The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SILKA Law AB, Sweden.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Vicky Rogers of Staffordshire, United Kingdom / Tatiana Ovdienko of La Jolla, California, United States of America ("United States").
The disputed domain names <moubootsonline.net>, <moushoesonline.com> and <moushoessale.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2017, 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 June 9, 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 amendments to the Complaint on June 12, 2017 and June 19, 2017.
The Center verified that the Complaint together with the amendments 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 June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017.
The Respondent Vicky Rogers submitted informal communications on June 23, 2017 and July 6, 2017. The Respondent did not submit any formal response.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on July 13, 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.
The Complainant is a private limited company organised under the laws of England and Wales that provides footwear and accessories such as bags, wallets, hats and gloves for men, women and children under the name "mou".
The Complainant is the owner of a number of United States, United Kingdom, European Union Intellectual Property Office ("EUIPO") and international ("IR") trademark registrations containing the name "mou" as word marks or as figurative marks (reg. nos. United States registration number 3663689, United Kingdom registration number 2432785, United Kingdom registration number 2513487, United Kingdom registration number 2511429, IR registration number 1005206, IR registration number 1001663, European Union Trade Mark ("EUTM") registration number 8164204, EUTM registration number 8575607), all of these marks being registered for either class 18 or class 25 (including footwear) or both. In this context, the Complainant's United Kingdom trademark MOU, registration number 2432785, was registered on June 15, 2007.
The Complainant is also owner of various domain names containing the name "mou" and a generic term describing shoes or boots, such as <mou-boots.com>.
The Respondent registered the disputed domain name <moubootsonline.net> on February 5, 2017 and, the disputed domain names <moushoesonline.com> and <moushoessale.com> on April 28, 2017. The disputed domain name <moushoessale.com> resolves to a parked page, with links to third-party websites. The disputed domain names <moubootsonline.net> and <moushoesonline.com> resolve to websites that offer for sale products that bear the Complaint's mark.
The Complainant contends that it is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children and it is selling its products both through retail stores as well as through a significant online presence through Complainant's website "www.mou-online.com" operated by the Complainant's authorized licensee.
The Complainant contends that the disputed domain names are confusingly similar to the MOU trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and used the disputed domain names in bad faith.
The Complainant claims that the disputed domain names fully and exactly incorporate the Complainant's MOU mark, are highly similar to the URL for the Complainant's website "www.mou-online.com" (operated by the Complainant's authorized licensee) and that the descriptive words "online", "shoe" and "boot" used as addition to the word "mou" in the disputed domain names, would be easily recognised as referring to Complainant's business. The Complainant emphasizes that the word "mou" is the distinctive and dominant element of the disputed domain names.
The Respondent is said to have no rights or legitimate interests in the disputed domain names, to have no connection or affiliation with the Complainant and to have received no license or consent, express or implied, to use the MOU mark in a domain name or in any other manner.
With regard to the disputed domain name <moushoessale.com>, the Complainant contends that displaying a parked page with links to third-party websites does not constitute a bona fide offering of goods or services.
With regard to the disputed domain names <moubootsonline.net> and <moushoesonline.com>, the Complainant contends that the websites offer for sale products bearing the Complaint's mark without any indication of its relationship to the Complainant, evoking the untrue impression that the website may be affiliated or endorsed by the Complainant, and that such use cannot be considered a bona fide offering of goods under the Policy.
The Complainant states that it did not authorize the Respondent to register the disputed domain names, nor does it maintain any licensing relationship with the Respondent, and that the Respondent is not commonly known by the disputed domain names and, therefore, cannot claim a legitimate interest in the disputed domain names under paragraph 4(c) of the Policy.
The Complainant claims that the Respondent has registered and used the disputed domain names in bad faith because they were registered with the knowledge of the Complainant's rights, as the Complainant's trademarks are well known, and that Respondent's use of a privacy shield or proxy registration service suggests that a motive for using a domain privacy service in this instance has been to increase the difficulty for the Complainant of identifying the Respondent.
The Respondent did not reply to the Complainant's contentions. In her informal communications the Respondent Vicky Rogers did not submit any substantive comments.
The Complainant filed a request for consolidation of respondents for the disputed domain names <moubootsonline.net>, <moushoesonline.com> and <moushoessale.com> on June 12, 2017. Based on the commonalities of the three disputed domain names (same Registrar for all three disputed domain names, same DNS and website content for two of the disputed domain names) the request for consolidation is accepted.
Under the Policy, the Complainant must prove with respect to the disputed domain name that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and the initiation of these proceedings and that the failure of the Respondent to furnish a substantive or formal Response to the Complaint within the time period established by the Rules is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center complied with its obligations under the Rules, paragraph 2(a).
In case of default, under paragraph 14(a) of the Rules, "the Panel shall proceed to a decision on the complaint", and under paragraph 14(b) of the Rules, "the Panel shall draw such inferences as it considers appropriate". Furthermore, paragraph 15(a) of the Rules provides that "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Since the Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by the Complainant.
Based on Complainant's trademark registrations and evidence of use, it is accepted that the Complainant has developed a substantial reputation in addition to its registered trademark rights. The Complainant is the owner of an array of registered trademarks containing the name "mou". The disputed domain names include the addition of the dictionary words "online", "shoe", "sale" and "boot". Previous UDRP panels have found that the addition of descriptive terms to a trademark does not serve to differentiate a disputed domain name from the trademark, see INTS IT IS NOT THE SAME GMBH v. Manuel Guitián Lopez / Domains By Proxy, LLC and vitor Whoiscontactsprotection.com, WIPO Case No. D2016-1463. Moreover, the addition of these terms may exacerbate the confusion, because the disputed domain names refer to products offered by the Complainant.
For these reasons and because there is no converse evidence submitted by the Respondent, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's MOU trademarks.
The Respondent does not bear the name "mou" and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Respondent holds a license or is otherwise authorized to use the Complainant's trademark.
The disputed domain name <moushoessale.com> resolves to a parked page, with links to third-party websites. The disputed domain names <moubootsonline.net> and <moushoesonline.com> resolve to websites that offer for sale products bearing the Complaint's mark without any indication of its relationship to the Complainant, evoking the untrue impression that the website may be affiliated or endorsed by the Complainant. Such uses are contrary to a bona fide offering of goods or services or a legitimate interest. For these reasons and because the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, in accordance with paragraph 4(c)(iii) of the Policy, the Panel concludes that the Respondent has no rights or legitimate interests in respect to the disputed domain names.
The Respondent clearly knew or should have known of the existence of the Complainant's trademarks as the name "mou", as already stated above, is not a dictionary term but a distinctive trademark, which enjoys a reputation in many countries all over the world. Given the fact that there is no indication that the disputed domain names were ever used for other purposes than the ones noted above, considering the reputation of the trademark MOU and the misleading nature of the offers on the websites associated with the disputed domain names <moubootsonline.net> and <moushoesonline.com> with regard to the evocation of an affiliation with the Complainant, the Panel does not doubt that this use was already intended at the time of registration of the disputed domain names.
In contravention of paragraph 4(b)(iv) of the Policy, the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's marks and the Complainant's "www.mou-online.com" website.
The Respondent is still using the disputed domain names <moubootsonline.net> and <moushoesonline.com> as websites offering products bearing the Complaint's mark without any indication of its relationship to the Complainant and the disputed domain name <moushoessale.com> in connection with a website displaying a parked page with links to third-party websites.
For these reasons, the Panel concludes that the Respondent registered and has been using the disputed domain names 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, <moubootsonline.net>, <moushoesonline.com> and <moushoessale.com> be transferred to the Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Date: July 27 2017