WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mothercare UK Limited v. Roohallah Famil Shoughi, Ranik Moshaver/Mothercare Iran
Case No. D2015-1419
1. The Parties
Complainant is Mothercare UK Limited of Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Roohallah Famil Shoughi, Ranik Moshaver of Tehran, Islamic Republic of Iran; Mothercare Iran of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <mothercareiran.com> (the “Domain Name”) is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2015. On August 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceeding commenced on August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015.
On August 19, 2015 and September 2, 2015, email communications were received from Respondent who appeared to be willing to settle the dispute with Complainant. On August 20, 2015, the Center invited Complainant to comment whether it would like to suspend the proceeding for possible settlement between the parties. On September 2, 2015, Complainant indicated to the Center that it would like to continue with the proceeding. On September 3, 2015, the Center confirmed that the proceeding would continue and the Response due date remained September 8, 2015. On September 11, 2015, the Center informed the parties that it would proceed with panel appointment shortly.
On September 16, 2015, the Center sent an email communication to the Registrar indicating that the Registrant information appeared to have been changed from “Roohallah Famil Shoughi, Rainik Moshaver” to “Mothercare Iran”, citing paragraph 4(b) of the Rules, “[t]he Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent’s data […] must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent’s data following the two (2) business day period may be addressed by the Panel in its decision”, and requesting the Registrar to clarify the situation. On the same day, the Registrar confirmed to the Center that such change in registrant information happened due to the bug in its system which had been looked into, and the Domain Name would remain locked during the pending proceeding.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on September 18, 2015. 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 Panel shall consider the email communications submitted by Respondent to the Center on August 19, 2015 and September 2, 2015 as the Response.
4. Factual Background
Complainant Mothercare UK Limited was established in the United Kingdom in 1961 and offers a wide range of maternity and children’s clothing, furniture and home furnishings, bedding, feeding, bathing, travel equipment and toys through its retail operations in the United Kingdom, and also operates internationally through franchises in Europe, the Middle East, Asia and Latin America. The franchise partners operate through 1,273 stores. Franchise partners operate under the MOTHERCARE trademarks and exclusively designed products sourced by Mothercare are sold in the stores and through websites around the world.
According to the evidence submitted by Complainant, Complainant has a very large number of worldwide trademark registrations for MOTHERCARE, including three trademark registrations in Iran with registration numbers 35690 (registration date January 17, 1981), 45809 (registration date September 20, 1976) and 50423 (registration date September 25, 1978). In addition, Complainant operates websites containing the MOTHERCARE trademark, in particular under “www.mothercare.com”.
The Domain Name <mothercareiran.com> was registered on December 24, 2014.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to its MOTHERCARE trademark as it contains the MOTHERCARE trademark in its entirety.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. According to the evidence submitted by Complainant the website to which the Domain Name resolves is a replica site of the site operated by Complainant under “www.mothercare.com”; the website contains all elements of Complainant’s branding, including the MOTHERCARE trademark and its logo. The website to which the Domain Name resolves is selling products through the website under the MOTHERCARE trademark without the authorization of Complainant and is clearly purporting to be linked to or affiliated with Complainant when this is not the case. Respondent also operates a MOTHERCARE store which is pictured on the website to which the Domain Name resolves and such store copies the look and feel of Complainant’s stores. Respondent is using the Domain Name with intent for commercial gain and misleadingly to divert consumers. This use is also intended to tarnish the trademark of Complainant.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. According to Complainant Respondent has registered and is using the Domain Name to create the misleading impression of being associated with Complainant. This is evident from the flagrant use of Complainant’s trademarks on the website to which the Domain Name resolves as well as the fact that he has directly copied the entire look and feel of Complainant’s website in order to lure Internet users to his website for his own financial gain and to the detriment of Complainant.
Respondent acknowledges the misunderstanding and ownership of the Domain Name without getting permission from Complainant. Respondent submits that he was not aware that there was an issue by having the word “iran” at the end of the Domain Name. According to Respondent he is ready to solve the issue by either suspending or selling the Domain Name to Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for MOTHERCARE. The Panel notes that Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name <mothercareiran.com> incorporates the entirety of the widely known MOTHERCARE trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the generic geographic element “iran” is insufficient to avoid a finding of confusing similarity. The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s MOTHERCARE trademarks and paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not 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 of Complainant. Based on the evidence provided by Complainant, Respondent uses the Domain Name in order to sell products and advertise its store through its website using the MOTHERCARE trademark. This cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the MOTHERCARE trademarks, in particular as there has never been any business or franchise relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has he acquired any trademark rights.
Respondent has not rebutted Complainant’s prima facie case. In his short response Respondent in practice acknowledges that he has not obtained the required permission from Complainant.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name and paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Complainant has rights in the MOTHERCARE trademarks. Respondent knew or should have known that the Domain Name included Complainant’s widely-known marks. In his response Respondent indicated that he was aware of the MOTHERCARE trademarks adding that he was not aware that there was an issue by adding the word “iran” to the trademark at the end of the Domain Name.
The Panel notes that the Domain Name incorporates Complainant’s trademark in its entirety which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of his website or location or of a service on his website or location. This is particularly true as the website to which the Domain Name resolves is an almost identical copy of the website of Complainant.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mothercareiran> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: September 24, 2015