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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mothercare UK Limited v. Marjan Mohammadsalim, RadCom Domain Department

Case No. D2017-0024

1. The Parties

The Complainant is Mothercare UK Limited of Watford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Stobbs IP Limited, United Kingdom.

The Respondent is Marjan Mohammadsalim, RadCom Domain Department of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <mothercarekish.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. The Respondent did not submit a formal response but sent informal communications on January 14 and 19 and February 4, 2017.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 8, 2017. 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 has provided evidence that it is the owner of a number of trademark registrations for MOTHERCARE in numerous countries, including the following:

MOTHERCARE & M (device), trademark issued by the Islamic Republic of Iran with registration number 35690 and registration date January 17, 1971 for class 25.

MOTHERCARE & M (device), trademark issued by the Islamic Republic of Iran with registration number 45809 and registration date September 20, 1976 for classes 3, 5, 10, 12, 24 and 28.

MOTHERCARE & Dolly (device), trademark issued by the Islamic Republic of Iran with registration number 50423 and registration date September 25, 1978 for classes 35 and 39.

The disputed domain name <mothercarekish.com> was registered on June 7, 2009. The disputed domain name resolves to a website offering the Complainant’s and / or similar products for sale

5. Parties’ Contentions

A. Complainant

The Complainant 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.

The Complainant also operates internationally through franchises in Europe, the Middle East, Asia and Latin America. The franchise partners operate through 1,310 stores. The franchise partners operate under the MOTHERCARE trademark and exclusively designed “Mothercare” products sourced by the Group are sold in the stores and through websites around the world. As of March 2016, United Kingdom sales totaled over GBP 450 million and international sales totaled GBP 680 million. The Complainant’s total turnover totaled over GBP 700 million.

Since its first use of the MOTHERCARE trademark, the Complainant has built up and owns substantial goodwill and reputation in the trademark, particularly when used in relation to childcare and parenting products and services. When members of the public see the MOTHERCARE trademark, they perceive it to be used in relation to goods and services of the Complainant, or a business economically linked to or endorsed by the Complainant.

The disputed domain name <mothercarekish.com> is a replica site of the Complainant’s genuine website “www.mothercare.com”. The copy site not only incorporates elements of the Complainant’s branding, i.e., the MOTHERCARE trademark, but it also offers for sale goods which are highly similar to the products the Complainant offers on the genuine website.

The Complainant is consistently active in protecting its brand and takes necessary action against any third party who is infringing the trademark. This is reinforced by the number of successful UDRP decisions against domain names containing the MOTHERCARE trademark. See for example Mothercare UK Limited v. Aliakbar Hoseinzade, WIPO Case No. D2015-2319; Mothercare UK Limited v. Hazhir Bahar, WIPO Case No. D2015-1433 and Mothercare UK Limited v. Roohallah Famil Shoughi - Ranik Moshaver/Mothercare Iran, WIPO Case No. D2015-1419.

The Respondent does not have any rights or legitimate interests in the disputed domain name which includes the identical “Mothercare” element. The Respondent is selling products through the website under the MOTHERCARE trademark without the authorization of the Complainant and is clearly purporting to be linked to or affiliated with the Complainant when this is not the case. The Respondent is using the disputed domain name with intent for commercial gain and misleadingly to divert consumers. This use is also intended to tarnish the trademark at issue. There is no evidence to suggest that there is due cause or legitimate interest in the use and registration of the disputed domain name.

It is apparent that the Respondent is acting in bad faith by registering a domain name which contains the identical element “Mothercare”. Since the disputed domain name resolves to a website which flagrantly seeks to imitate that of the Complainant, it is clear that the Respondent registered the disputed domain name with full knowledge of the Complainant’s business.

The behavior of the Respondent is disrupting the business of the Complainant. The Respondent is purporting to be the Complainant and is selling “Mothercare”-branded product on its website which are not authorized by the Complainant.

The Complainant prides itself on the high quality and safety standards which it strictly adheres to across its product range. Since the products being sold through the Respondent’s website have not been authorized by the Complainant, they may not adhere to the high standards that consumers have come to expect and rely on from the Complainant’s products. Sales of low grade, low quality or unsafe products are liable to damage the reputation of the Complainant.

Further, the Complainant operates successful franchise operations, throughout the world, including in the Middle East. The activities of the Respondent jeopardize potential franchise opportunities in the Islamic Republic of Iran for the Complainant since they prevent the Complainant from extending its business to the Islamic Republic of Iran.

The Respondent’s use of MOTHERCARE infringes the Complainant’s trademark registrations in Islamic Republic of Iran. It is clearly the case that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

This is evident from the Respondent’s flagrant use of the Complainant’s trademarks on its website as well from the fact that the Respondent directly copied the entire look and feel of the Complainant’s website in order to lure Internet users to his website for his own financial gain and to the detriment of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, but RadCom sent three informal communications asking what its costumer should do.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the submitted evidence, the Complainant is the owner of the registered trademark MOTHERCARE. The disputed domain name <mothercarekish.com> incorporates the Complainant’s trademark MOTHERCARE in its entirety with the addition of the geographical location “Kish”.

The addition of generic words and geographic locations to a trademark in a domain name, such as “Kish”, does not distinguish the disputed domain name from the trademark of the Complainant. See for example Alstom v. Yulei, WIPO Case No. D2007-0424 regarding the domain name <alstom-china.com>, in which the panel held that the suffix of the geographic location “china” created an increased level of confusion as Internet users could believe that the Respondent’s website was the Complainant’s official website devoted to its customers in China.

Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the MOTHERCARE trademark in the disputed domain name. From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and MOTHERCARE trademark. Furthermore, it has been argued by the Complainant that the Respondent’s website is a replica site of the Complainant’s website as it contains not only the MOTHERCARE trademark but also the same look and feel as the Complainant’s website. In addition, the disputed domain name is being used by the Respondent to sell the same type of products for which the Complainant has registered the MOTHERCARE trademark. Thus, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name. Consequently, the Respondent has not rebutted the Complainant’s prima facie case.

By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant’s trademark registrations for MOTHERCARE predate the registration of the disputed domain name <mothercarekish.com>. The Complainant has submitted evidence demonstrating that the Respondent is offering products relating to babies, children and parents for sale via the Respondent’s website, to which the disputed domain name <mothercarekish.com> resolves. Furthermore, the evidence in the case demonstrates that the Respondent is not only using the Complainant’s MOTHERCARE trademark on the website but also the same look and feel as the Complainant’s website. Consequently, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain name and website belongs to or is associated with the Complainant.

Considering that the Respondent is reproducing the Complainant’s trademark without permission and that the disputed domain name is used for the same type of products for which the trademark is registered, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark when the Respondent registered and used the disputed domain name.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b)(iv) of the Policy and that the disputed domain name <mothercarekish.com> has been registered and is being used in bad faith.

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 <mothercarekish.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: February 17, 2017

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