WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Sun YanQi; Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / POLLY, Vicky Rogers and Loley Free
Case No. D2018-0288
1. The Parties
The Complainant is Mou Limited of United Kingdom, represented by SILKA Law AB, Sweden.
The Respondents are Whois Agent, Domain Whois Privacy Protection Service of China / Sun YanQi of China, and Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of the United States of America (the “United States”) / POLLY of China, Vicky Rogers of the United Kingdom, and Loley Free of the United States.
2. The Domain Names and Registrars
The disputed domain names <moublogger.com>, <moubootsblogger.com>, <moubootsreview.com>, and <mouscarpe.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com; the disputed domain name <mou-scarpe.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 9, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 10, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2018 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 a request for consolidation of the Respondents, on February 28, 2018.
On February 27, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 28, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondents 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 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 Respondents of the Complaint, and the proceeding commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 26, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 9, 2018. 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 incorporated in the United Kingdom and the manufacturer since 2002 of footwear and accessories marketed and sold under the word and stylised logo trade mark MOU (the “Trade Mark”).
The Complainant is the owner of numerous registrations for the Trade Mark worldwide, including international registration No. 1005206 (designating China), with a registration date of July 28, 2009; and United Kingdom registration No. 2432785, with a registration date of June 15, 2007.
According to the Registrars’ WhoIs information, the Respondents are apparently individuals resident in China, the United States, and the United Kingdom.
C. The Disputed Domain Names
The disputed domain names were registered on November 9, 2017, November 1, 2017, September 21, 2017, October 26, 2017, and November 20, 2017, respectively.
D. Use of the Disputed Domain Names
The disputed domain names <moublogger.com>, <moubootsblogger.com>, <moubootsreview.com>, and <mou-scarpe.com> resolved to English language websites which (i) copy the look and feel of the Complainant’s official website; (ii) offer for sale heavily discounted or alleged counterfeit boots under the Trade Mark; (iii) feature prominently the Complainant’s logo Trade Mark; (iv) reproduce photographs of the Complainant’s genuine footwear apparently taken from the Complainant’s official website; and (v) contain copyright notices which create the impression the websites (the “Websites”) are endorsed by the Complainant.
The disputed domain name <mouscarpe.com> has not been used.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the UDRP panels to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on several grounds, including in particular the fact the Websites are English language websites.
The Respondents, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the language of the proceeding in both Chinese and English, the Respondents chose not to file a response.
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 content of the Websites demonstrates that the Respondents are conversant in English. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present proceeding, the Complainant contends as follows:
(i) Four of the disputed domain names were registered with the same Registrar and the fifth disputed domain name <mou-scarpe.com> bears close resemblance to the <mouscarpe.com> domain name;
(ii) The disputed domain names were registered within a time frame of 3 months (September to November 2017);
(iii) The disputed domain names comprise similar generic terms “scarpe” (the Italian word for “boots”), “blogger”, and “review”;
(iv) All of the disputed domain names target the same Trade Mark; and
(v) Several of the email aliases used by the Respondents have been involved in previous UDRP proceedings involving the Trade Mark.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. In addition to the Complainant’s submissions highlighted above, the Panel notes that four of the five disputed domain names contain similar content and offer for sale unauthorised, discounted (and likely non-genuine) products under the Trade Mark (see Section 4.D. above).
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue.
6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption.
The Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, four of the disputed domain names have been used in respect of the Websites (see Section 4.D. supra); and the fifth has not been used.
There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondents have failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, and therefore finds that the requirements of paragraph 4(a)(ii) are met.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondents of the Websites, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy. In addition, as to the disputed domain name <mou-scarpe.com>, previous UDRP panels already established that passive use of a disputed domain name did not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In all the circumstances, including in particular the Panel’s finding that common control is being exercised over the disputed domain names, the Panel finds that bad faith extends to the disputed domain name <mouscarpe.com> that has not been used.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
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 <moublogger.com>, <moubootsblogger.com>, <moubootsreview.com>, <mouscarpe.com>, and <mou-scarpe.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: April 23, 2018