The Complainant is MCM Holding AG of Switzerland, represented by Covington & Burling, United States of America.
The Respondents are Sa La Xie, Wang Lulu, Zheng Jun Fang / Udomain Privacy Service Co. Ltd. of China.
The disputed domain names <mcm-bags.com>, <mcm-handbags.com>, <mcmbagsshoponline.com> and
<shopmcmbagsonline.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd., Xin Net Technology Corp. and Shanghai Yovole Networks, Inc., respectively (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4 and 5, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for one of 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 November 6, 2014 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 amendment to the Complaint on November 11, 2014. On November 6, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On November 7, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint in both English and Chinese, and the proceeding commenced on November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. The Respondents did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 5, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 18, 2014. 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 company incorporated in Switzerland and is the owner of hundreds of registrations worldwide for the word and figurative trade mark MCM (the “Trade Mark”).
The Respondents are apparently individuals based in China.
The disputed domain names were registered on April 7, 2013, April 7, 2013, September 29, 2013 and September 16, 2014, respectively.
The websites at the disputed domain names (the “Websites”) promote and offer for sale handbags, wallets and accessories under the Trade Mark.
The Complainant made the following submissions in the Complaint.
The Complainantwas founded in 1976 and is well-known for its luxury leather goods, clothing and footwear sold under the Trade Mark. The Complainant’s goods are sold at the Complainant’s boutiques and also at prestigious retailers. The Complainant does not sell its goods online.
The disputed domain names are confusingly similar to the Trade Mark. They incorporate the Trade Mark in its entirety, together with the non-distinctive and descriptive words “bags”, “shop”, “online” and/or “handbags”.
The Respondents have no rights or legitimate interests in respect of the disputed domain names.
The Respondents are not affiliated with or authorised or licensed by the Complainant in any way.
The Respondents are not commonly known by the disputed domain names and are not making a bona fide commercial use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The Respondents have used the disputed domain names in respect of the Websites, which offer for sale counterfeit handbags, wallets and accessories under the Trade Mark at reduced prices.
The Respondents did not reply to the Complainant’s contentions.
The language of the registration agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding. The Complainant submits that, as the Websites are entirely English language websites, this demonstrates the Respondents’ competence in English.
The Respondents did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondents are conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The arguments relied upon by the Complainant in support of its consolidation request include:
1. All four disputed domain names consist of the Complainant’s famous MCM mark and the word “bags.”
2. All four disputed domain names resolve to websites with a similar content and that appear to market counterfeit MCM-branded products.
The Respondents did not file a Response.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with previous relevant UDRP decisions in respect of this issue.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the dates of registration of the disputed domain names by almost 40 years.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
The Panel finds the addition of the generic and descriptive words “bags”, “shop”, “online” and/or “handbags” does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondents’ registration of the disputed domain names by almost 40 years. The Panel finds on the record that there is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption.
The Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain names have been used to facilitate the sale of the Complainant’s products at cheap prices, via the Websites. As the Complainant does not sell its goods under the Trade Mark online, and given the cheap pricing of the goods on the Websites, it is likely the goods offered for sale on the Websites are counterfeits (although it should be noted the Complainant has not adduced any evidence to show it has inspected the goods sold on the Websites in order to confirm they are counterfeits).
There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
The Complainant asserts that the Respondent has registered and used the disputed domain names in respect of the sale of counterfeit MCM goods at cheap prices via the Websites.
In all the circumstances, the Panel considers it is highly likely the goods offered for sale on the Websites are counterfeits. Even if they are not counterfeit goods, in all the circumstances, the Panel concludes the unauthorised offer for sale on the Websites of goods under the Trade Mark, absent any disclaimer as to the Respondent’s relationship with the Complainant, amounts to clear evidence of bad faith.
At some stage following the filing of the Complaint, it appears the Websites have been taken down. The Panel finds this constitutes further evidence of bad faith, in particular given the failure of the Respondent to file a Response.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <mcm-bags.com>, <mcmbagsshoponline.com>, <mcm-handbags.com> and <shopmcmbagsonline.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: January 1, 2015