Westmore · UDRP DecisionMoschinooutletmall.com
The Panel ordered transfer of <moschinooutletmall.com>. It found the domain confusingly similar to the Complainant’s MOSCHINO trademark because it incorporated the mark in full and merely added the descriptive terms “outlet” and “mall.” The Respondent lacked rights or legitimate interests because the use was unauthorized, commercial, and did not disclose the absence of affiliation. Bad faith was established from the Respondent’s evident awareness of the well-known MOSCHINO mark and use of the domain to attract customers for commercial sales of products appearing to be counterfeit or otherwise unlawfully bearing the mark.
The timeline behind moschinooutletmall.com
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The decision illustrates the straightforward application of the UDRP where a well-known fashion mark is incorporated in full with retail-oriented terms and used for an unauthorized commercial storefront. The terms “outlet” and “mall” did not distinguish the domain; in context, they reinforced its apparent connection to branded retail sales. The website’s reproduction of the mark, commercial purpose, lack of authorization, and absence of an affiliation disclaimer were central across the rights-or-legitimate-interests and bad-faith analyses.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Moschino S.p.A. v. He Jianyi Case No. D2015-1193 1. The Parties The Complainant is Moschino S.p.A. of Milano, Italy, represented by Studio Torta S.p.A., Italy. The Respondent is He Jianyi of Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name <moschinooutletmall.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2015. On July 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2015. The Center appointed Daniel Kraus as the sole panelist in this matter on August 26, 2015. 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, Moschino S.p.A., is an Italian company founded in the early 1980s by Franco Moschino, which business consists of clothing and related fashion goods such as belts, bags, eyeglasses, perfumes and mobile covers, which are sold worldwide and online. The Complainant has been using the MOSCHINO mark in connection with its goods since the early 1980s. The Complainant is the owner of multiple trademark registrations for the mark MOSCHINO around the world, such as, but not limited to, the following: Community Trademark (“CTM”) Registration No. 177675 for MOSCHINO (word mark), registered on November 13, 1998; CTM Registration No. 6611561 for MOSCHINO (word mark), registered on October 15, 2008; International Trademark Registration No. 572492 for MOSCHINO (word mark), registered on June 27, 1991. The Complainant also has several trademarks registered in Hong Kong, China and in the United States of America (“USA”). Through extensive use and advertising around the world, the MOSCHINO trademark has generated vast goodwill and has become famous in connection with luxury goods. The Complainant also developed a significant presence on the Internet and is the owner of multiple domain names, which contain MOSCHINO, for example: <moschino.com>. The disputed domain name was registered on October 16, 2014. The disputed domain name leads Internet users to a website that offers for sale what seem to be counterfeit goods bearing the Complainant’s MOSCHINO mark. Prior to the filing of its Complaint, the Complainant sent the Respondent a cease and desist letter, to which no response was received. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is identical or confusingly similar to the MOSCHINO trademark, in which the Complainant has rights, as it incorporates the MOSCHINO trademark as a whole. The Complainant further argues that the fact that the disputed domain name includes the non-distinctive elements “outlet” and “mall” does not affect the confusing similarity that exists between the disputed domain name and the MOSCHINO trademark. The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name; that it has not licensed or otherwise permitted the Respondent to use its MOSCHINO trademark and that it is not affiliated with or otherwise connected to the Respondent. The Complainant also argues that the Respondent is not generally known by the disputed domain name, and has acquired no trademark rights in MOSCHINO. The Complainant further contends that it is globally famous and has had its registered trademarks for over 25 years. Given the international fame of the Complainant’s MOSCHINO brand, the Complainant argues that it is impossible that the Respondent was not aware of the Complainant or its activities when the disputed domain name was registered. Further arguments include the fact that the Respondent failed to answer the Complainant’s cease and desist letter sent on June 8, 2015; that the website to which the disputed domain name leads presents a business-to-customer platform providing branded MOSCHINO goods for extremely low prices and quality, and that those products seem to be counterfeit goods, which causes huge damage to the Complainant’s MOSCHINO trademarks, goodwill and reputation. It appears obvious to the Complainant that the Respondent registered the disputed domain name for the sole purpose of attracting the Complainant’s customers, and misleading them. According to the Complainant, the disputed domain name <moschinooutletmall.com> was registered and is used in bad faith. For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) The disputed 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 disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel has no doubt that MOSCHINO is a trademark directly connected with the Complainant’s activities in the clothing and related fashion goods business worldwide. Annexes 8 and 9 to the Complaint show dozens of registrations of MOSCHINO trademarks obtained by the Complainant worldwide since 1983. The trademark MOSCHINO is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark by the addition of the words “outlet” and “mall” after the trademark MOSCHINO, as well as the generic top-level domain (“gTLD”) “.com”. Previous UDRP decisions have demonstrated that descriptive additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd ., WIPO Case No. D2000-0437 ; The British Broadcasting Corporation v. Jaime Renteria , WIPO Case No. D2000-0050 ; Volvo Trademark Holding AB v. SC-RAD Inc ., WIPO Case No. D2003-0601 ; Wal-Mart Stores, Inc. v. Lars Stork , WIPO Case No. D2000-0628 ; America Online, Inc. v. Dolphin@Heart , WIPO Case No. D2000-0713 ; AltaVista Company v. S.M.A., Inc ., WIPO Case No. D2000-0927 ; HUGO BOSS Trade Mark Management GmbH & Co. KG v. Guanjing, daziran, WIPO Case No. D2015-0901 ). It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples (without limitation) of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name. The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent has been using the disputed domain name for the commercial purpose of selling goods under the Complainant’s brand, without authorization, and with no disclosure as to this fact on the website. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in 2014) the trademark MOSCHINO was already evidently well known worldwide and directly connected to the Complainant’s activities in the clothing business. The disputed domain name encompasses the trademark MOSCHINO, together with the descriptive words “outlet” and “mall”. The website to which the disputed domain name is linked reproduces the Complainant’s trademark MOSCHINO, and appears to sell cheap counterfeit products under the MOSCHINO brand. Therefore, the Panel concludes that it cannot be considered that the Respondent had not been aware of the Complainant’s trademark at the time of registration, and that the use of the expression “moschinooutletmall” is not a mere coincidence. Besides, the use of the disputed domain name to sell cheap counterfeit MOSCHINO products or products unlawfully incorporating the MOSCHINO trademark indicates opportunistic bad faith registration and use which takes unfair advantage of the reputation in the Complainant’s trademarks ( Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing , WIPO Case No. D2010-0746 ; Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca , WIPO Case No. D2010-0258 ; Nintendo of America, Inc. v. Gray West International , WIPO Case No. D2000-1219 ). The Respondents’ websites offer to sell products which can only be targeted at commercial gain. In the circumstances, the Panel holds that the third limb of paragraph 4(a) is also established. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <moschinooutletmall.com> be transferred to the Complainant. Daniel Kraus Sole Panelist Date: September 9, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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