WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mou Limited v. Sun Yan Qi / Luo Chao Jian/ Nexperian Holding Limited

Case No. D2017-1079

1. The Parties

The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SILKA Law AB, Sweden.

The Respondent is Sun Yan Qi of Jiande, Zhejiang, China / Luo Chao Jian of Xiamen, Fujian, China / Nexperian Holding Limited of Hangzhou, Zhejiang, China.

2. The Domain Names and Registrar

The disputed domain names <mou-footwear.com>, <moufootwear.com> and <mou-london.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 8, 2017.

On June 7, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 8, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 Chinese and English of the Complaint, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 11, 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 company organized in England and Wales and provides footwear and accessories for men, women and children under the Mou brand. The Complainant was founded in 2002 and has grown significantly since. The Complainant’s products are stocked in boutiques and high-profile department stores worldwide, including in Austria, Australia, Belgium, Brazil, Canada, China, Germany, Greece, Italy, Japan, Republic of Korea, Saudi Arabia, Spain, Turkey, Ukraine, and the United States of America (“United States”), among other jurisdictions. The Complainant also makes wholesale sales in many countries.

The Complainant has a significant online presence. The Complainant sells to consumers around the world via its website at “www.mou-online.com”. The Complainant operates several social media accounts, including on the Facebook, Instagram, Twitter, and Pinterest platforms.

The Complainant’s Mou brand has received widespread press coverage. The Complainant has many celebrity customers and endorsements.

The Complainant is the owner of several trademark registrations for the mark MOU and MOU and design (collectively, the “MOU Marks”), including International Registration Nos. 1005206 (registered April 28, 2009) and 1001663 (registered April 8, 2009), designated for protection in Australia, Switzerland, China, Norway, the Russian Federation, and the Republic of Korea; European Union trademark Registration No. 8164204 (December 11, 2009); Japan Registration No. 5226897 (May 1, 2009); New Zealand Registration No. 721724 (registered November 19, 2004); Republic of Korea Registration Nos. 4011315650000, 4011315660000, 4011315670000 (registered September 22, 2015); and United States Registration No. 3663689 (registered August 4, 2009), among dozens of other registrations and applications globally. The Complainant is also the owner of several domain names, including <mou-online.com>, <mou-boots.com>, <mouboots.net>, and <moulondon.com>.

The Respondent registered all three of the disputed domain names on December 27, 2016. The disputed domain names do not resolve to active websites.

The Registrar provided registration information for the disputed domain names that differed from the public WhoIs information available to the Complainant at the time of the Complaint. The disputed domain names <mou-footwear.com> and <moufootwear.com> are registered to the same entity and share the same contact information and organization name. They also share the same administrative, billing and technical contact name, organization and contact information. The registrant address, phone number, fax number and email address for the disputed domain name <mou-london.com> is the same as those for the administrative contact for the disputed domain names <mou-footwear.com> and <moufootwear.com>. All three disputed domain name share the same name server.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s MOU Marks. The disputed domain names incorporate MOU in its entirety and it is the distinctive and dominant element in the disputed domain names. The inclusion of the descriptive words “footwear” and “London” in the disputed domain names is not sufficient to differentiate them from the Complainant’s MOU Marks. “Footwear” is a term commonly used by the Complainant to indicate that it designs footwear. The Complainant also uses the term “London” in connection with its merchandise.

The Complainant argues further that the Respondent has no rights or legitimate interests in respect of the disputed domain names. First, there is no bona fide offering of goods or services where a disputed domain name incorporates a trademark that is not owned by the Respondent and the Respondent is not known by the name “Mou”. The tendency of the disputed domain names is to induce consumers into visiting the related website under the misapprehension that the website is endorsed by the Complainant. Relying on consumer confusion concerning a well-established trademark cannot support a claim for rights or legitimate interests in the disputed domain names. The disputed domain names resolve to inactive websites. The Respondent has not prepared to use and has shown no evidence of actual use of the disputed domain names in connection with genuine websites. Finally, the Complainant has not licensed or authorized the Respondent to use its MOU Marks.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. First, the Respondent has engaged in a pattern of abusive registrations. The Respondent Nexperian Holding Limited has been subject to previous domain name disputes. SUUNTO OY v. duan xiaosong, duan xiao song / Nexperian Holding Limited, WIPO Case No. D2017-0670; Van Cleef & Arpels, S.A. v. Neperian Holding Limited, WIPO Case No. D2017-0441; NXP B.V. v. Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Si / Shenzhen nanhuang electronics co.ltd / Nexperian Holding Limited, WIPO Case No. D2017-0296; Visiomed Group v. Nexperian Holding Limited / Chu Huan Liu, Liu Chu Huan, WIPO Case No. D2017-0392. Second, the disputed domain names were registered in bad faith. The Complainant has trademark registrations in China, where the Respondent is domiciled, which predate the registration of the disputed domain names. The Complainant has used the Mou brand since as early as 2002 and now distributes products under the MOU Marks in more than forty countries, including in China. It is unlikely that the Respondent was not aware of the Complainant and that the Respondent’s registration of the disputed domain names was unlawful. Third, the disputed domain names are being used in bad faith. The Complainant is unable to find evidence that the Respondent has applied for or is the owner of trademark applications for marks corresponding to the disputed domain names. All results of the Complainant’s Internet searches for “Mou footwear” and “Mou London” using the Google and Baidu search engines are related to the Complainant. The Respondent Nexperian Holding Limited has been part of a phishing scam, according to an article published on the website “www.myonlinesecurity.co.uk”. The Respondent’s overall behavior indicates that the Respondent has no good faith intentions in respect to the disputed domain names. The Respondent’s passive holding of the disputed domain names does not, as such, prevent a finding of bad faith use. All circumstances of the case must be examined. In the current case, cumulative circumstances that are indicative of the Respondent’s bad faith include the Complainant having a well-known mark that predates registration of the disputed domain names, that Nexperian Holding Limited has been a party to a scam, and that the Respondent is not using the disputed domain names for any legitimate use.

The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. At the time the Complaint was filed, the public WhoIs information for the disputed domain names identified Nexperian Holding Limited, an English entity name, as the registrant. The disputed domain names contain English words that are related to the business of the Complainant. Substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. In light of these circumstances, it is appropriate for the Panel to exercise its discretion and allow the proceeding to be conducted in English.

6.2. Consolidation of Respondents

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the disputed domain names are held by the same registrant. In this case, the Registrar identified the same registrant for the disputed domain names <mou-foutwear.com> and <moufootwear.com>; however, the Registrar identified a different registrant for the disputed domain name <mou-london.com>. The Complainant requests that the multiple respondents be consolidated because the circumstances of this case indicate that common control is being exercised over the disputed domain names.

Paragraph 10(e) of the Rules provides that the Panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Consolidation of multiple registrants as respondents in a single proceeding may be appropriate under paragraphs 3(c) and 10(e) of the Rules where the Complainant can demonstrate that the domain names are subject to common control and where the Panel determines that consolidation would be procedurally efficient and fair to all parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

The Complainant has established that it is more likely than not that the disputed domain names are subject to common ownership or control. The disputed domain names <mou-footwear.com> and <moufootwear.com> are registered to the same entity and share the same contact information and organization name. They also share the same administrative, billing and technical contact name, organization and contact information. The registrant address, phone number, fax number and email address for the disputed domain name <mou-london.com> is the same as those for the administrative contact for the disputed domain names <mou-footwear.com> and <moufootwear.com>. All three disputed domain names were registered on the same date. All three disputed domain name share the same name server. At the time of the Complaint, the public WhoIs information for the disputed domain names identified the same party as the registrant, Nexperian Holding Limited, and all three disputed domain names shared the same contact information, including email address. All three disputed domain names were registered through the same Registrar. Additionally, each disputed domain name incorporates the Complainant’s well-known MOU mark in its entirety, further suggesting common ownership or control. See Id. Finally, the Respondent has not contested any of the Complainant’s allegations as to common ownership and control.

Consolidation of the multiple domain name disputes would be procedurally efficient and fair. In this case, “[c]onsolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding”, which will “promote[] the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy.” See Id. Consolidation in this instance will not unfairly favor or prejudice either party.

Accordingly, the Panel concludes that consolidation of the multiple domain name disputes asserted in the Complaint is appropriate in this instance.

6.3. Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the MOU Marks and owns many trademark registrations for the marks.

The disputed domain names are confusingly similar to the Complainant’s mark. Each reproduces the MOU mark in its entirety. Neither the addition of the geographically descriptive term “London” nor the addition of the term “footwear” affects the assessment of whether the respective disputed domain names are confusingly similar to the Complainant’s trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414; see also Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093. MOU remains the dominant portion of the disputed domain names. The addition of hyphens in the <mou-footwear.com> and <mou-london.com> disputed domain names does not distinguish them from the MOU Marks. Punctuation is irrelevant in the confusing similarity analysis, especially when the disputed domain names reproduce the Complainant’s mark in its entirety. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714. Finally, the Top-Level Domain (“TLD”) “.com” in the disputed domain names, being a technical component, has no legal significance in the analysis. See Belo Corp. v. George Latimer, WCM, Inc., WIPO Case No. D2002-0329. Accordingly, the disputed domain names are confusingly similar to the Complainant’s MOU Marks.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain names.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain names by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain names or name corresponding to the disputed domain names in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or

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

The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are not used in connection with any active websites. Nor has the Respondent demonstrated preparation to use the disputed domain names in connection with a bona fide offering of goods or services.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant states, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the MOU Marks.

Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Indeed, the Respondent is not making any use of the disputed domain names. Therefore the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain names in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) The Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain names, 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 such website or location or of a product or service on such website or location.

The Respondent was undoubtedly aware of the Complainant and its MOU Marks at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainant and its MOU Marks are widely known and the Complainant’s Mou-brand goods are distributed throughout the world, including in China, where the Respondent is located. The Complainant owns many trademark registrations around the globe, including in China. The MOU Marks have been in use for several years, with earliest use by the Complainant well over a decade before the date of registration of the disputed domain names. A simple Internet search for “mou” would have yielded many obvious references to the Complainant. That that Respondent incorporated the terms “footwear” and “London”, terms related to the Complainant’s business and use of its MOU Marks, is further evidence that the Respondent was aware of the Complainant, its business and its marks. The Respondent’s intentional registration of domain names incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059.

Given the totality of the circumstances in this case, the Respondent is using the disputed domain names in bad faith. The disputed domain names are confusingly similar to the Complainant’s extensively used and well-known marks; therefore, the Respondent must have been aware that Internet users may reasonably believe that the disputed domain names and resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. Moreover, the Respondent’s holding of the disputed domain names prevents the Complainant from reflecting its mark in the same domain names. See id. The Respondent is holding three domain names that incorporate and are confusingly similar to the Complainant’s well-known mark, preventing the Complainant from reflecting its trademarks in the corresponding domain names. Additionally, the Panel cannot envisage any plausible way in which the disputed domain names could be used by the Respondent that would not interfere with the Complainant’s trademark rights. Passive holding under such circumstances can amount to bad faith use of a disputed domain names. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Therefore, the Panel finds that the Respondent has registered and is using the disputed domain names 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 names, <mou-footwear.com>, <moufootwear.com> and <mou-london.com>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: July 31, 2017