WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mothercare UK Limited v. Hazhir Bahar
Case No. D2015-1433
1. The Parties
Complainant is Mothercare UK Limited, of Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Hazhir Bahar, of Tehran, Islamic Republic of Iran.
2. The Domain Names and Registrar
The disputed domain names <mothercare-iran.com> and <mothercare-tehran.com> (the “Domain Names”) are 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 13, 2015. On August 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 14, 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 proceedings commenced on August 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2015.
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.
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 Names <mothercare-iran.com> and <mothercare-tehran> were registered on December 20, 2014.
The trademark registrations of Complainant were issued prior to the registration of the Domain Names.
5. Parties’ Contentions
Complainant submits that the Domain Names are confusingly similar to its MOTHERCARE trademarks as they contain the MOTHERCARE trademark in its entirety.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Names. According to the evidence submitted by Complainant the websites to which the Domain Names resolve are replica sites of the site operated by Complainant under “www.mothercare.com”; the websites contain all elements of Complainant’s branding, including the MOTHERCARE trademark and its logo. The owner of the Domain Names 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 is using the Domain Names with intent for commercial gain and to misleadingly divert consumers. This use is also intended to tarnish the trademark of Complainant.
Complainant submits that Respondent has registered and is using the Domain Names in bad faith. According to Complainant Respondent has registered and is using the Domain Names to create the misleading impression of being associated with Complainant. This is evident from the flagrant use of Complainant’s trademark on the website to which the Domain Names 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 did not reply to Complainant’s contentions.
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 prove each of the following three elements to obtain an order that the Domain Names should be transferred or cancelled:
(i) the Domain Names registered by Respondent are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first establish rights in a trademark or service mark and second, that the Domain Names are 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 Names.
The Domain Names <mothercare-iran.com> and <mothercare-tehran> incorporate 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 elements “iran” respectively “tehran” is insufficient to avoid a finding of confusing similarity. The Panel finds that Complainant has proven that the Domain Names are 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 Names. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Names incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Names 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 Names in order to sell products through its websites 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 Names. 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 Names nor has it acquired any trademark rights.
Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names and paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith. Complainant has rights in the MOTHERCARE trademarks. Respondent knew or should have known that the Domain Names included Complainant’s widely-known marks.
The Panel notes that the Domain Names incorporate Complainant’s trademark in its entirety which indicates, in the circumstances of this case, that Respondent registered and used the Domain Names with the intention to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its websites or location or of a service on its websites or location. This is particularly true as the websites to which the Domain Names resolve are almost identical copies of the website of Complainant.
The Panel finds that Complainant has proven that the Domain Names have been registered and are 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 Names <mothercare-iran> and <mothercare-tehran> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: September 24, 2015