukmoncleroutlet.com |
monclerukoutlet.com |
outletmoncleruk2015.com |
monclerukoutlet2015.com |
outletmoncler2015uk.com |
moncleruksaleoutlet.com |
outletmonclervipuk.com |
moncleruk2015.com |
itsoutletmoncler.com |
monclervipoutlet.com |
doudounemonclersolde.com |
monclervipoutletuk.com |
monclerforsaleuk.com |
monclervipukoutlet.com |
moncleroutletbest.com |
outletmonclerbest.com |
moncleroutletbestsale.com |
outletmonclerforsale.com |
moncleroutletcoats.com |
outletmonclerforuk.com |
moncleroutletforsale.com |
outletmoncleronline.com |
moncleroutletforuk.com |
outletmonclersaleuk.com |
moncleroutletie.com |
outletmonclersale2015.com |
moncleroutletjackets.com |
outletmonclerstore.com |
moncleroutletsaleie.com |
outletmonclerstoreuk.com |
moncleroutletsaleuk.com |
outletmoncleruk.com |
moncleroutletsale2015.com |
outletmoncleruksale.com |
moncleroutletse.com |
outletmonclerukstore.com |
moncleroutletuk.com |
outletmonclerus.com |
moncleroutletuksale.com |
outletmonclervip.com |
moncleroutletuk2015.com |
outletmonclervipsale.com |
moncleroutletvipuk.com |
outletmoncler2015.com |
monclersaleoutletuk.com |
outletsalemoncleruk.com |
Most of the Domain Names were resolving to a website mirroring the
Complainant’s official website, including text and images taken from the
Complainant’s official website, and offering counterfeit goods of the
Complainant’s products for sale. The rest of the Domain Names were
resolving to parking pages displaying pay-per-click links, including to
the Complainant’s competitors’ websites.
On December 9, 2015, the Complaint decided to file a Complaint with WIPO. The Respondents did not reply to the Complaint.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:
(i) The domain name registered by the respondent is identical or
confusingly similar to a trade mark or service mark in which the
complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith
Prior to examining each of the requirements set out above, the panel
considered the procedural issue of consolidation against multiple
respondents. Neither the UDRP Policy nor the Rules expressly provides
for consolidation of disputes against multiple respondents. However, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Second Edition (“WIPO Overview 2.0) states that panels deciding under
the UDRP have allowed consolidation in such cases where “(i) the domain
names or the websites to which they resolve are subject to common
control, and (ii) the consolidation would be fair and equitable to all
parties.”
The Complainant argued that the Domain Names contained common
registration elements and adduced evidence that most of them were
resolving to an identical website. The Complainant also argued that it
would be quite cumbersome and inequitable for the Complainant to
initiate three separate proceedings. The Panel was persuaded by the
arguments and evidence put forward by the Complainant and found that
consolidation was in the circumstances of this case appropriate.
Moving on to the substantive requirements under the UDRP, the first
requirement is two-fold, and requires a panel to assess, first, whether a
complainant has relevant trade mark rights, regardless of when or where
the trade mark was registered (although these factors may be relevant
for the purpose of the third limb under the UDRP, mainly bad faith
registration) and, secondly, whether the disputed domain name is
identical or confusingly similar to a complainant’s trade mark.
The Panel noted that the Complainant had not provided any evidence in
support of its trade mark registrations (such as a certificate or
print-out from an online database) other than a spreadsheet containing
the data about its trade mark registrations. The Panel however conducted
independent research and was able to corroborate that the Complainant
indeed held several trade mark registrations in the term “Moncler”,
including trade marks registered with the United States Patent and Trade
mark Office (USPTO). The Panel was therefore satisfied that the
Complainant had trade mark rights in the term “Moncler”.
As far as whether the Domain Names were identical or confusingly
similar to the MONCLER trade mark, the Panel noted that the Domain Names
wholly incorporated the MONCLER trade mark in its entirety and that
this was sufficient to establish identity or confusing similarity for
the purposes of the first requirement under the UDRP. The Panel further
found that the addition of generic terms, such as “outlet” or “for
sale”, was insufficient to avoid confusion with the Complainant’s trade
mark. Finally, the Top-Level Domain Name “.com” is generally disregarded
when assessing identity or confusing similarity as it is a technical
requirement of registration.
Accordingly, the Panel therefore found that Complainant had satisfied the first element of the UDRP.
Turning to the second requirement under the UDRP, and whether the
Respondents had rights or legitimate interests in the Domain Names, the
Panel found that the Complainant had established prima facie
that the Respondents did not have rights or legitimate interests in the
Domain Names. The Complainant had argued that the Respondents were not
“not known by the name MONCLER”, and that it had not authorized the
Respondents to include its trade mark in the Domain Names or to make any
other use of its trade mark. Furthermore, the Complainant argued that
the Respondents’ use of many of the Domain Names for websites offering
counterfeit goods for sale or in connection with PPC websites did not
give rise to rights or legitimate interests in the Domain Names. As a
result of their default, the Respondents were unable to rebut the
Complainant’s prima facie showing.
Accordingly, the Panel found that the Complainant had satisfied the second element of the UDRP.
Finally, as for the third requirement of the UDRP and whether the
Domain names were registered and used in bad faith, paragraph 4(b) of
the UDRP sets out a list of non-exhaustive circumstances that may be
indicative of bad faith, including: “(ii) you have registered the domain
name in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that
you have engaged in a pattern of such conduct” and “(iv) by using the
domain name, the respondent has intentionally attempted to attract, for
commercial gain, Internet users to the respondent’s website or other
online location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the respondent’s website or location or of a product or
service on the registrant’s website or location”.
The Panel found that the Respondents’ use of the Domain Names to
either resolve to websites offering counterfeit goods of the
Complainant’s products or to parking pages containing sponsored links to
the Complainant’s competitors constituted bad faith in accordance with
paragraph 4(b)(iv) of the UDRP.
Finally, the Panel found that by registering 50 Domain Names
containing the Complainant’s trade mark, the Respondents were engaging
in a “pattern” of conduct that also constituted bad faith, in accordance
with paragraph 4(b)(ii) of the Policy. The Panel’s finding was in line
with the consensus view amongst WIPO panellists, according to which “a
pattern of conduct can involve… a single case where the respondent has
registered multiple domain names which are similar to trade marks.” (paragraph 3.3 of WIPO Overview 2.0).
Accordingly, the Panel found that the Complainant had satisfied the third requirement of the UDRP.
The Panel therefore ordered the transfer of the Domain Names to the Complainant.
This case highlights how cybersquatting and counterfeiting often go
hand in hand. Cybersquatters often use domain names incorporating trade
marks to attract internet users to their websites with the purpose of
creating a veil of legitimacy and mislead internet users into purchasing
counterfeit products. It is therefore not surprising that, according to
WIPO, more than 20% of UDRP cases involve some type of counterfeiting
activity.
This case also shows how although the UDRP is not intended to tackle
every type of infringing activity online, it is often an effective tool
for trade mark holders to address websites selling counterfeit goods
where the domain name in question incorporates their trade mark. Whilst
the UDRP itself cannot assist in taking down the actual websites selling
counterfeit goods, it can certainly make them harder to stumble upon by
effectively cutting off the domain names that point to them.
Finally, the case also illustrates how the UDRP has developed built
in procedural mechanisms that allow complainants to recover a
considerable number of domain names in a single complaint, even if they
have been registered by multiple respondents where it can be shown that
they are acting in concert or are one and the same person. Another
procedural advantage of the UDRP is that it allows trade mark holders to
bring their complaints regardless of where the registrants are located
(which is particularly useful as cybersquatters and/or online
counterfeiters are often located in other countries), thereby saving
trade mark holders from lengthy and costly litigation in foreign courts.