WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Zhao Meng Chen / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Case No. D2015-2142
1. The Parties
The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stanmore IP Limited, United Kingdom.
The Respondent is Zhao Meng Chen of Tianjin, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <mou-sale.com> and <mousale.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2015, 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 December 2, 2015 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 amended Complaint on December 5, 2015.
On December 7, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 9, 2015, the Complainant confirmed its 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 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 in English and Chinese, and the proceeding commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 6, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 18, 2016. 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 a company founded in 2002 and incorporated in England and Wales, and an international retailer of footwear and accessories such as bags, wallets, hats and gloves, under the word and stylized word trade mark MOU (the “Trade Mark”). The Complainant is the owner of registrations for the Trade Mark in several jurisdictions worldwide, the earliest dating from 2004.
The Respondent is an individual apparently resident in China.
C. The Disputed Domain Names
The disputed domain names were registered on January 3, 2015 and November 1, 2014, respectively.
D. The Websites at the Disputed Domain Names
The disputed domain names have been resolved to the same English language website (the “Website”) which offers for sale what the Complainant alleges are counterfeit versions of the Complainant’s footwear products.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreements.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for several reasons, including the fact the content of the Website is entirely in English.
The Respondent has not filed a Response and has not filed any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreements, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names comprise the Trade Mark in its entirety, together with the common and generic word “sale”. The Panel finds the addition of the word “sale” does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name 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 name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website, which offers unauthorised products which have been the subject of a test purchase by the Complainant and confirmed as being counterfeit goods. The Complainant completed a test purchase from the Website on February 18, 2015, and on receipt of the goods in March 2015 confirmed that the goods are counterfeit.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied.
For all the foregoing reasons, the Panel has no hesitation in concluding that the disputed domain names have been registered and are being used 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 <mou-sale.com> and <mousale.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: February 1, 2016