WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Custom Materials Ltd v. GMO-Z.com RUNSYSTEM JSC / Vuong Dinh Trung, My company

Case No. D2020-3270

1. The Parties

The Complainant is Custom Materials Ltd, the United Kingdom (“UK” or “United Kingdom”), represented by Stevens and Bolton LLP, the United Kingdom.

The Respondent is GMO-Z.com RUNSYSTEM JSC, Viet Nam / Vuong Dinh Trung, My company, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <moteefes.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 16, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. The Complainant filed an amended Complaint in Japanese on December 19, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021. The Center received a third party’s communication by courier on February 1, 2021. The Center received a third party’s communication by email on February 2, 2021.

The Center appointed Teruo Kato as the sole panelist in this matter on March 19, 2021. 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

According to the Complainant, the Complainant is a company incorporated in England and Wales in 2014, and it trades under the name “Moteefe” and operates a social commerce platform through which third parties can offer custom merchandise for sale online. The platform allows sellers to upload designs, have their products manufactured, and market and distribute them across the world, including Europe, United States of America, Canada, Australia, and Brazil.

The Complainant submitted evidence of various trademark registrations and owns, inter alia, the word mark MOTEEFE of UK Trademark UK00003173481, registered on October 28, 2016, and the word mark MOTEEFE of European Union Trade Mark 017034307 registered on November 24, 2017, each covering goods and services in classes 25, 35, 40 and 42.

The disputed domain name <moteefes.com> was registered on May 29, 2019.

The Complainant contends that the Respondent is apparently responsible for offering under the disputed domain name what the Complainant submits can only be described as a “copycat” or “fake” version of the Complainant’s website.

The Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks in the United Kingdom and European Union, in which the Complainant has exclusive rights in connection with, among others, clothing, advertising, marketing and promotional services, and design services.

The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues:

Language of the Proceeding

The Registrar confirmed that the language of the registration agreement is Japanese. The Complainant has initially filed the Complaint in English on December 3, 2020, in which it submitted that “the Complaint should be conducted in English because the website at the Domain Name is in English, and the address showing as the contact address on that website is in the United States of America”.

On December 16, 2020 the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by December 21, 2020. The Respondent did not respond to this by this deadline nor later.

On December 19, 2020, following the receipt of further information on the identities of the Respondent provided by the Registrar, the Complainant submitted an amended Complaint in Japanese, and on December 20, 2020 the Complainant confirmed to the Center of its request for the Japanese be the language of the administrative proceeding.

On January 5, 2021 the Center sent a communication in Japanese to the Complainant and the Respondent, advising of the commencement of the proceeding with effect of January 5, 2021, which communication included the initial Complaint (in English), the amended Complaint (in Japanese), and the Annexes (in English). In that communication the Center advised of the requirement for the Respondent to submit its Response by January 25, 2021. The Respondent did not respond to this by this deadline nor later. Subsequently, the Center received two communications in English from a third party regarding the physical address provided by the Respondent.

Paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Panel notes the following particular circumstances of the case, being:

The evidence, on which the Complainant relies, is produced largely in English without Japanese translations. The webpages in question hosted by the Complainant and the Respondent, respectively, are in English. None of the parties appears to have any particular business background relating to or connected with Japan, products from Japan, nor Japanese language. There is no evidence of Japanese language being used by the Complainant nor the Respondent in their respective communications with the Center in this case (except for the amended Complaint in Japanese submitted by the Complainant).

Further, the Panel takes note that, when the Complainant initially requested English, the Respondent was given an opportunity but did not raise any objection, and further that the Respondent has not responded to this administrative proceeding since it was commenced. Should the Respondent have responded either in English or Japanese, the Panel would have given a regard to it, but no action has been taken by the Respondent.

In the circumstances, under the authority conferred to the Panel under Paragraph 11(a) of the Rules, the Panel determines the language of this administrative proceeding be English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.

The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of various MOTEEFE, inter alia, the word mark MOTEEFE of UK Trademark UK00003173481 registered on October 28, 2016, and the word mark MOTEEFE of European Union Trade Mark 017034307 registered on November 24, 2017, each covering goods and services in classes 25, 35, 40 and 42.

As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the MOTEEFE trademark in which the Complainant has rights.

Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.

Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark MOTEEFE and a letter “s”, added at the end of the said trademark MOTEEFE. The Panel finds that the Complainant’s trademark MOTEEFE is clearly recognizable in the disputed domain name.

In the circumstances the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark 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 trademark or service mark at issue.

The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant contends that the Respondent has not made any bona fide or legitimate noncommercial or fair use of the disputed domain name, and that the Respondent is using the disputed domain name to impersonate and pass itself off as the Complainant.

The Complainant further contends that the Complainant is aware of no evidence that: a) before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparation to use, a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; b) the Respondent has been commonly known by the disputed domain name; or c) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or to tarnish the Complainant’s name.

The Complainant submitted to the Panel documentary materials to support its contentions as above, and this included, among others, a logo of the Complainant used in its webpage, which the Complainant described as “distinctively stylised device on the letter M”. The Complainant contends that the Respondent uses a similar stylised device on the letter “m” of “moteefes” as that used by the Complainant. The Respondent has submitted no response to these contentions.

The Panel notes that the Complainant’s said style includes two horizontal bars (like “=”) are attached to the left side of the letters “Moteefe”, with all letters italicized, i.e. slanting slightly to the right , (like “=Moteefe”).

The Panel also notes that the said devise of the Complainant (like “=Moteefe”) is used by the Respondent in the webpages under the disputed domain name, but without being italicized, with “s” added at the end (like “=Moteefes”).

The Panel was unable to find any explanation or indication in the webpages under the disputed domain name why this device is used by the Respondent. The Panel also note the words “PREMIUM FASHON BRANDS STORE” being placed immediately below the devise “=Moteefes” and that these words are found throughout its website under the disputed domain name.

In the circumstances the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.

Furthermore, the Panel takes note that the disputed domain name comprises the Complainant’s trademark (plus an additional letter “s”) and so carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

As to the registration in bad faith, the Panel notes that the trademark MOTEEFE was registered in 2016 in the United Kingdom and in 2017 in the European Union, before the disputed domain name was registered on May 29, 2019. The Panel also notes that, as stated under paragraph B (Rights or Legitimate Interests) above, the Respondent uses the device, which is akin to the “distinctively stylised device on the letter M” of the Complainant, and the Respondent inserts the words “PREMIUM FASHON BRANDS STORE” immediately below the said device.

The Panel further takes note that the Complainant operates and maintains its own promotional webpage within Facebook and that the accumulated messages contained therein go back to January 30, 2015. The first message states “Welcome to the Moteefe community! This is the place where you can create and sell your own clothes or raise funds for a cause with unique designs. We only manufacture high quality clothes that your customers will love to wear! We have plenty of surprises for you over the next few months so keep up to date and get in touch with the Moteefe team via this page. We are looking forward to seeing some fabulous designs! Lev, Mathijs and Olivier”.

In the circumstances, the Panel is satisfied that the Respondent was most likely to have known of the Complainant, its products and services, and trademarks, prior to registering the disputed domain name and that it registered the disputed domain name in bad faith.

As to the use in bad faith, the Complainant contends that the Respondent is apparently responsible for offering what the Complainant submits can only be described as a “copycat” or “fake” version of the Complainant’s website and that the site purports also to be an e-commerce platform through which customizable products (primarily printed t-shirts) can be designed, manufactured and sold, and that the purpose of site is clearly to mislead consumers into thinking that it is in fact the Complainant’s own website and to take money from consumers on that basis. The Complainant submitted screenshots to support its contentions as above. The Respondent did not submit any comments.

The Complainant further contends that the descriptions of the items for sale appear to be text taken from various third party sources. The Respondent has made no response to this contention.

In this connection the Panel notes that there exist two references to “Myfrogtee” (in place of the Respondent) found in the Terms of Service section of the Respondent’s website, which name is not found elsewhere in the Respondent’s webpage under the disputed domain name.

The Panel also takes a note that the Respondent had been using a privacy or proxy service since the registration, which further affirms the Respondent’s bad faith in these circumstances (see section 3.6 of the WIPO Overview 3.0).

Having considered all the circumstances, the Panel holds that the Respondent is using the disputed domain name in bad faith.

In the circumstances, the third requirement of the Policy has been satisfied.

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 name <moteefes.com> be transferred to the Complainant.

Teruo Kato
Sole Panelist
Date: March 29, 2021