WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Waldin, LLC. v. David Sun, China DNS, Inc.
Case No. D2016-0894
1. The Parties
The Complainant is Waldin, LLC of Reseda, California, United States of America, internally represented.
The Respondent is David Sun, China DNS, Inc., of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <milamoursi.com> is registered with DNSPod, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2016, the Registrar transmitted by email confirming to the Center that the disputed domain name was locked and that the publicly available WhoIs information regarding the disputed domain name was correct. However, the Registrar did not reply to other questions in the Center’s request for registrar verification email. Despite of its several reminders, the Center did not receive any further reply from the Registrar. On May 19, 2016, the Center engaged with ICANN Compliance in this matter.
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 the Respondent in English of the Complaint, and the proceeding commenced on May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016.
On May 31, 2016, following the Center’s engagement with ICANN Compliance, the Center received further information from the Registrar that the language of the Registration Agreement is in Chinese.
In light of the above and out of an abundance of caution, the Center re-notified the Complaint to the Respondent in both Chinese and English pursuant to the Rules, paragraphs 2 and 4, on May 31, 2016. In accordance with the Rules, paragraph 5, the updated due date for Response was June 20, 2016. The Response was filed with the Center on June 12, 2016.
On June 21, 2016, unsolicited supplemental filing was received from the Complainant. On the same day, the Respondent replied to the Complainant’s email, objecting to the submissions being made in English and reserving its rights to proceed the case in Chinese.
The Center appointed Douglas Clark as the sole panelist in this matter on June 27, 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 the proprietor of the trademark, MILA MOURSI, registered with the United States Patent and Trademark Office (USPTO), registration number 4,877,351, registered on December 29, 2015. “Mila Moursi” is also the name of the individual who owns the Complainant, Waldin, LLC.
The trademark MILA MOURSI has been used in commerce since 1984 in connection with the sale of non-medicated skin care preparations.
The Complainant operates the ecommerce website, “www.milamousiskincare.com”. It also owns the domain names <mila-moursi.com>; <milamoursi.me>; <milamoursi.org>; and <milamoursi.net>.
The disputed domain name was registered on February 3, 2016.
The disputed domain name currently resolves to pages written in English with the headline, “Boost your online business & global expansion”, “milamoursi.com is a powerful internet brand” and a “Buy Now” button in the center.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name <milamoursi.com> is identical to its MILA MOURSI trademark because it comprises the Complainant’s mark in its entirety coupled with the generic Top-Level Domain (“gTLD”) “.com”. The addition of the gTLD “.com” does not add any distinctiveness to the disputed domain name. It is therefore identical to the Complainant’s registered trademark MILA MOURSI.
No rights or legitimate interests
The Complainant has not licensed, transferred or assigned to the Respondent any rights to use its registration trademark, MILA MOURSI. The Complainant submits that the Respondent has not been known by the name “Mila Moursi”. When entering the term, “Mila Moursi”, in Google the returned results all point to the Complainant and its products and services and to the Complainant’s owner.
The Complainant also submits that the Respondent’s webpage at “www.milamoursi.com” states that the disputed domain name is “a powerful Internet brand”, “strengthen your marketing strategy”, and “build your own brand online”. That indicates the Respondent is using the disputed domain name solely for the purpose of selling the disputed domain name, or to coerce the Complainant to purchase the disputed domain name.
Registered and used in bad faith
The Complainant contends that the Respondent’s only interest in the disputed domain name is to sell the domain name registration at a price exorbitantly in excess of the Respondent’s out of pocket costs for acquiring the disputed domain name. The Complainant offered to purchase the disputed domain name for USD 500. The Respondent counter-offered to sell the disputed domain name for USD 28,000. The Complainant submits that the disputed domain name has no value to the Respondent, other than commanding an exorbitant price for it from the Complainant.
The Complainant further contends that the Respondent has a history of registering domain names related to trademarks of other solely for the purpose of extracting a payment from the lawful owners of similar or identical trademarks. The decisions relied upon are: Merck KGaA. v. David Sun, China DNS, Inc., WIPO Case No. D2010-1971; and COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN v. ChinaDNS, Inc., ADNDRC Case No. CN-1100447.
The Respondent submits that the Complainant’s United States trademark has no effect in China. In China, the trademark MILA MOURSI is owned by Chongqing Diyou Apparel Company Limited (“Chongqing Diyou”), registered under registration number 16433833 filed on March 3, 2015 and registered on May 28, 2016. The Respondent contends that the Complainant claims to have prior trademark rights, but when Chongqing Diyou filed its application for the trademark more than a year ago, the Complainant did not raise any opposition or seek revocation of the trademark MILA MOURSI in China.
In addition, before the disputed domain name <milamoursi.com> was registered, the Complainant has been using the domain name <milamoursiskincare.com>. The registration of the disputed domain name <milamoursi.com> has not affected the Complainant’s business activities, does not create confusion, nor does it mislead the public.
6. Discussion and Findings
6.1 Procedural issues
A. Language of the Proceeding
In accordance with paragraph 11 of the rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. That is, in this case, the default language of this proceeding should be Chinese.
However, the Complainant requested proceeding should proceed in English on the basis that:
(a) The Complainant has received correspondence from the Respondent in English; and
(b) The website under the disputed domain name is written in English.
The Respondent opposed this application and requested that Chinese be the language of the proceeding and that all documents filed in English be filed in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The website under the disputed domain name is in English. It is offering the disputed domain name for sale in English. The response to the Complainant’s offer to purchase the disputed domain name was sent in English, although this content may have been generated by the third party escrow agent used by the Respondent. It is, nevertheless, clear that the Respondent’s business is the registration and sale of valuable domain names that it conducts in English.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby determines pursuant to paragraph 11 of the Rules, to follow the Center’s preliminary determination to accept the Complaint in English and allow the Respondent to file its response in Chinese. It will render its decision in English.
B. Supplemental Filing
On June 21, 2016, prior to the appointment of the Panel, the Complainant sent another email to the Center with a Reply to the Response filed by the Respondent.
Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings.
Paragraph 10(d) of the Rules states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include:
“that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”
Applying these principles to the present case, the Panel noted the Complainant’s statement in its covering email and annexes that the Reply was submitted to object to the Response submission as failing to meet formality requirements and as it was not sent from the email address listed in the WhoIs for the Respondent. Noting that the Response was sent from the email address listed on the Website under the disputed domain name, and the Response was timely submitted, the Panel finds no exceptional circumstances to consider the Complainant’s Supplemental Filing in rendering this decision.
6.2 Substantive Decision
A. Identical or Confusingly Similar
The disputed domain name <milamoursi.com> is identical to the Complainant’s trademark MILA MOURSI registered in the United States. Although the Complainant does not have a trademark registration in China, this is not normally a relevant factor under the first element, as the first element of the UDRP is generally considered a standing issue.
Paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Complainant alleges that it has no connection with the Respondent and that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 2.1 of the WIPO Overview 2.0 provides:
“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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish rights or legitimate interest in the disputed domain name. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
The Respondent alleges that an unrelated company, Chongqing Diyou, owns the trademark MILA MOURSI in China. However, the fact that another party with no relation to the Respondent may have registered a trademark, does not confer any rights or legitimate interests on the Respondent in relation to the disputed domain name.
None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The second element of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
This case falls with paragraph 4(b)(i) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The advertising of the disputed domain name for sale on the website under the disputed domain name <milamoursi.com> satisfies this sub-paragraph. Based on the content displayed on the website, the Respondent is clearly seeking to profit from either the Complainant or its competitors by including phrases such as “Strengthen your marketing strategy”, “Build your brand online”, and “The value of the domain name will gradually rise, the sooner purchasing the more wise”. Against this backdrop, the Respondent’s offer to sell the disputed domain name to the Complainant for USD 28,000, albeit as a counter offer to the Complainant’s initial inquiry, is indicative of the Respondent’s initial intent to make a profit from the registration of the disputed domain name.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
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 <milamoursi.com> be transferred to the Complainant.
Date: July 15, 2016