WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Monsoon Accessorize Limited v. Fundacion Private Whois, Hu Shaotang, Wang Laoji

Case No. D2012-0996

1. The Parties

Complainant is Monsoon Accessorize Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Eversheds, LLP, UK.

Respondents are Fundacion Private Whois of Zona, Panama (First Respondent), Hu Shaotang of Quanzhou, Fujian, China (Second Respondent), and Wang Laoji of Xiamen, Fujian, China (Third Respondent).

2. The Domain Names and Registrars

The disputed domain names <monsoon-dress.com>, <monsoon-dresses.com>, <monsoon-dresses.net>, <monsoondresses.net>, <monsoon-dress.net>, <monsoondress.net>, and <monsoondressessale.com> are registered with Internet.bs Corp.

The disputed domain names <monsoondressesuk.com> and <monsoondressesuksale.com> are registered with Shanghai Yovole Networks, Inc.

3. Procedural History

A First Complaint concerning disputed domain names <monsoon-dress.com>, <monsoon-dresses.com>, <monsoon-dresses.net>, <monsoondresses.net>, <monsoon-dress.net>, <monsoondress.net>, and <monsoondressesuk.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2012. On May 11 and 15, 2012, the Center transmitted by email to Internet.bs Corp. and Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the disputed domain names. On May 18, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the registration agreements with respect to <monsoon-dress.com>, <monsoon-dresses.com>, <monsoon-dresses.net>, <monsoondresses.net>, <monsoon-dress.net>, <monsoondress.net> are in English, and that First Respondent is listed as the registrant and providing the contact details. On May 21, 2012, Shanghai Yovole Networks, Inc. transmitted by email to the Center its verification response confirming that the registration agreement with respect to <monsoondressesuk.com> is in Chinese, and that Second Respondent is listed as the registrant and providing the contact details. On May 22, 2012, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings and the Consolidation of multiple Respondents.

On May 25, 2012, Complainant filed an Amended Complaint, adding the two disputed domain names <monsoondressessale.com> and <monsoondressesuksale.com>, and Third Respondent, and filed a separate formal request that English be the language of proceeding. On May 25, 2012, the Center transmitted by email to Internet.bs Corp. and Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the two new disputed domain names. On May 28, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the registration agreement with respect to <monsoondressessale.com> is in English, and that First Respondent is listed as the registrant and providing the contact details. On May 31, 2012, Shanghai Yovole Networks, Inc. transmitted by email to the Center its verification response confirming that the registration agreement with respect to <monsoondressesuksale.com> is in Chinese and that Third Respondent is listed as the registrant and providing the contact details. On May 31, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings and the Consolidation of Multiple Respondents. On June 1, 2012, Complainant confirmed its request that English be the language of proceedings. Respondents did not comment on the language of proceedings by the specified due date.

The Center verified that the First 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(a) and 4(a), the Center formally notified Respondents of the First and Amended Complaints, and the proceedings commenced on June 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2012. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 27, 2012.

Complainant filed a Supplemental Filing on June 13, 2012.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 4, 2012. 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

Complainant offers a variety of women’s clothing internationally under the trademark mark MONSOON, and has done so for decades. In addition to brick-and-mortar stores located throughout the world, Complainant operates a website “www.monsoon.co.uk”, and has done so for a number of years. Complainant is the registered owner of trademarks consisting of the word “monsoon” at least in the European Community and in the UK. The earliest registration of Complainant’s trademark MONSOON is August 16, 1980, in the UK.

First Respondent is based in Panama. The disputed domain name registrations attributed to First Respondent were created on April 1, 23, and May 14, 2012.

Second Respondent is based in China. The disputed domain name registration attributed to Second Respondent was created on April 23, 2012.

Third Respondent is based in China. The disputed domain name registration attributed to Third Respondent was created on May 8, 2012.

5. Parties’ Contentions

A. Complainant

Complainant claims First, Second, and Third Respondents are closely associated or related because (1) the disputed domain names are of very similar language construction and include the words “monsoon” and “dress” or “dresses”, (2) the disputed domain names are all designed to divert business from Complainant, (3) many of the disputed domain names have been registered using a common privacy service provider and/or common registrars, (4) most of the disputed domain names were registered on the same days, (5) many of the active websites linked to the disputed domain names have similar or identical content, including typographical errors, (6) two active websites linked to the disputed domain names send identical sales-confirmation emails, (7) each active website linked to the disputed domain names uses the same online payment processing company, (8) First Respondent is a privacy service provider and the Second and Third Respondents are based in the same Chinese province and use the same email service.

Complainant claims the disputed domain names are confusingly similar to Complainant’s MONSOON trademark because the disputed domain names contain the trademark in its entirety and because the insertion of the generic terms “dress”, “dresses”, “UK”, or “sale” do not distinguish the disputed domain names from the MONSOON trademark and instead increase the likelihood of confusion because they relate directly to Complainant’s business associated with its MONSOON trademark.

Complainant claims Respondents have no rights or legitimate interests in the disputed domain names because (1) Respondents are not connected to Complainant or authorized by Complainant in any way to use the mark MONSOON, (2) Respondents have not used or been known by the term “monsoon” or similar terms, (3) Respondents do not use the disputed domain names in connection with the bona fide offering of goods or services, (4) Respondents appear to be using the disputed domain names to commit fraud on consumers by accepting payment but failing to ship goods, (5) Respondents are deliberately misrepresenting an affiliation with Complainant to misappropriate Complainant’s goodwill in its MONSOON trademark, (6) Respondents’ use of the disputed domain names is not a legitimate noncommercial or fair use.

Complainant claims Respondents have registered and are using the disputed domain names in bad faith because (1) Respondents knew of Complainant and the MONSOON trademark, and were aware of its reputation in women’s clothing when registering the disputed domain names, (2) the websites linked to the disputed domain names are all designed to deceptively imply a connection with Complainant by including Complainant’s MONSOON trademark, images, and product descriptions copied from Complainant’s website, (3) the websites linked to the disputed domain names deceptively purport to sell Complainant’s goods at substantially reduced prices, (4) Complainant’s sales and reputation are being damaged due to diversion of consumers and Respondents’ failure to provide goods after payment.

Complainant additionally claims the passive use of <monsoon-dress.net> is also a bad faith use because there is no plausible, actual, or reasonably contemplated active use of the disputed domain names by Respondents that could be legitimate.

In the Supplemental Filing, Complainant notes that <monsoon-dress.net> now resolves to an active website purporting to sell Complainant’s clothes under the MONSOON trademark at substantially reduced prices, and the website features Complainant’s images and product descriptions without Complainant’s authorization.

B. Respondent

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreements for two of the nine disputed domain names is Chinese. The language of the registration agreements for the remaining seven disputed domain names is English. Complainant has requested that English be recognized as the language of the proceeding. Respondents have not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondents to answer the Complaint in either language.

The Center has communicated with Respondents in the English and Chinese languages and has provided Respondents with the opportunity to file a response in either language. The content featured on the websites linked to the disputed domain names is displayed in English, and this demonstrates to the Panel that Respondents have a working knowledge of the English language. Furthermore, all the disputed domain names utilize English language words, including the generic terms added to Complainant’s MONSOON trademark. Taking the foregoing points into account along with Respondents’ default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay.

B. Consolidation of the Parties

The consolidation of multiple registrants as respondents in a single UDRP proceeding may be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

Common control or ownership has been found (1) in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names, (2) based on instances of commonality in registration information, (3) where the content of multiple respondents’ websites were substantially identical and referred Internet visitors to a common “homepage”, and (4) where domain names of multiple respondents were registered with same registrar and resolved to essentially identical websites. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, supra.

Here, the record shows that each of the disputed domain names were registered approximately at the same time using the same selection of registrars. Furthermore, Respondents either used a common privacy service provider or indicated the same province in China as a portion of their contact information. The record also shows that each of the registered domain names have been linked to websites that are essentially identical to each other in content, design, and functionality.

In addition, each of the disputed domain names incorporates Complainant’s MONSOON trademark in its entirety, and each of the disputed domain names have been used in an identical manner to divert consumers from Complainant’s website. The record shows that Complainant has been the target of common conduct based on the registration and use of the disputed domain names and that such conduct interferes in Complainant’s rights in the MONSOON mark. Furthermore, Complainant’s claims against the disputed domain names involve common questions of law and fact.

In light of this, the Panel finds that consolidation would be procedurally efficient. Consolidation here promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. Id. Furthermore, there is no evidence suggesting that consolidation under the present circumstances would unfairly favor or prejudice any party.

Accordingly, the Panel finds that Complainant has established more likely than not that the disputed domain names are subject to common ownership or control sufficient to justify consolidation of Complainant’s claims against Respondents. The Panel further finds in the circumstances of this case that consolidation is equitable and procedurally efficient. The Panel concludes that consolidation is consistent with the Policy, the Rules, and with prior relevant UDRP decisions, and allows consolidation as requested by Complainant.

C. Consideration of the Supplemental Filing

Under paragraph 10 of the Rules, the panel is invested with the authority to “determine the admissibility, relevance, materiality and weight of the evidence” so long as the panel ensures that all parties “are treated with equality and that each party is given a fair opportunity to present its case.” Here, Complainant offers the Supplemental Filing in support of its argument that <monsoon-dress.net> was registered and is being used in bad faith. The record shows Complainant provided copies of the Supplemental Filing to Respondents at the time of filing. The record also shows that Respondents have not replied to any of Complainant’s contentions or filings in this matter, notwithstanding being able to communicate sufficiently to set up and link a new website to <monsoon-dress.net>.

The Panel finds that Respondents have been given a fair opportunity to respond to the Supplemental Filing. The Panel therefore admits the Supplemental Filing as relevant to issue of bad faith registration and use of <monsoon-dress.net>.

D. Identical or Confusingly Similar

The record shows Complainant owns trademark rights in MONSOON recognized, inter alia, in the European Community and the UK prior to the creation of the disputed domain name registrations in April and May of 2012. The record also shows that Respondents are purporting to use the disputed domain names in connection with the sale of goods.

The disputed domain names combine the literal element consisting of Complainant’s MONSOON trademark with various generic terms, such as “dress”, “dresses”, “UK”, or “sale”. The Panel views the “monsoon” portion of the disputed domain names as identical to Complainant’s MONSOON trademark, and so the disputed domain names feature Complainant’s trademark in its entirety.

It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s country of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence”).

Furthermore, the mere addition of a generic term to Complainant’s MONSOON trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.

Here, each of the disputed domain names incorporates the entirety of Complainant’s trademark, and the additional generic terms do not reduce the prominence of Complainant’s trademark therein. Rather, the additional generic terms “dress”, “dresses”, “UK”, and “sale” increase the likelihood of confusion because they relate directly to Complainant’s business, location, and goods associated with the MONSOON trademark. Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the inclusion of the various generic terms to Complainant’s MONSOON trademark creates a new or different mark or literal element which is materially different to Complainant’s trademark. It is therefore difficult to imagine a scenario where consumers would not be confused by the use of the trademark to compose the disputed domain names.

The Panel concludes that the disputed domain names are confusingly similar to Complainant’s MONSOON trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

E. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that Respondents are associated or affiliated with Complainant or that Respondents have any other rights or legitimate interests in the term “monsoon”. As such, Complainant has successfully presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, which Respondents have not rebutted. It’s further discussed below, the Panel finds the Respondents are not engaged in a bona fide offering of goods and services. Furthermore, there is no evidence in the record to indicate that Respondents’ use of the disputed domain names is a legitimate noncommercial or fair use, or that the Respondents are commonly known by the disputed domain names.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

F. Registered and Used in Bad Faith

The record shows Complainant owns trademark rights in MONSOON that precede creation of the disputed domain names. The disputed domain names are predominantly composed of the trademark and incorporate the trademark in its entirety. A simple Internet search for “monsoon” and “dress” or “UK” results in links predominantly related to Complainant and Complainant’s website. The Panel finds that Respondents were likely aware of Complainant or should have known of Complainant when registering the disputed domain names.

The record also shows that the content of the websites linked to the disputed domain names feature the MONSOON trademark and advertise the same goods as those offered by Complainant under the MONSOON trademark. The Panel finds that Respondents’ advertisement of goods constitutes commercial competition with Complainant and Complainant’s goods that trades on the goodwill invested in Complainant’s MONSOON trademark.

The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. By registering domain names using Complainant’s MONSOON trademark and advertising goods in competition with Complainant, Respondents are intentionally diverting traffic from Complainant’s website.

Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.

The record shows that Respondents have used the disputed domain names to advertise goods in commercial competition with Complainant and Complainant’s goods. Moreover, the incorporation of Complainant’s trademark in the disputed domain names combined with the content featured on the websites linked to the disputed domain names without an accurate disclosure of the Respondents’ relationship with the Complainant illustrates an intent to deceive consumers into believing that the disputed domain names are somehow associated with, affiliated with, and/or endorsed by Complainant and is not bona fide. There is no evidence in the record to refute this conclusion.

The Panel concludes that Respondents conduct falls within the scope of paragraph 4(b)(iv) of the Policy.

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 names, <monsoon-dress.com>, <monsoon-dresses.com>, <monsoon-dresses.net>, <monsoondresses.net>, <monsoondressessale.com>, <monsoon-dress.net>, <monsoondress.net>, <monsoondressesuk.com>, and <monsoondressesuksale.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: July 20, 2012