WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mou Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Debra Nelis and Erica Hosfelt

Case No. D2016-2625

1. The Parties

The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by SILKA Law AB, Sweden.

The Respondents are Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Debra Nelis of Amsterdam, Netherlands and Erica Hosfelt of New Boston, Michigan, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <mou-bootssale.net>, <moubootssale.net>, <moueskimo.com>, <mou-sale.net> and <mou-shoes.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2016. On December 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 29, 2016, 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 January 3, 2017 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 January 8, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2017.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 8, 2017. 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 Mou Limited, an English company incorporated in 2002, which provides footwear and accessories such as bags, wallets, hats and gloves for men, women and children. The Complainant is well known thanks to its numerous stores worldwide and its significant online presence. The Complainant owns numerous verbal and semi-figurative trademarks on the sign “MOU” around the world, including the Netherlands and the United States, the earliest registration dating back to 2007, and operates the website “www.mou-online.com”.

According to the information provided by the Registrar:

- The registrant of the disputed domain names <moueskimo.com> and <mou-shoes.com> is Debra Nelis, an individual located in the Netherlands;

- The registrant of the disputed domain names <mou-bootssale.net>, <moubootssale.net> and <mou-sale.net> is Erika Hosfelt, an individual located in the United States.

The disputed domain names <mou-bootssale.net>, <moubootssale.net>, <moueskimo.com>, <mou-sale.net> and <mou-shoes.com> were respectively registered on November 17, 2016 and March 16, 2016.

The disputed domain names <mou-bootssale.net>, <mou-sale.net> and <mou-shoes.com> redirect the website “www.mou-sneakers.com”. The disputed domain name <moubootssale.net> resolves to a parking page containing various commercial links in connection with footwear. The disputed domain name <moueskimo.com> does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

With regards to the identification of the Respondents, the Complainant requested the consolidation of the Respondents on the ground that they are either one and the same person or are connected to each other and under common control aimed at intentionally infringing the Complainant’s trademarks. In that regard, the Complainant shows that (i) all five disputed domain names are registered with the same Registrar, (ii) three of them point to the exact same page and (ii) four of them use the same Domain Name System (“DNS”).

On the merits, the Complainant first claims that the disputed domain names are similar to the Complainant’s trademark rights because they all contain the Complainant’s trademark MOU as the distinctive and dominant element, alongside the descriptive or generic words “boots”, “sale”, “shoe” and “eskimo” which are not sufficient to distinguish or differentiate the disputed domain names from the Complainant’s trademark MOU.

The Complainant further asserts that the Respondent is not commonly known by any of the disputed domain names, is not a licensee of the Complainant and is not using the disputed domain names in connection with a bona fide offering of goods or services: the disputed domain names point toward a website offering counterfeit MOU goods, a parking page or an inactive page.

The Complainant finally puts forth that the disputed domain names were registered in bad faith on the grounds that (i) the Complainant’s trademarks in the Netherlands precede registration of the disputed domain names, (ii) the Respondent used a privacy shield and (iii) the Respondent was already involved as a respondent in UDRP proceedings pertaining to the Complainant’s trademark. The Complainant also alleges that the Respondent is using the disputed domain names in bad faith as three of them are used to sell counterfeit MOU shoes, one of them is used as a pay-per-click system and one of them is being passively held. The Complainant suggests that this behavior has resulted in the diversion of Internet users to the Respondent’s websites for financial gain by intentionally creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Procedural Issue

Under paragraph 10(e) of the Rules, panels are empowered to consolidate multiple domain name disputes when it favours the shared interests of the parties in avoiding unnecessary duplication of time, effort and expenses, and when it reduces the potential for conflicting or inconsistent results arising from multiple proceedings (see MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc, WIPO Case No. D2009-0985).

Consistent with previous UDRP panels’ decisions, multiple domain name registrants under common control may be subject to consolidation and, therefore, treated as one single respondent for the purposes of the Policy and Rules (see Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragaon d/b/a Creative Genius Domain Name Sales, WIPO Case No. D2001-0729). UDRP panels have notably found multiple respondents to be commonly controlled where the content of their websites was substantially identical and referred Internet visitors to a common webpage (see CSA International v. John O. Shannon and Care Tech Industries Inc, WIPO Case No. D2000-0071).

As (i) all five disputed domain names are registered with the same Registrar, (ii) three of them (<mou-bootssale.net>, <mou-sale.net> and <mou-shoes.com>) point to the exact same page and (ii) four of them use the same Name Server, the Panel finds that the Complainant has established more likely than not that Debra Nelis and Erika Hosfelt are either the same person or under common control. Consequently, the Panel grants the Complainant’s request for consolidation and refers to the Respondent in singular form.

B. Identical or Confusingly Similar

In the Panel’s opinion, the Complainant has demonstrated registered trademark rights for MOU. The Panel, which finds that the all disputed domain names incorporate the said trademark in its entirety, concurs with the opinion of prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for the purposes of the Policy (See, e.g., Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903).

It is also well established in prior decisions under the UDRP that the mere addition of descriptive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity (see, e.g., TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361). The Panel finds that the Complainant’s MOU trademark is fully incorporated in all disputed domain names together with the terms “boots”, “sale”, “shoes” and “eskimo”. According to the Panel, these terms do not distinguish the disputed domain names from the Complainant’s trademark, particularly noting that they directly refer to the Complainant’s field of activity.

The Panel agrees with the common view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc, WIPO Case No. D2016-1236) and considers the gTLD extensions “.net” and “.com” of the disputed domain names irrelevant.

The Panel consequently finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The burden of proof is on the Complainant to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain names by proving, inter alia, that one of the following circumstances of paragraph 4(c) of the Policy is applicable to the case:

(i) before any notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

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

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Given the absence of response to the Complaint, and based on the evidence submitted in the case file, the Panel deems that the Complainant has proved its earlier and lawful rights in the MOU trademark and accepts the Complainant’s claim that the Respondent was never granted any right to use the MOU trademark in relation to the disputed domain names. The Panel consequently deems that the Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.

Furthermore, especially as the respective websites of three of the disputed domain names reproduce the Complainant’s trademark, offers for sale products bearing the Complainant’s mark and do not display any element as to clarify or disclaim the relationship between the Respondent and the Complainant, the Panel finds no other basis upon which to find any rights or legitimate interests relating to the Respondent in the disputed domain names (see, e.g., Spigen Korea Co. Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145).

In any event, the Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations included in the Complaint as true (see Talk City Inc v. Michael Robertson, WIPO Case No. D2000-0009).

In light of the above, the Panel therefore considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Based on the number of domain names in the present dispute and on overall circumstances, the Panel considers that the Respondent knew the existence of the Complainant’s trademark, which it had in mind when registering the disputed domain names (see Ticketmaster Corporation v. Spider Web Design Inc, WIPO Case No. D2000-1551). Furthermore, the Respondent has already been involved in previous UDRP proceedings pertaining to the Complainant’s trademark (see Mou Limited v. Debra Nelis, WIPO Case No. D2016-2031), which leads the Panel to find that the Respondent could not have unintentionally incorporated the Complainant’s trademark in the disputed domain names and, therefore, has registered the disputed domain names in bad faith in order to capitalize on the reputation of the Complainant’s trademark (see, e.g., Siemens AG v. Client, WIPO Case No. D2015-2035; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).

The Complainant has submitted evidence demonstrating that the Respondent is offering boots for sale via the Respondent’s website, to which three of the disputed domain names resolve. According to the Complainant, the products offered for sale by the Respondent appear to be counterfeit. Thus, the Panel finds that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website (see Mou Limited v. Debra Nelis, supra).

Previous UDRP panels have also held that use of a domain name in order to mislead Internet users to believe that the corresponding website is related to the Complainant and directing them to a webpage providing revenue to the Respondent through pay-per-click page is evidence of use in bad faith (see, e.g., F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956). In the present case, one of the disputed domain name points towards a parking page displaying commercial links related to the field of footwear, which according to the Panel aims at intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the links contained in the parking page.

Finally, with regards to the inactivity of one of the disputed domain names, given the reputation of the Complainant’s trademark and the overall circumstances of the present dispute, the Panel finds that the passive holding of said inactive domain name constitutes use in bad faith pursuant to a well-established UDRP principle (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names, <mou-bootssale.net>, <moubootssale.net>, <moueskimo.com>, <mou-sale.net> and <mou-shoes.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: February 22, 2017