WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Song Lihong
Case No. D2018-0988
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 Song Lihong of Haerbin, Heilongjiang, China.
2. The Domain Name and Registrar
The disputed domain name <moueskimo-boots.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2018, 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. On May 8, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2018.
The Center appointed Joe Simone as the sole panelist in this matter on June 15, 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, founded in the United Kingdom in 2002, provides footwear and accessories such as bags, wallets, hats and gloves, for men, women and children. The company’s products are sold globally via its website “www.mou-online.com” and are also available for sale via selected boutiques and department stores across the world. In addition, it makes wholesale sales in 35 countries.
“Mou” refers to both the name of the company and the trademark on which this Complaint is based. The MOU trademark was first registered in the United Kingdom on June 15, 2007 (see United Kingdom trademark No. 2432785). The Complainant now has at least 30 MOU marks registered in jurisdictions including the United States of America, European Union and China, and international registrations with WIPO. It is also the owner of among others, 12 domain names, containing the denomination “mou” combined with the words “boots” or “online”, all registered prior to the registration date of the disputed domain name.
The disputed domain name <moueskimo-boots.com> was registered on November 9, 2017 by the Respondent Song Lihong located in Haerbin, Heilongjiang, China. The disputed domain name previously resolved to a website selling products purporting to be those of the Complainant. The disputed domain name no longer resolves to an active website.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the mark MOU in which it has rights. The Complainant submits it has both registered rights in the mark MOU by virtue of numerous trademark registrations and unregistered rights on account of its well-known status in the fashion industry, widespread press coverage, celebrity endorsements and global reach of sales via its website, selected boutiques and department stores. The disputed domain name is confusingly similar to the mark MOU, because it contains “mou” as the distinctive and dominant element and “the incorporation of a trademark in its entirety is sufficient” to establish confusing similarity (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). The addition of the generic word “boots” does not eliminate the confusing similarity, especially when considering that the MOU trademark has been used by the Complainant in conjunction with the referenced term.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names based on the following:
(i) The Complainant has not found that the Respondent is commonly known by the disputed domain name.
(ii) The Respondent has not by virtue of the content of the respective website, nor its use of the disputed domain name, established that it has been used or will be used, in connection with a bona fide offering of goods or services. The Respondent offers for sale products bearing the Complainant’s mark without any indication of its relationship to the Complainant. On the contrary, users arriving at the disputed domain name may believe that the website is affiliated or endorsed by the Complainant or that it belongs to the Complainant. Such use cannot be considered a bona fide offering of goods under the Policy.
(iii) The Respondent is not making fair use of the disputed domain name. The Respondent is using the disputed domain name for commercial gain and misleadingly diverting customers while at the same time tarnishing the trademark at issue. By offering for sale counterfeit goods to genuine customers of the Complainant, the Respondent is seeking to mislead customers, and by offering counterfeit goods will inevitably tarnish the Complainant’s MOU trademark at issue.
(iv) The Complainant has demonstrated its rights in its trademarks and asserts that the Respondent is not, nor has ever been, a licensee of the Complainant and confirms that the Respondent’s websites have no affiliation with the Complainant.
(v) The Complainant also refers to bad faith under paragraph 4(b)(iv) of the Policy, which is detailed under the element of bad faith below.
Registered and used in bad faith
In respect of paragraph 4(a)(iii) of the Policy, the Complainant submits that the disputed domain name was registered and is being used in bad faith. MOU is a well-known trademark in the fashion industry and the Complainant’s rights in the mark predate the registration of the disputed domain name. The Complainant started the use of the MOU brand as early as 2002 and has now distributed to more than 40 countries, which presumably include the Respondent’s country of residence. It is clear that the Respondent was aware of the unlawful registration of the disputed domain name and the value of the Complainant’s trademark, at the point of registration. The Respondent could have easily performed a search and learnt that MOU is owned by the Complainant who has been using it for a number of years. From the Complainant’s point of view, the Respondent intentionally chose the disputed domain names based on a trademark in order to generate more traffic to its own business. Nowhere does the Respondent disclaim on its website the non-existing relationship between itself and the Complainant.
The use of the disputed domain name for a commercial website where the Complainant’s trademark is misappropriated and prima facie counterfeit MOU branded products are promoted for sale, clearly indicates that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking Mou branded products to the Respondent’s website for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s trademark as contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:
(i) The content of the website is in English and the disputed domain name includes Latin script words such as “eskimo” and “boots” which further strengthens that the Respondent is familiar with the English language.
(ii) The proceeding will likely be put through unnecessary trouble and delay if Chinese were made the language of the proceeding and there would be no discernible benefit to the Parties or the proceeding in the circumstances which may be gained by maintaining the default language of the proceeding.
In accordance with paragraph 11 of the Rules:
“…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.”
Therefore, prima facie, the language of the proceeding shall be Chinese.
Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement.
These include (ii) the language of the disputed domain name, particularly where the same as that of the Complainant’s mark and (iii) any content on the webpage under the disputed domain name. The disputed domain name is comprised of the English language words “eskimo” and “boots”. While in the Panel’s view, this is insufficient on its own to demonstrate the Respondent’s English language capacity, it is reinforced by the content of the website to which the disputed domain name resolved prior to notification of the dispute, which contained only English language. This points in favour of the Respondent being able to communicate in English.
Furthermore, it is well established that:
“Paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The language requirement should not cause any undue burden on the parties or undue delay (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Groupe Auchan v. Yang Yi, WIPO Case No. D2014-2094).
The Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding. Because the Respondent did not respond to the issue of language nor submit a response to the Complaint, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy’s aim of facilitating a relatively time- and cost- efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
6.2 Substantive Matters
A. Identical or Confusingly Similar
In order to bring a complaint, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the Complainant must first demonstrate substantive rights in the trademark on which the Complaint is based. The Panel finds that the Complainant has registered rights in the mark MOU by virtue of the Complainant’s numerous trademark registrations, and unregistered rights in the word MOU as a distinctive identifier of its goods, particularly boots, by virtue of its global sales, online presence, press coverage and celebrity endorsements.
The Complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, supra; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; WIPO Overview 3.0, section 1.7).
When comparing the domain name with the trademark, the Top-Level Domain (“TLD”) “.com” suffix of the domain name may be omitted (section 1.11 of WIPO Overview 3.0; G4S Plc v. Noman Burki, WIPO Case No. D2016-1383).
In this case, the disputed domain name incorporates the entirety of the Complainant’s trademark MOU as a distinctive feature.
Furthermore, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).
The disputed domain name <moueskimo-boots.com> combines the word “mou” with the descriptive terms “eskimo” and “boots”. Though generally the nature of the descriptive term bears on the second and third elements, the Panel refers to Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, where the Panel stated:
“A disputed domain name which consists of the Complainant’s mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark.”
The same can be said in respect of the goods that the Complainant offers. The addition of the words “eskimo” and “boots” is descriptive of the goods offered by the Complainant in conjunction with the trademark (eskimo boots), does not prevent the finding of confusing similarity.
The first requirement of the UDRP is therefore satisfied.
B. Rights or Legitimate Interests
The Complainant must demonstrate that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel, will demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:
(i) The Respondent is not commonly known by the disputed domain name.
(ii) Prior to notice of the dispute the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services. The screenshot taken by the Complainant on April 30, 2018, of the website to which the disputed domain name resolved, clearly displays the Complainant’s mark MOU at the top of what appears to be a shopping website. In this respect, the Panel accepts the Complainant’s assertion that the Respondent is not, nor has ever been, a licensee of the Complainant and confirms that the Respondent’s website has no affiliation with the Complainant. In the absence of any evidence on the contrary, the look and feel of the Respondent website gives the impression of being authorized or operated by the Complainant. There is nothing on the website to clarify the fact that the Respondent is not an authorized reseller of the Complainant’s products. As such, the Respondent’s use of the disputed domain name cannot be said to be bona fide.
(iii) The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Complainant claims that the disputed domain name now redirects to another website which offers counterfeit Mou products for sale. Therefore the Respondent’s use of the disputed domain name is clearly commercial.
The burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0). By failing to respond, the Respondent has not presented any evidence to establish rights or legitimate interests under this element.
Considering the absence of a response by the Respondent to the Complainant’s contentions, and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Finally, the Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) of this list specifies using the domain name to intentionally attract, for commercial gain, Internet users to the 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 website or location, or of a product or service on the website or location.
In this regard, section 3.1.4 of the WIPO Overview 3.0 states:
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
That is the case here: the disputed domain name incorporates the entirety of the Complainant’s trademark MOU plus the descriptive terms “eskimo” and “boots” which refer to goods that the Complainant sells. This immediately creates an impression of affiliation with the Complainant. Furthermore, prior to notice of the dispute, on the evidence before the Panel, the disputed domain name resolved to a website depicting the Complainant’s mark in conjunction with what appears to be an online shopping page with the tabs “women”, “eskimo boots”, “children” and “new products”. The words “shop now” and “up to 50% off” also appear. The overall effect is that of an official MOU website. By creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, the Respondent intended to divert customers of the Complainant to its website for commercial gain.
Given the content of the webpage and the similarity of the disputed domain name to the Complainant’s numerous domain names incorporating variations of “mou” and “boots”, there is no doubt that the Respondent knew of the Complainant’s mark prior to registering the disputed domain name, and specifically targeted the Complainant. The fact that the website to which the disputed domain name now resolves is inactive does not alter this conclusion. Rather it suggests the Respondent deliberately tried to conceal its bad faith use of the disputed domain name after being notified of the dispute.
Along with the failure of the Respondent to submit a response to the contrary, this leads to the conclusion that the Respondent registered and is using the disputed domain name in bad faith.
The third requirement of the UDRP is therefore satisfied.
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 <moueskimo-boots.com> be transferred to the Complainant.
Date: June 28, 2018