WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mou Limited v. Xinnet Whois Privacy Pro Service / Li Xin Jun

Case No. D2017-2075

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 Xinnet Whois Privacy Pro Service of Beijing, China / Li Xin Jun of Lianyungang, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <moustivali.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2017. On October 25 and November 1, 2017, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain name. On November 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 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 the same day.

On November 6, 2017, the Center sent email in English and Chinese to the Parties regarding the language of the proceeding. On November 9, 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 of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 22, 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 supplier of footwear and accessories for men, women and children that was founded in 2002. Its products are distributed in stores in more than 40 countries, including China, and online. The Complainant owns multiple trademark registrations in multiple jurisdictions, including United States of America Patent and Trademark Office trademark registration number 3663689 for MOU, registered on August 4, 2009, specifying goods in classes 18 and 25, and International trademark registrations numbers 1001663 and 1005206, both for a figurative trademark (the “MOU logo”), registered from April 8 and 28, 2009, respectively, specifying goods in classes 3 and 25, and class 18, respectively. Those trademark registrations remain current. The Complainant has also registered multiple domain names that begin with the letters “mou”, including “mou-online.com” that is used by its authorized licensee in connection with the official website that sells the Complainant’s range of products.

The Respondent is an individual located in China. The disputed domain name was registered on August 31, 2017 and resolves to a website in English that prominently displays the Complainant’s MOU logo and offers the Complainant’s sneakers and boots for sale. Prices are quoted in euro.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademarks because it includes MOU as its distinctive and dominant element. The disputed domain name also includes the Italian word “stivali”, meaning “boots”, which is a descriptive term that is not sufficient to distinguish the disputed domain name from the trademark and, moreover, is a term commonly used by the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not, and never has been, a licensee of the Complainant. The website to which the disputed domain name resolves has no affiliation with the Complainant. The website offers products for sale without any indication of its relationship to the Complainant. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a fair use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks and active business presence make it unlikely that the Respondent was unaware of the Complainant at the time that the Respondent registered the disputed domain name. The website to which the disputed domain name resolves offers products for sale without any indication of the website’s relationship to the Complainant and thereby misleads Internet users for commercial gain. The products offered are prima facie counterfeit.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website to which the disputed domain name resolves is in English and that translation of the Complaint into Chinese would create an unnecessary delay and burden for the Complainant.

The Panel notes that all email communications sent by the Center to the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English, and that the website to which the disputed domain name resolves is also in English, from which it can be inferred that the Respondent understands that language. Moreover, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is 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 name; and

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

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the MOU trademark.

The disputed domain name wholly incorporates the Complainant’s MOU trademark as its initial element. The Complainant’s MOU trademark is clearly recognizable within the disputed domain name.

The disputed domain name includes the additional element “stivali”. This element does not render confusion with the Complainant’s trademark unlikely because the Complainant’s MOU trademark remains clearly recognizable within the disputed domain name. If anything, this additional element renders confusion with the Complainant’s trademark more likely to some Internet users because it describes some of the Complainant’s products (boots) in Italian.

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s MOU trademarks. The Complainant informs the Panel that the Respondent is not, and never has been, a licensee of the Complainant and that the website to which the disputed domain name resolves has no affiliation with the Complainant.

As regards the first circumstance above, the disputed domain name is being used with a website that purports to offer for sale the Complainant’s products. Regardless of whether the products are genuine or counterfeit, nowhere does the website indicate the lack of any relationship between it and the Complainant. On the contrary, the website gives the impression that it is owned by, or affiliated with, the Complainant. This indicates that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “Li Xin Jun”, not “moustivali”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Respondent registered the disputed domain name in 2017, several years after the Complainant obtained its trademark registrations. The disputed domain name incorporates the Complainant’s MOU trademark in its entirety as its initial element. The website with which the disputed domain name is used displays the Complainant’s MOU logo and purports to offer for sale the Complainant’s sneakers and boots. This all indicates to the Panel that the Respondent was aware of the Complainant and its MOU trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name.

The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s MOU trademark, in connection with a website that purports to offer for sale the Complainant’s products. Given the findings set out in Section 6.2B above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <moustivali.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 27, 2017