WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Sun Yanqi
Case No. D2018-0989
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 Yanqi of Hangzhou, Zhejiang, China.
2. The Domain Names and Registrar
The disputed domain names <boots-mou.com> and <mouukonline.com> are 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 names. 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 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 5, 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 Complainant’s products are sold globally via their 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, the 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 names.
The disputed domain names, <boots-mou.com> and <mouukonline.com> were both registered on November 20, 2017 by the Respondent Sun Yanqi located in Hangzhou, Zhejiang, China. The disputed domain names are inactive.
5. Parties’ Contentions
Identical or confusingly similar
In respect of paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain names are 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 and celebrity endorsements. The disputed domain names are confusingly similar to the mark MOU, because they both contain “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 generic words “boots” and “online” does not eliminate the confusing similarity, especially when considering that the MOU trademark has been used by the Complainant in conjunction with the referenced terms.
Rights or legitimate interests
In respect of paragraph 4(a)(ii) of the Policy, 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 either one of the disputed domain names.
(ii) The Respondent has not by virtue of the content of the respective websites, nor its use of the disputed domain names, established that they will be used, in connection with a bona fide offering of goods or services.
(iii) There is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods or services.
(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.
The Complainant also discusses passive holding in relation to bad faith under this element. This is presumed to be in support of the third element and is detailed below.
Registered and used in bad faith
In respect of paragraph 4(a)(iii) of the Policy, the Complainant submits that the disputed domain names were registered and are 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 names. The Complainant started the use of the MOU brand as early as 2002 and has now distributed to more than 40 countries, which presumably includes the Respondent’s country of residence. This indicates it is unlikely that the Respondent was not aware of the unauthorized registration of the disputed domain names and the value of the Complainant’s trademark. The Respondent could have easily performed a search and learnt that the MOU mark is owned by the Complainant, which 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 websites the non-existing relationship between itself and the Complainant.
The Respondent’s websites are currently inactive. Registration and passive holding of a domain name which has no other legitimate use and clearly references a complainant’s trademark may constitute registration and use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding) does not prevent a finding of bad faith, rather all the circumstances of the case must be examined to make a determination on bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceedings
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 also in English and the disputed domain names includes Latin script words such as “online” and “boots” which further strengthens the presumption 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 proceedings 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.
Paragraph (ii) includes the language of the disputed domain name, particularly where the same as that of the Complainant’s mark. Although the disputed domain names are comprised of English language words such as “online” and “boots”, in the Panel’s view, it does not follow from this alone that the Respondent is familiar with the English language. Corresponding to paragraph (iii), the Complainant also states that the content of the website is in English, but as the Complainant later correctly points out, the websites are currently inactive, so the Panel cannot make a finding on this point.
That said, 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).
Because 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, and 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, a 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, a 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 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.
A 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 disregarded (section 1.11 of WIPO Overview 3.0; G4S Plc v. Noman Burki, WIPO Case No. D2016-1383).
In this case, the disputed domain names incorporate 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).
In the first disputed domain name, MOU is combined with the descriptive term “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 word “boots” is descriptive of the goods offered by the Complainant, therefore in conjunction with the trademark, does not prevent the finding of confusing similarity.
Similarly, in the second disputed domain name, the mark MOU is combined with “ukonline”, which is easily perceived as the geographical indicator “uk” and the word “online”. These words are merely descriptors which may be used in conjunction with the trademark, therefore do not eliminate the confusing similarity. In any event.
The first requirement of the UDRP is therefore satisfied.
B. Rights or Legitimate Interests
A 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 a 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. The Respondent is not commonly known by the disputed domain names, and by virtue of the website being inactive, the Respondent cannot be said to be making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names.
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 names.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Finally, a 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. None of these are obvious on the facts before the Panel. However, even where a complainant may not be able to demonstrate the literal or verbatim application of one of these scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden (section 3.1 of WIPO Overview 3.0).
In that regard, section 3.2.1 of the WIPO Overview 3.0 lists additional bad faith consideration factors including:
(i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion); and
(ii) other indicia generally suggesting that the respondent had somehow targeted the complainant.
The Panel finds the Respondent’s registrations satisfy both of these factors. The Complainant has demonstrated that MOU is a well-known mark used in more than 40 countries and the disputed domain names incorporate the mark in its entirety. The addition of the descriptive term “boots” in the disputed domain name <boots-mou.com> corresponds to the Complainant’s goods while the addition of a geographical abbreviation “uk” in the disputed domain name <mouukonline.com> corresponds to one of the Complainant’s areas of activity and is likely to cause consumers to believe it is the United Kingdom website of the brand. The overall effect is that incorporating these elements further reinforces rather than takes away from the likelihood that the disputed domain names were registered in bad faith.
Furthermore, both disputed domain names <boots-mou.com> and <mouukonline.com> are basically the inverse of the Complainant’s existing domain names <mou-boots.com> and <mou-online.com>. Together with the fact that the Complainant has numerous other registered domain names containing variations of “mou”, “boots” and “online”, this suggests the Respondent specifically targeted the Complainant. In this respect, it is relevant that the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051). Given the ease with which the mark MOU and the Complainant’s websites can be located on the Internet, the Panel agrees it is highly unlikely the Respondent was not aware of the Complainant’s trademark rights before registering the disputed domain names.
Finally, the Complainant contends that the Respondent registered the disputed domain names in order to generate more traffic to its own business, however the Complainant also correctly points out the websites are inactive. The disputed domain names may well have been registered with the intention to generate traffic to some future business of the Respondent, but at this point in time such a finding cannot be made. Where a domain name is being held, but not actively used and the facts of a case do not fit into one of the scenarios envisaged by paragraph 4(b) of the Policy, whether the passive holding of a domain name will constitute bad faith use depends on the specific circumstances of the case (Telstra Corporation Limited v. Nuclear Marshmallows, supra). In this instance, the well-known status of the Complainant’s mark, the clear targeting of the Complainant and the failure of the Respondent to submit a response all lead to the conclusion that the Respondent registered and is using the disputed domain names 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 names, <boots-mou.com> and <mouukonline.com> be transferred to the Complainant.
Date: June 28, 2018