The Complainant is Maple Mountain Group, Inc., United States of America (“United States”), represented by Demys Limited, United Kingdom.
The Respondents are Name Redacted1 .
The disputed domain names <moderesale.com> and <salemodere.com> (“Disputed Domain Names”) are registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 24, 2020.
The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. On April 30 and May 1, 2020, the Center received three email communications from a third party claiming that its personal details were used for purposes of registering the Disputed Domain Name <moderesale.com> without its authorization and knowledge. The Respondents did not submit any response. Accordingly, the Center notified the Parties, pursuant to paragraph 6 of the Rules, that it would proceed to panel appointment on May 25, 2020
The Center appointed Martin Schwimmer as the sole panelist in this matter on May 28, 2020. 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.
The Complainant is a manufacturer and distributor of personal care, health and wellness, and household products. It has used the trademark MODERE on a wide range of products since 2013. The Complainant’s registered trademarks include MODERE, United States Registration No. 4610685, registered on September 23, 2014.
The Disputed Domain Names were created in March and April of 2020. The Disputed Domain Names were used to host online shops that purport to sell products originating with the Complainant.
As set out below, the Panel is of the view that the two Respondents are more likely than not to be a single entity, and will therefore refer to the two Respondents collectively as a single entity.
The Complainant is a manufacturer and distributor of personal care, health and wellness, and household products, and its group has over 28 years of trading history.
The Complainant operates in nearly 30 countries, with corporate offices in, inter alia, Australia, Japan, Israel, Belgium, and the United States. The Complainant maintains a network of more than 500,000 independent distributors worldwide, with USD 6 billion of products sold globally each year
The Complainant is the proprietor of a large number of trademark registrations, in numerous jurisdictions, related to the term MODERE, including United States Registration Nos. 4610685 and 4682557, both for the mark MODERE, both filed on May 7, 2013, in international classes 3 and 35 respectively.
The Complainant’s group operates transactional websites from numerous generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), such as <modere.com.au>, <modere.ca>, <modere.eu>, <modere.co.jp>, and <modere.com>, the latter also being used for corporate email communications.
The Complainant contends that all the named Respondents are, in fact, the same entity and/or that all Disputed Domain Names are under common control. To support this view, the Complainant notes that both Disputed Domain Names are similar in construction – being made up of the similar terms “sale modere” and “modere sale”; both Disputed Domain Names are registered through the same registrar of record, both Dispute Domain Names were registered within a few weeks of each other; both Disputed Domain Names are configured with the same nameservers; both use the same ecommerce platform (“Big Commerce”); both Disputed Domain Names resolve to very similar content; both websites at the Disputed Domain Names share a similar look and feel; and, both Disputed Domain Names list the same articles for sale at the same price-level. Therefore, the Complainant believes it is reasonable to conclude that on balance it is more likely than not that the Disputed Domain Names are controlled by the same entity.
The Disputed Domain Names both resolve to online shops, which are hosted on the ecommerce platform Big Commerce (“www.bigcommerce.com”). The Complainant notes that neither website is associated with, endorsed by, or otherwise authorized by the Complainant. The Complainant observes that the websites associated with the Disputed Domain Names have a very similar look and feel to the Complainant’s own website, and feature what are apparently the Complainant’s products at a substantial discount.
The Complainant notes that the items offered on the Respondent’s sites are approximately a third of the Complainant’s suggested retail pricing. The Complainant respectfully submits that this is too low to be genuine.
The Respondent’s websites shared a misleadingly similar look and feel to the Complainant’s own website located at “www.modere.com”. No authorization, license or other permission has been granted to the Respondent to adopt the Complainant’s trading style.
The Respondent’s websites did not feature any form of disclaimer or make it clear that the Respondent is not associated with, endorsed by, or otherwise affiliated with the Complainant.
The Complainant notes that its marks pre-date the registration of the Disputed Domain Names by approximately seven years.
The Disputed Domain Names therefore only differ by the addition of the generic and descriptive word “sale”. The Complainant contends that this word does nothing to distinguish the Disputed Domain Names from the Complainant’s mark.
The Complainant has found no evidence that the Respondent has been commonly known as “modere”, “sale modere”, or “modere sale” prior to or after the registration of the Disputed Domain Names. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered trademarks.
The Complainant has found no evidence that the Respondent owns any trademarks incorporating the terms “modere”, “sale modere”, or “modere sale”. Equally, the Complainant has found no evidence that the Respondent has ever traded as “modere”, “sale modere”, or “modere sale”.
The Complainant contends that the Respondent’s adoption of the Complainant’s logos, copyright images, and general look-and-feel is highly indicative that the Respondent does not have a legitimate interest in the Disputed Domain Names. Equally, any such adoption of the Complainant’s trading style cannot confer a legitimate interest on the Respondent.
The Complainant further asserts that the Disputed Domain Names have not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, in terms of Policy paragraph 4(c)(iii), as the Complainant observes that, to the best of its knowledge, the websites associated with the Disputed Domain Names have always resolved to online shops. (Annex 4 to the Complaint).
More generally, the Complainant contends that given the fame of its marks (as outlined above) and the confusing similarity of the Disputed Domain Names to said marks, there is no conceivable use to which the Disputed Domain Names could be put now, or in the future, that would confer any legitimate interest upon the Respondent.
Given that the Complainant and its marks are well known, and that the Disputed Domain Names have been used to sell products directly related to the Complainant, the Complainant asserts that it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the Disputed Domain Names.
The Complainant asserts that by adopting the Complainant’s mark alongside a generic and descriptive word “sale”, the Disputed Domain Names are confusing in and of themselves, regardless of the content of the associated websites. The Complainant contends that the Respondent registered the Disputed Domain Names precisely in order to benefit from the inevitable confusion of web users who find the Disputed Domain Names directly or through a search engine.
The Respondent(s) did not reply to the Complainant’s contentions. As discussed in Annex 1 to this Decision, an individual contacted the Center to advise that their personal information appeared in the WhoIs details for the Disputed Domain Name <moderesale.com> as a result of identity theft. The communications did not substantively comment on the dispute.
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 4.11.1.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate. Here, the Complainant contends that all the named Respondents are, in fact, the same entity and/or that all Disputed Domain Names are under common control. To support this view, the Complainant notes that both Disputed Domain Names are similar in construction – being made up of the similar terms “sale modere” and “modere sale”; both Disputed Domain Names are registered through the same registrar of record, both Disputed Domain Names were registered within a few weeks of each other; both Disputed Domain Names use the same ecommerce platform (“Big Commerce”); both Disputed Domain Names resolve to very similar content; both websites to which the Disputed Domain Names resolve share a similar look and feel; and, both Disputed Domain Names list the same articles for sale at the same price-level.
The Panel has confirmed these allegations, and has examined the content of the two websites carefully. The Panel is of the view that it is probable that one entity used the precise same template for creating the two website to which the Disputed Domain Names resolve. Viewing the factors in their totality, the Panel believes it is reasonable to conclude that on balance it is more likely than not that the Disputed Domain Names are controlled by the same entity. The Panel notes that both sets of registrant contact data were used to provide the required notice of the proceeding, and thus in the un-likely event that there are two separate Respondents, both were notified properly. No evidence that pertained to solely one Disputed Domain Name was used in evaluating the other Disputed Domain Name, namely because the facts and circumstances surrounding each Disputed Domain Name are essentially identical to each other, other than the reversal of the two words in the Disputed Domain Name (which fact the Panel has determined to be immaterial to its determination). Accordingly, there is no prejudice to either “hypothetical” Respondent resulting from consolidation. Accordingly, consolidating the two Disputed Domain Name proceedings is appropriate.
The Complainant has provided evidence of its ownership of the MODERE trademark, including United States Registration Nos. 4610685 and 4682557 , both for the mark MODERE, registered September 23, 2014 and February 3, 2015, in international classes 3 and 35, respectively.
The Complainant’s use of the MODERE trademark is illustrated at <modere.com>.
The two Disputed Domain Names are connotatively equivalent. The Disputed Domain Names consist of the Complainant’s MODERE trademark, either preceded by or followed by the word “sale”. The Complainant’s MODERE trademark is recognizable within the Disputed Domain Names and the added term does not prevent a finding of confusingly similar to that mark in the Panel’s opinion. See section 1.8 of the WIPO Overview 3.0.
The Panel finds that the Complainant has demonstrated that the Disputed Domain Names are identical or confusingly similar to a service mark in which the Complainant has rights
The Complainant asserts that it has found no evidence that the Respondent has been commonly known as “modere”, “sale modere”, or “modere sale” prior to or after the registration of the Disputed Domain Names. Furthermore, the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered trademarks.
The Complainant provided evidence that both websites bear a similar look-and-feel to that of the Complainant’s websites. The Panel notes that the time of this decision, the website at the Disputed Domain Name <moderesale.com> indicates that the “store is currently unavailable”. However, screenshots of that website bares out the Complainant’s allegations. The websites reproduce product art allegedly under copyright of the Complainant. Goods bearing the Complainant’s marks are offered for sale at one-third of the Complainant’s retail price, suggesting that if goods were actually sold, such goods are likely counterfeit. The term “Modere Sale Shop” is prominently displayed at the top of the Disputed Domain Name <salemodere.com>. The bottom of the website at the Disputed Domain Name <salemodere.com> bears the copyright notice “© 2020 Modere Sale Shop”. In total, the websites appeared to originate with the Complainant.
The Respondent has not rebutted the Complainant’s allegations.
The Complainant cites a prior Panel’s decision as instructive as to whether the Respondent’s activities constitutes a bona fide use of the Disputed Domain Names:
“Regardless of whether the products sold on the Respondent’s website were genuine or counterfeit, the website did not disclose the lack of a relationship between the Respondent and the Complainant. On the contrary, the display of the Complainant’s SERGIO ROSSI figurative mark gave the misleading impression that the website was affiliated with, or approved by, the Complainant. Therefore, the Panel does not find this to be a use of the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy.”
Sergio Rossi S.P.A. v. Liu dexing / Name Redacted / Kyu, John Rex / Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si, WIPO Case No. D2019-2330.
The Panel concurs with this view. The Respondent’s use of the Disputed Domain Names in connection with copycat websites does not establish rights or legitimate interests in favor of the Respondent.
The Panel determines that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
The Respondent’s registration of two Disputed Domain Names that consist in part of the Complainant’s trademark, as well as the use of the Complainant’s logo, the use of the Complainant’s artwork, and the depiction of the Complainant’s products, puts the issue beyond doubt as to whether the Respondent had prior actual knowledge of the Complainant’s rights in its trademark.
Furthermore, these activities, coupled with the word “sale”, evidences an attempt to attract Internet users to the Respondent’s websites.
Finally, the prominent use of the Complainant’s trademarks and copyrighted images and the notice of copyright ownership on the website, all without any form of disclaimer or other discussion of the website’s relationship to the Complainant, shows an intention to mislead consumers into believing the Respondent’s websites are authorized by the Complainant. See Philip Morris Products S.A. v. Domain Admin/Hongwei Song, WIPO Case No. D2019-1647.
In conclusion, the Panel finds that the Complainant has proved that the Disputed Domain Names were registered and are being used in bad faith.
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 Names <moderesale.com> and <salemodere.com> be transferred to the Complainant.
Martin Schwimmer
Sole Panelist
Date: June 11, 2020
1 The Respondents appear to have used the name and contact details of third parties when registering the Disputed Domain Names. In light of the potential identity theft, the Panel has redacted Respondents’ names from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Names, which includes the names of the Respondents. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520.