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 Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China / Li Xinjun of Lianyungang, Jiangsu, China; Sun Yanqi of Jiande, Zhejiang, China; Song Lihong of Haerbing, Heilongjiang, China.
The disputed domain names <boots-mou.com>, <moubootsblog.com>, <moubootsstore.com>, <moueskimo-boots.com>, <mouonlineboots.com>, <mouonlineoutlet.com>, <mouonlineshoes.com>, <mouonlinestore.com>, <mouukonline.com> are registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2018. On January 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 25, 2018, 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 February 2, 2018 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 February 6, 2018.
On February 2, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on February 6, 2018. The Respondent 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on February 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 26, 2018. 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 founded in 2002 and incorporated in England and Wales, and an international apparel company for footwear and accessories including bags, wallets, hats and gloves. The Complainant uses the name “mou” as a business identifier as well as a trade mark.
The Complainant owns trade mark registrations for the word and stylised version of MOU in a number of jurisdictions worldwide, including at least one in China, extended from International Trademark Registration No.1005206, registered in 2009.
The Complainant also owns a number of domain name registrations incorporating the trade mark MOU.
The Complainant offers its products for sale through its websites at “www.moulondon.com” and “www.mou-online.com”.
The disputed domain names are registered with the following dates:
|
Domain Name |
|
|
boots-mou.com |
November 20, 2017 |
|
mouukonline.com |
November 20, 2017 |
|
mouonlinestore.com |
December 19, 2017 |
|
mouonlineshoes.com |
December 8, 2017 |
|
mouonlineoutlet.com |
December 8, 2017 |
|
mouonlineboots.com |
November 27, 2017 |
|
moueskimo-boots.com |
November 9, 2017 |
|
moubootsstore.com |
December 19, 2017 |
|
moubootsblog.com |
December 27, 2017 |
<boots-mou.com> and <mouukonline.com> are registered in the name of Sun Yanqi of Jiande, Zhejiang, China, and are inactive.
<moueskimo-boots.com> is registered in the name of Song Lihong of Haerbing, Heilongjing, China and is active. According to the Complaint and relevant evidence provided by the Complainant,
<moueskimo-boots.com> resolved to a website offering for sale the Complainant’s products bearing its trade mark.
The rest of the 6 domain names are registered in the name of Li Xinjun of Lianyungang, Jiangsu, China. Some of them were active, some were not. According to the Complaint and relevant evidence provided by the Complainant, the active websites resolved to websites offering for sale the Complainant’s products bearing its trade mark.
The Complainant contends: the disputed domain names are confusingly similar to its trade mark MOU, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and they were registered and being used in bad faith.
The Complainant claims that its brand is well-regarded in the fashion industry and that it enjoys a significant online presence and sales reaching customers around the world (including China) via its websites at “www.moulondon.com” and “www.mou-online.com”. The Complainant further claims that it makes wholesale sales in various countries.
The Complainant has provided evidence to show its trade mark MOU has developed a substantial reputation and recognition.
The Complainant has provided evidence regarding the use of the domain names <mouonlineshoes.com>, <mouonlineoutlet.com>, <mouonlineboots.com>, <moueskimo-boots.com>, <moubootsstore.com>, offering for sale identical goods to those of the Complainant; the rest of the disputed domain names were inactive.
The Complainant contends that none of the websites are authored or permitted by the Complainant. The Complainant further alleges that the look and feel of those active websites have the appearances of the official website of the Complainant and further alleges that the goods offered for sale by the Respondent may be counterfeit.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the panel is given the authority to determine a language of proceeding other than the language of the registration agreement, taking into account the circumstances of every individual case. In view of the Complainant’s request (noting also the language of the disputed domain names), the lack of response of the Respondent (such that there will be no prejudice to the Respondents, who could have put forward arguments, and was provided an opportunity to do so in English or Chinese), and the fact that the Center notified the Complaint to the Respondents in both English and Chinese, this decision is herein made in English.
According to the WhoIs information, the disputed domain names are registered in three different names of three persons with different addresses in different regions of China.
The Complainant has submitted a request to have the Complaint filed against multiple Respondents on the basis that they are all in China, they are registered via the same registrar, they use the same DNS, they were registered within one month period, and targeted the same trade mark, and those domain names that are active share the same content.
The issue of the consolidation of multiple respondents has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11 and earlier decisions including Mou Limited v Zeng Xiang / Debra Nelis / Privacy Protection Service Inc. d/b/a PrivacyProtect.org, WIPO Case No. D2016-0759, et al.
In order to file a single complaint against multiple respondents, the complaint must meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
Procedural efficacy would also affect the decision.
The Panel finds that the Complainant has not furnished enough evidence to establish that the three disputed domain names, namely, <boots-mou.com>, <mouukonline.com>, and <moueskimo-boots.com> are subject to common control with the other disputed domain names owned by Li Xinjun.
Commonality of the same registrar and being in the same country, etc., does not prove that the websites belong to or are controlled by the same entity. This is especially since <boots-mou.com> and <mouukonline.com> are inactive and the disputed domain name <moueskimo-boots.com>, when active, did not appear to have the same website as the other active domain names. The similar timing of their registration and the use of the same registrar does not render them consciously under common control. On balance, the Complaint has failed to show either criteria to warrant consolidation of all the disputed domain names.
Accordingly, the Panel rejects the Complainant’s request to have the Complaint filed against multiple Respondents. In the circumstances, for administrative expediency, the rest of this decision shall, deal with those domain names owned by Li Xinjun, namely:
<mouonlinestore.com>, <mouonlineshoes.com>, <mouonlineoutlet.com>, <mouonlineboots.com>, <moubootsstore.com>, and <moubootsblog.com>(“Disputed Domain Names dealt with herein”).
The Complaint may wish to bring separate complaints in respect of the domain names <boots-mou.com>, <mouukonline.com>, and <moueskimo-boots.com>.
The Policy requires the Complainant to prove three components:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
Based on the evidence submitted, The Panel’s findings are as follows:
The Panel finds that the Complaint has shown that it has rights in the trade mark MOU based on its use and registration of the same as a trade mark.
The Disputed Domain Names dealt with herein incorporate the Complainant’s trade mark MOU in their entirety as a clear dominant feature. The addition of “onlinestore”, “onlineshoes”, “onlineoutlet”, “onlineboots” and the like does not sufficiently differentiate them from the Complainant’s trade mark.
Accordingly, the Panel finds that the Disputed Domain Names dealt with herein are confusingly similar to the Complainant’s trade mark and the first element of the Policy has been fulfilled.
The Complainant has demonstrated the Respondent has no rights or legitimate interests in the Disputed Domain Name dealt with herein. No evidence has been submitted by the Respondent in reply.
Accordingly, the Panel finds that the second element of the Policy has been fulfilled.
Out of the Disputed Domain Names dealt with herein, <mouonlineshoes.com>, <moubootssotre.com>, <mouonlineoutlet.com>, and <mouonlineboots.com> are active and advertise for the sale of the same products as the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent. Given the reputation and fame of the trade mark MOU, the use of the domain names is clearly intended to attract consumers to the sites. In the Panel’s view, it has been demonstrated that the Respondent registered and is using these active disputed domain names in bad faith.
For <moubootsblog.com> and <muonlinestore.com>, the disputed domain names do not resolve to any active website. The Respondent has failed to provide any evidence to establish its rights or legitimate interests in these disputed domain names. According to the evidence of screenshots submitted by the Complainant and these disputed domain names being registered by the same owner around the same period, the Panel is of the view the Complainant has satisfied the requirements of the third element under the Policy. The consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith and all the circumstances herein indicate to the Panel that the Respondent is acting in bad faith in registering and using <moubootsblog.com> and <mouonlinestore.com>.
The Panel also observed that the Centre has tried to send the written notice of the Complaint to the Respondent but the delivery was not possible which may suggest that the Respondent has provided false details.
Accordingly, the Panel finds that the third element 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, <mouonlinestore.com>, <mouonlineshoes.com>, <mouonlineoutlet.com>, <mouonlineboots.com>, <moubootsstore.com>, and <moubootsblog.com> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: April 9, 2018
Creation Date