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 <moncler.com>, 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:

Click here to view the table.

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 establishedprima 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.

The decision is available here.

First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.