WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mou Limited v. Erica, Zhang Da Yan/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)

Case No. D2016-0603

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 Erica, Zhang Da Yan of Xiamen, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <mou-online.net> is 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 March 29, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2016, 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 March 31, 2016 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 April 5, 2016.

On March 31, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 both Chinese and English, and the proceeding commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2016.

The Center appointed Francine Tan as the sole panelist in this matter on May 3, 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 was founded in 2002 and is known for its footwear and accessories such as bags, wallets, hats and gloves for men, women and children. It sells its products via selected boutiques and high-profile department stores in many countries, and has a significant level of online presence and sales via its website “www.moulondon.com” and the website “www.mou-online.com” operated by its authorized licensee. Online sales are conducted across the world including in Austria, Australia, Belgium, Brazil, Canada, China, Denmark, France, Germany, Hong Kong, China, Norway, Portugal, Saudi Arabia, Spain, Switzerland, Taiwan, Province of China, Turkey, United Kingdom and United States of America. Wholesale sales of the Complainant’s products also take place in many countries including China, Denmark, Israel, Italy, Japan, Latvia, Monaco, the Republic of Korea, Spain, Sweden, Ukraine and United Kingdom.

The Complainant’s trade mark MOU (both in plain text and in a stylized format) are registered in jurisdictions which include the United Kingdom, Switzerland, the European Union, Australia, Norway, the Russian Federation, China and Japan. The Complainant states that its MOU brand is well regarded in the fashion industry and has many celebrity customers and widespread press coverage.

The Complainant operates various social media accounts regarding its products (e.g., Facebook, Instagram, Twitter and Pinterest). As a result of the Complainant’s widespread and prolonged use of its MOU trade mark the Complainant has developed substantial reputation rights in addition to its registered trade mark rights.

The disputed domain name was registered on January 6, 2016.

5. Parties’ Contentions

A. Complainant

(1) The disputed domain name is similar to the Complainant’s trade mark MOU in which it has registered and unregistered rights. It contains the Complainant’s trade mark MOU as the distinctive and dominant element and is used alongside the descriptive word “online” which is easily recognized by consumers to indicate that the associated website is the online location for the Complainant’s products. In addition, the format <mou-online.net> in the disputed domain name is identical to the naming convention the Complainant uses for its legitimate and genuine online selling platform, “www.mou-online.com”. The hyphen between the words “mou” and “online” emphasizes that the disputed domain name is intended to be understood by the user as an online location for purchasing the Complainant’s products branded as MOU.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services. The disputed domain name points to a website offering unauthorized products. The Respondent’s website has been used to offer for sale identical goods to those offered by the Complainant and clearly show the use of the Complainant’s MOU trade mark. The Respondent’s website is not authorized by the Complainant and neither has the latter permitted the Respondent to use the Complainant’s MOU trade mark or to register the disputed domain name.

The Respondent has not been commonly known by the disputed domain name. Due to the similarity between the disputed domain name and the Complainant’s MOU trade mark, the disputed domain name was selected for the purpose of diverting customers from the Complainant’s genuine website.

The Respondent is not making fair use of the disputed domain name but, rather, for commercial gain and misleadingly diverting customers whilst at the same time tarnishing the Complainant’s MOU trade mark. By offering for sale unauthorized, and suspected counterfeit, goods to genuine customers of the Complainant, the Respondent is seeking to mislead customers, and will inevitably tarnish the Complainant’s MOU trade mark.

(3) The disputed domain name was registered and is being used in bad faith. The Respondent has registered the disputed domain name intentionally to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s MOU trade mark as to the source of the products on the Respondent’s website. The Respondent must have been aware of the Complainant’s rights in the MOU trade mark at the time of registration such that the Respondent registered the disputed domain name in bad faith. The Respondent is using the disputed domain name to sell products, which the Complainant believes to be counterfeit, to the Complainant’s customers. The Complainant’s licensee has received complaints from customers making purchases from the website found at the disputed domain name regarding the inferior quality and suspected counterfeit nature of the goods received. The Respondent has intentionally registered the disputed domain name to attract the Complainant’s genuine customers, and to divert genuine sales by creating a likelihood of confusion with the Complainant’s trade mark.

The “About Us” section of the Respondent’s website found at <mou-online.net> is a copy of an entire section of “history” from the Complainant’s website which the Respondent has reproduced and used on its own website. It further falsely claims to be “authorized by Mou Limited”.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

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 proceedings 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 proceedings”.

The Registration Agreement in respect of the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English on the basis that it is clear that the Respondent understands the English language and would not be prejudiced in this dispute for the language of the dispute to be English. The disputed domain name is formed of Latin characters, and contains the English word “online”. In addition, the Respondent’s website content is entirely in English, demonstrating that English is a language easily understood by the Respondent.

The Respondent did not respond on the issue of the language of the proceeding.

The Panel exercises its discretion under paragraph 11 of the Rules and holds that English shall be the language of the administrative proceeding. The combination of words making up the disputed domain name as well as the content and language of the Respondent’s website reflect a high degree of familiarity with the English language. On the other hand, the administrative proceeding would be unduly delayed if the Complainant were required to translate its written submissions into Chinese. (Paragraph 10(c) of the Rules provides that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.)

The Panel considers that there is no real cause for concern in the circumstances of this case that the Respondent would be prejudiced by a decision for English to be adopted as the language of the proceeding. The Respondent was given the opportunity to and could have objected to the Complainant’s request, but chose not to.

B. Identical or Confusingly Similar

The Complainant has shown it possesses registered as well as common law rights in the MOU trade mark. The word “mou” features as the primary element in the disputed domain name and is identifiable therein.

The Panel, following the well-established principles that (i) descriptive, common or generic terms appearing in a domain name registration in combination with a trade mark of the complainant are “insufficient to prevent threshold Internet user confusion” and (ii) “the applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)” (per paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), accordingly finds that the disputed domain name is confusingly similar to the mark MOU in which the Complainant has rights.

The first element of paragraph 4(a) of the Policy has therefore been satisfied.

C. Rights or Legitimate Interests

In relation to the second element of paragraph 4(b) of the Policy, the Panel applies the consensus view of UDRP panels, namely reflected in paragraph 2.1 of the WIPO Overview 2.0:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make 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 to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The question therefore is whether the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that it has. There are various “incriminating” pieces of evidence - the copying of the Complainant’s MOU trade mark on the Respondent’s website, the sale of suspected counterfeit goods bearing the Complainant’s MOU mark, the copying of portions from the Complainant’s website, and the overall false impression deliberately created by the Respondent to mislead consumers into thinking that the Respondent’s website is the Complainant’s or that of an authorized agent or licensee.

The Respondent is without doubt well aware of the Complainant, its MOU mark, and its products and has deliberately registered the disputed domain name for the illegitimate purpose of riding off the goodwill associated with the Complainant’s MOU trade mark and products and profiting from the confusion amongst online shoppers looking for the Complainant’s genuine products.

There is no evidence of a bona fide offering of goods or services by the Respondent; there is no evidence that the Respondent has been commonly known by the disputed domain name; but what there is evidence of is an illegitimate commercial and unfair use of the disputed domain name. The Respondent has not rebutted the prima facie case established by the Complainant.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

D. Registered and Used in Bad Faith

Following from the above-mentioned observations, the Panel also finds merit in the Complainant’s assertion that the disputed domain name has been registered and used in bad faith. The circumstances of this case fall squarely within that described in paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

The Respondent has refrained from responding to the Complaint. This, together with the other circumstances of this case, supports an inference of bad faith registration and use.

The Panel therefore concludes that the Respondent has registered and used the disputed domain name in bad faith. The third element of paragraph 4(a) 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 <mou-online.net> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: May 9, 2016