The Complainant is Mou Limited of the United Kingdom of Great Britain and Northern Ireland, represented by SILKA Law AB, Sweden.
The Respondent is Sun Yanqi, Sun Yan Qi of China / Xinnet Whois Privacy Pro Service of China.
The disputed domain names <bootsmou.com>, <mou-eskimo.com>, <mouonlinesale.com>, and <mououtletonline.com> (the “Disputed Domain Names”) are registered with Xin Net Technology Corporation. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 9, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 11, 2018, the Registrar transmitted by e-mail 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 e-mail communication to the Complainant on February 22, 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 23, 2018.
On February 22, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. 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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 6, 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 was founded in 2002 and is in the business of fashion footwear and accessories such as bags, wallets, hats and gloves, marketed under the trademark MOU. These products are distributed in over 40 countries and are available at boutiques and department stores worldwide. The Complainant’s products are also promoted on social media platforms such as Facebook, Instagram, Twitter, and Pinterest. Online sales are offered through the website at “www.mou-online.com” operated by the Complainant’s authorized licensee.
The Complainant’s products are well received, enjoy wide press coverage, and have many celebrity customers and endorsements, including by household celebrity names such as Cameron Diaz and Gwyneth Paltrow.
The Complainant has registered the trademark MOU in many jurisdictions, including:
|
Jurisdiction |
Trademark no |
Registration date |
|
European Union |
8164204 |
December 11, 2009 |
|
United Kingdom |
2432785 |
September 16, 2006 |
|
United States |
3663689 |
August 4, 2009 |
|
WIPO (designations include China) |
1005206 |
April 28, 2009 |
Many registrations for the trademark MOU incorporate a stylized typeface with a letter “O” in a specialized design as follows (the “Stylised Design”):
The Complainant is also the holder of various domain names incorporating the trademark MOU, including, <mou-online.com>, <mou-boots.com> and <mouboots.info>. Unfortunately, domain names incorporating the trademark MOU have also been the subject of several UDRP complaints filed by the Complainant, for example, D2015-2142, D2016-0603 and D2017-1080.
Little information is known about the Respondent beyond that disclosed in the WhoIs information revealed by the Registrar. Until the Registrar verification, the identity of the Respondent was not even known as it was hidden behind a privacy service of the Registrar.
The Disputed Domain Names were all registered recently on November 20, 2017. On or about January 23, 2018, the Disputed Domain Name <bootsmou.com> redirected visitors to a website under the domain name <moueskimo-boots.com>, while the other Disputed Domain Names did not resolve to any website. The domain name <moueskimo-boots.com> is the subject of a separate UDRP complaint. The website offered boots for sale and displayed the Stylised Design prominently at its header. On or about February 3, 2018, the Disputed Domain Name <mououtletonline.com> resolved to a website, while <mouonlinesale.com> did not resolve to any website. The website appeared substantially the same as the website previously resolved from <boutsmou.com>, including the prominent display of the Stylised Design and generous use of the trademark MOU. Screen prints of this website also show the presence of what appears to be online shopping cart facilities.
Attempts by the Center to communicate with the Respondent via details provided in the WhoIs information of the Disputed Domain Names indicated that the facsimile number, one of the postal addresses and various e-mail addresses were invalid and were unsuccessful.
The Complainant contends that:
a) The Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark MOU. All of them incorporate the trademark MOU in its entirety. The addition of generic words “boots”, “outlet”, “sale” and “eskimo” to the trademark MOU in the Disputed Domain Names is not sufficient to distinguish or differentiate the Disputed Domain Names from the trademark MOU;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. There is no evidence that the Respondent is commonly known by any of the Disputed Domain Names. There is no evidence that the Respondent has a history of using or preparing to use the Disputed Domain Names in connection with a bona fide offering of goods and services. The redirection of visitors from <bootsmou.com> to <moueskimo-boots.com> is not a bona fide offering of goods and services. The passive holding of the Disputed Domain Names <mououtletonline.com>, <mouonlinesale.com> and <mou-eskimo.com> is not a legitimate use. The Respondent is not, nor has ever been, a licensee of the Complainant and the websites resolved from the Disputed Domain Names are unauthorized and have no affiliation with the Complainant; and
c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent’s use of a privacy shield suggests a motive to increase the difficulty of identifying the Respondent. The trademark MOU significantly predates the registration of the Disputed Domain Names. It is unlikely that the Respondent was unaware of the unlawful registration of the Disputed Domain Names. The Respondent intentionally chose the Disputed Domain Names to generate more traffic to its own business. The trademark MOU is known in the fashion industry. It is clear that the Respondent was aware of the Complainant’s trademark rights.
The Respondent did not reply to the Complainant’s contentions.
The registration agreement of the Disputed Domain Names is in Chinese. Accordingly, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted instead as the language of the proceeding.
Paragraph 11 provides that the Panel may determine the language of the proceeding to be otherwise in the appropriate circumstances. Having reviewed the circumstances, the Panel determines that English shall be the language of the proceeding. In making this determination, the Panel has considered the following factors:
a) The Complaint has already been submitted in English;
b) The Respondent, though duly notified by the Center to its postal address, chose not to file a Response or otherwise participate in the proceeding;
c) The Respondent has not objected to the Complainant’s request for English to be the language of proceeding;
d) The proceeding will be unnecessarily delayed if Chinese were made the language of proceeding; and
e) There is no discernible benefit to the parties or the proceeding to be gained by maintaining the default language of proceeding.
In order to succeed in this proceeding, the Complainant must show that the three limbs of paragraph 4(a) of the Policy are made out in the circumstances, namely:
a) The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights; and
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
c) The Disputed Domain Names were registered and are being used in bad faith.
It is patent that all the Disputed Domain Names incorporate the trademark MOU in its entirety. The only discernible differences between each Disputed Domain Name and the trademark MOU are the following obviously descriptive terms:
a) <bootsmou.com>: prefix “boots” describes the product offered by the Complainant under the trademark MOU as well as the product offered on the Respondent’s websites;
b) <mou-eskimo.com>: suffix “-eskimo” refers to the use and purpose of the products;
c) <mouonlinesale.com>: suffixes “online” and “sale” describe to the sale of products online;
d) <mououtletonline.com>: suffixes “outlet” and “online” describe an online outlet for sale of products.
It is the consensus of past UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) that where the trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel agrees with this consensus. The various prefixes and suffixes added to the trademark MOU in each of the Disputed Domain Names are descriptive and do not detract from the readily noticeable identity of the trademark MOU. The Panel holds that the first limb of paragraph 4(a) is established in relation to each of the Disputed Domain Names.
A complainant in a UDRP proceeding is required to make out a prima facie case that the respondent lacks rights or legitimate interests in domain name. The burden of production then shifts to the respondent to demonstrate its rights or legitimate interests. In the present case, the Complainant has already shown that the trademark MOU predates the registration of the Disputed Domain Names by many years. The Complainant has stated categorically that the Respondent is neither authorized nor licensed by the Complainant. The Respondent’s name bears no resemblance to the trademark MOU. There is no evidence before the Panel that suggests that the Respondent may otherwise be commonly known by any of the Disputed Domain Names.
The Panel is satisfied that the Complainant has established a prima facie case in the circumstances. Since no response was filed, the Respondent has not discharged the burden of production to rebut the prima facie case. Accordingly, it is held that the second limb of paragraph 4(a) is also established for all of the Disputed Domain Names.
Even though, on the facts, the Disputed Domain Names resolved to websites with various content at different times, at the end of the day, all of the Disputed Domain Names are under the holding and control of the Respondent. The Disputed Domain Names were registered on the same day. The website associated with <bootsmou.com> shared common features with the website associated with <mououtletonline.com>, for example, displaying the prominent Stylised Design in the header. Each of the Disputed Domain Names did not resolve to a website at one time or another. It is an inescapable conclusion that the Disputed Domain Names coexist under inseparable circumstances. Nothing in the evidence suggests special situations requiring any of the Disputed Domain Name to be considered in isolation from the rest. Therefore, the Panel shall consider the Disputed Domain Names together against the totality of the factual matrix.
Paragraph 4(b)(iv) of the Policy highlights the following specific example of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
There is no doubt that the websites resolved from the Disputed Domain Names demonstrated a premeditated intention to attract commercial gain from the tell-tale offering of goods under the trademark MOU and provision of shopping cart facilities. The generous use of the trademark MOU on the websites, including the prominent use of the Stylised Design in the header, cannot be coincidence and proclaims the Respondent’s awareness of the trademark MOU. There is clearly an intention to create a likelihood of confusion with the trademark MOU as to the source, sponsorship, affiliation or endorsement of the websites and the goods offered on the website. The Panel finds that the Disputed Domain Names <bootsmou.com> and <mououtletonline.com> are registered and used in bad faith in the manner described in paragraph 4(b)(iv).
Although the Disputed Domain Names <mouonlinesales.com> and <mou-eskimo.com> did not demonstrably resolve to any websites, the circumstances are so intricately intertwined that they cannot be regarded in isolation from <bootsmou.com> and <mououtletonline.com>. The Disputed Domain Names <mouonlinesales.com> and <mou-eskimo.com> are tainted by the same bad faith surrounding the Disputed Domain Names <bootsmou.com> and <mououtletonline.com>. Accordingly, the Panel holds that the Disputed Domain Names <mouonlinesales.com> and <mou-eskimo.com> were also registered and used in bad faith together with the Disputed Domain Names <bootsmou.com> and <mououtletonline.com>. The Respondent’s use of a privacy service and the use of invalid contact information in the WhoIs information of the Disputed Domain Names further corroborate this finding.
In view of the above, the Panel determines that the third limb of paragraph 4(a) is also established in the circumstances for all the Disputed Domain Names.
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 <bootsmou.com>, <mou-eskimo.com>, <mouonlinesale.com>, and <mououtletonline.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: April 23, 2018