WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. luo yuandong, laoyuandong / Xinnet Whois Privacy Pro Service, Debra Nelis / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2017-0648
1. The Parties
The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Island ("United Kingdom"), represented by SILKA Law AB, Sweden.
The Respondents are luo yuandong, laoyuandong of Jiangmen, Guangdong, China / Xinnet Whois Privacy Pro Service of Bejing, China; Debra Nelis of Drenthe, Netherlands / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Names and Registrars
The disputed domain name <moueskimoboots.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <mou-sneakers.com> is registered with Xin Net Technology Corp. (referred together as the "Domain Names").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2017. On March 31, 2017, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainRegistry.com and Xin Net Technology Corp. (the "Registrars") a request for registrar verification in connection with the Domain Names. On April 1 and April 3, 2017, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2017 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint including consolidation request on April 5, 2017. In view of this the Respondents will hereafter be referred to as the "Respondent". In response to a notification by the Center regarding the remedies requested and one of the blank annexes to the Complaint, the Complainant filed an amended Complaint including the amended annex to the Complaint on April 5, 2017.
On April 5, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On April 6, 2017, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to the Complaint and 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on May 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 is a fashion company based in the United Kingdom producing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. It was founded in 2002 and has grown significantly in size since then. The products are sold under the brand MOU. The MOU word and MOU Logo trade marks are registered in many territories worldwide including the European Union and China with the earliest trade mark registration dating back to 2007 (the "Trade Mark").
The Complainant also has a portfolio of domain names including <mou-online.com>, <mou-boots.com>, <mouboots.net>, <mouboots.online>, <mouboots.moda>, <mouboot.info>, <mou-boot.info>, <mouboot.us>, <mou-boot.us>, <mouboots.info>, <mou-boots.org> and <mouboots.us>.
The Complainant's products are stocked in boutiques and department stores worldwide. Online sales are made through the Complainant's website "www.mou-online.com" which is operated by the Complainant's authorized licensee. The Complainant and its authorized licensee operate various social media accounts to promote its products. On Facebook – "www.facebook.com/MouLondonOfficial" and "www.facebook.com/MOU-Boots-1526147920956521/?fref=ts", Instagram – "www.instagram.com/mouofficial/", Twitter "www.twitter.com/MOUlondon" and Pinterest "www.pinterest.com/moulondon/".
The Complainant's brand is well known in the fashion industry and has many celebrity customers including Cameron Diaz and Gwyneth Paltrow and widespread press coverage. The Trade Mark is well known in the fashion industry.
The Respondent registered <moueskimoboots.com> on March 16, 2016 and <mou-sneakers.com> on February 6, 2017. The Domain Name <moueskimoboots.com> resolved to a wordpress blog, which included several references and hyperlinks to the Domain Name <mou-sneakers.com>. The website connected to the Domain Name <mou-sneakers.com> (the "Website") purported to offer for sale the Complainant's products and reproduced the Complainant's MOU Logo trade mark as well as photographs found on the Complainant's website. The Domain Names do not resolve to any active websites at the time of this Decision.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
(1) The website connected to the earlier registered Domain Name <moueskimoboots.com> makes reference and hyperlinks to the website connected to the later registered <mou-sneakers.com> which indicates that the owner of <moueskimoboots.com> must have been aware of the Domain Name <mou-sneakers.com> and is also the owner.
(2) The Domain Names use the same servers.
(3) Both registrants are shielding and concealing their identities behind privacy protection services.
(4) The Domain Names incorporate the Trade Mark.
(5) The underlying registrant of <moueskimoboots.com> has been the respondent on several UDRP proceedings for domain names which contain the Trade Mark and were connected to websites that were identical to that connected to <mou-sneakers.com>. These include:
- Mou Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Debra Nelis and Erica Hosfelt, WIPO Case No. D2016-2625 (<mou-bootssale.net>, <moubootssale.net>, <moueskimo.com>, <mou-sale.net> and <mou-shoes.com>);
- Mou Limited v. Debra Nelis, WIPO Case No. D2016-2031 (<mouboots-sale.com>, <mou-bootssale.com> and <mousale.net>);
- Mou Limited v. Zeng Xiang / Debra Nelis / Privacy Protection Service Inc. d/b/a PrivacyProtect.org, WIPO Case No. D2016-0759 (<mouboots-sale.com>, <mousale.net>, <moubootssale.com> and <mou-it.com>);
(6) Both registrants use a Hotmail email address.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent's cases and extracted the following general principles:
(1) Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 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.
(2) The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Trade Mark in its entirety, and one of the websites makes references and hyperlinks to the other. Furthermore the registrant of one Domain Name has been the respondent of three previous UDRP proceedings in connection with domain names which also include the Trade Mark and websites identical to that connected to the other Domain Name. The Panel also accepts the rest of the Complainant's submissions. All of them point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant's rights in the Trade Mark. Furthermore, Complainant's claims against the Domain Names involve common questions of law and fact.
Furthermore, the Respondent did not respond to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrars, the language of the Registration Agreement for <mou-sneakers.com> is Chinese while the language of the Registration Agreement for <moueskimoboots.com> is English.
The Complainant submits in its email of April 6, 2017 that the language of the proceeding should be English. The Complainant contends that the Respondent never bothered to respond to any previous UDRP disputes. In the current case, the content of the Websites is in English and the Domain Names include the English words "sneakers" and "boots" which indicate that the Respondent is familiar with the English language.
If the documents have to be submitted in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Names comprise the Complainant's Trade Mark MOU in its entirety and for one a hyphen "-" and the dictionary term "sneakers" and the other the words "eskimo" and "boots". The addition of these terms does nothing to minimise the risk of confusion. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD").
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
E. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that 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 does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose. Further, the Domain Name <mou-sneakers.com> purported to offer for sale the Complainant's products. The Respondent is not an authorized seller of the Complainant's products. Yet the Websites suggest that the Respondent is an authorized agent. In fact the Website connected to <mou-sneakers.com> says, "Welcome to the official Mou Boots Sale online Store", when this is not the case. The prominent display of the MOU Logo increases the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Websites.
It would appear to the Panel that the products on sale on the Website at the Domain Name <mou-sneakers.com> are counterfeit goods.
There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
The other Domain Name <moueskimoboots.com> makes references and hyperlinks to the Domain Name <mou-sneakers.com>.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
F. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Names. The Complainant has provided sufficient evidence that the registration of the Domain Names post date the MOU trade mark registrations.
The very incorporation of the Trade Mark in the Domain Names and the display of the Trade Mark and the offer for sale of non-genuine MOU products on the Website confirm the Respondent's awareness of the Trade Mark. Further, the Respondent has been the respondent in three previous UDRP proceedings in connection with Domain Names which include the Trade Mark as referred to in paragraph 5.A above. This amounts to a pattern of conduct of registering domain names in or to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name in accordance to paragraph 4(b)(ii) of the Policy.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The products offered for sale on the Website at the Domain Name <mou-sneakers.com> are likely to be counterfeit MOU products for reasons set out in paragraph 6.E. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites depict the Respondent as the authorized agent or distributor of the Complainant. The content of the Websites is also calculated to give the impression that it has been authorized by the Complainant when this is not the case. The Websites were set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraphs 4(b)(ii) and (iv) of the Policy.
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 <moueskimoboots.com> and <mou-sneakers.com> be transferred to the Complainant.
Date: May 12, 2107