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Lilly ICOS LLC v. Saban Mihailovic [2005] GENDND 356 (27 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moncler S.p.A. v. Bestinfo

Case No. D2004-1049

1. The Parties

The Complainant is Moncler S.p.A., Milan, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Bestinfo, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <moncler.com> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2004. On December 13, 2004, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the domain name at issue. On December 13, 2004, R&K Global Business Services, Inc. d/b/a 000Domains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2005.

The Center appointed Thomas Legler as the Sole Panelist in this matter on January 25, 2005. 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 leading Italian company in the field of sportswear and the owner of the trademark “MONCLER” in many countries of the world (Annex 1).

It has been the holder of the international trademark “MONCLER” (No. 269298) since 1963 in classes 20, 22, 24 and 25 (Annex 2). Furthermore, it has been the registrant of the US Trademark No. 803943 since 1964 in class 39 (Annex 4).

Complainant’s company was founded in 1952 in France. For more than 50 years of activity, the company reached a global turnover of 70 million Euros (2002). It sells mostly winter sporting clothes and has about 2000 shops in Italy, France, Germany, Japan and the United States.

Little is known about the Respondent. Pursuant to Annex 8, Respondent Domain Name <moncler.com> links to a website containing links to companies offering various products and services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of a famous trademark as a search under “Moncler” with the search engines AltaVista or Google would easily confirm. It indicates that this fact is also reflected in numerous international press articles which it encloses as evidence (Annex 5). Pursuant to the Complainant, “Moncler” winter sporting clothes enjoy a worldwide reputation. “Moncler” not only has been the official uniform of the French team in the 1968 winter Olympic games in Grenoble and equipped the expeditions to the top of the Karakoroum (1954) and the Makalù (1955) mountains, but, in the 1980s, its quilted jackets became the uniform of the so called “paninari” or the “sandwich generation” (young boys frequenting sandwich bars and wearing fashionable clothes). Nowadays the company remains, pursuant to the Complainant, a leader of this specific market.

The Complainant indicates that there is no way that Respondent may no have been aware of the trade name and trademark “MONCLER” and that therefore registration may only have occurred in bad faith (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163).

According to Complainant, the trademark in question is so obviously connected with a product, that its very use by someone with no connection with the product suggests opportunistic bad faith (Parfums Christian Dior v. Javier Garcia Quintas and christiandior.net, WIPO Case No. D2000-0226). Even in a case where the trademark involved was somewhat less famous than “Veuve Cliquot” or “Christian Dior”, it was decided that the Respondent knew of or should have known of the Complaint’s trademark and services at the time it registered the domain name, (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

Moreover, the Complainant indicates that upon information and belief, Respondent has no rights or legitimate interest in respect of the Domain Name, in particular

- Respondent is not associated in any way with Complainant or its distribution network;

- Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name “Moncler”;

- There is no evidence of a bona fide non-commercial or other legitimate fair use by the Respondent.

The only use made of the Domain Name is to link it to a variety of other websites, some of them selling products in direct competition with Complainant. This shows Respondent’s bad faith. Finally, Respondent trades on the international fame of the trademark “MONCLER” to divert traffic to its own website, which also shows its bad faith.

The Complainant therefore requests the transfer of the Domain Name to Moncler S.p.A.

B. Respondent

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

6. Discussion and Findings

To qualify for a cancellation or a transfer of the Domain Name, the Complainant must prove each element of Paragraph 4(a) of the Policy, namely:

(i) The 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name which contains the essential part of Complainant’s registered trademark, “MONCLER” and is therefore considered identical to Complainant’s mark. Complainant has therefore satisfied the first condition set out in Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to Paragraph 4(c) of the Policy, any of the following circumstances may demonstrate the Respondent’s rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii):

(i) before any notice of the dispute, the Respondent’s use or demonstrable preparations to use the domain or a name corresponding to the Domain Name in connection of a bona fide offering of goods or services;

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for a commercial gain to misleadingly divert consumers or to harnish the trademark or service mark at issue.

Under the given circumstances, the Panel has to verify whether Respondent is using the Domain Name in connection with a bona fide offering of goods or services in the sense of Paragraph 4(c)(i) of the Policy. The Respondent seems to run a list of business links under the Domain Name. This is in itself not forbidden and may in principle constitute a bona fide offering of goods or services. However, in the present case, the Respondent uses a well-known trademark as Domain Name for its website (the Panel has no doubt that the Respondent was aware or should have been aware of the well-known character of the trademark at stake, all the more that it has been registered in the United States, Respondent’s domicile, since 1963). The (ab)use of a well-known trademark usually triggering Internet traffic to the respective website cannot be considered as bona fide. Moreover, due to its default in the present procedure, the Respondent failed to inform the Panel of its actual intentions when choosing and registering the Domain Name pointing to its list of business links.

Regarding Paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name”. Furthermore, the Respondent did not submit any evidence that it is the owner of a company having the Domain Name as its corporate name and that it is commonly known by such name.

Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of Paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

The Panel first holds that there are no circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant for a valuable consideration in excess of its out of pocket costs (Paragraph 4(b)(i)).

However, the fact that the trademark “MONCLER” is well-known and that Respondent was or should have been aware of this (since the trademark is registered in the US, where Respondent is domiciled, since 1963), if he would have carried out a trademark search, constitutes an element indicating bad faith.

The Panel has also the impression that Respondent tries to profit from the well-known character of the Complainant to attract, for commercial gain, Internet users to its website (National Football League Properties Inc. and Charger’s Football Company v. One Sex Entertainment Company, A.K.A, Charger Girls, WIPO Case No. D2000-0118; Motorola Inc. v. Newgate Internet Inc., WIPO Case No. D2000-0079; Nokia Corporation v. Nokia Girls.com A.K.A IBCC, WIPO Case No. D2000-0102).

Moreover, the Respondent gives access to links leading to offerings competing with those of the Complainant (clothes).

Finally, the Panel adds that the fact that the Respondent did not file a Response assists the Panel, under the given circumstances, in finding bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <moncler.com> be transferred to the Complainant.

Dr. Thomas Legler
Sole Panelist

Dated: February 8, 2005