WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Domain Administrator, See PrivacyGuardian.org / Aitziber Bonzalez
Case No. D2018-1655
1. The Parties
The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by SILKA Law AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America ("United States") / Aitziber Bonzalez of Bilbao, Spain.
2. The Domain Name and Registrar
The disputed domain name <mouonline-outlet.com> (the "Domain Name") is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2018 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 July 30, 2018.
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 August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 23, 2018.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 27, 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 was founded in 2002 and provides footwear and accessories such as bags, wallets, hats and gloves for men, women and children.
The Complainant's products are sold online via its website "www.mou-online.com" to customers across the world. The Complainant operates various social media accounts regarding its products, including on Facebook at "www.facebook.com/MouLondonOfficial", Instagram at "www.instagram.com/mouofficial", Twitter at "www.twitter.com/MOUlondon" and Pinterest at "www.pinterest.com/moulondon".
The Complainant is the owner of, inter alia, the following trade marks (the "Trade Marks"):
- word mark MOU, registered in the United States under no. 3663689 on August 4, 2009
- device mark MOU, UK registration no. 2432785, dated June 15, 2007
- device mark MOU, International registration no. 1001663, dated April 8, 2009
- device mark MOU, International registration no. 1005206 dated July 28, 2009
- device mark MOU, European Union registration no. 8164204, dated December 11, 2009.
The Domain Name was registered on April 17, 2018. The website to which the Domain Name resolves contains the device mark MOU and offers for sale "MOU Eskimo" shoes, boots and sneakers.
5. Parties' Contentions
The Complainant submits that as a result of the Complainant's widespread and prolonged use of the Trade Marks it has developed substantial reputation rights in addition to its rights in the Trade Marks.
According to the Complainant, the Domain Name is similar to the Trade Marks and its unregistered rights because they all contain "Mou" as the distinctive and dominant element.
As the Domain Name incorporates the trade mark MOU in its entirety, the Complainant states, as a result the Domain Name is confusingly similar to the Trade Marks.
Furthermore, the Complainant submits, the addition of the generic words "online" and "outlet" is not sufficient to distinguish or differentiate the Domain Name from the Trade Marks and does not eliminate the confusing similarity between the Trade Marks and the Domain Name.
The Complainant states that it has not found that the Respondent is commonly known by the Domain Name and that, therefore, the Respondent has not by virtue of the content of the respective websites, nor by its use of the Domain Name established that it will be used in connection with a bona fide offering of goods or services. According to the Complainant, there is no evidence that the Respondent has a history of using, or preparing to use, the Domain Name in connection with a bona fide offering of goods and services. The Complainant submits that the use of the Domain Name for commercial websites where the Trade Marks are misappropriated and prima facie counterfeit MOU branded products are promoted for sale, clearly indicates that the Respondent's purpose in registering the Domain Name was to capitalize on the reputation of the Trade Marks by diverting Internet users seeking MOU branded products to the Respondent's websites for financial gain, by intentionally creating a likelihood of confusion with the Trade Marks as contemplated by paragraph 4(b)(iv) of the Policy. Furthermore, the Complainant contends, the Respondent is not making fair use of the Domain Name as it is being used for commercial gain and to misleadingly divert customers whilst at the same time tarnishing the Trade Marks by offering for sale counterfeit goods in relation to the Trade Marks.
The Complainant submits that the Respondent should be considered to have registered and to be using the Domain Name in bad faith. According to the Complainant, the Respondent was aware of the rights the Complainant has in the Trade Marks when it registered the Domain Name since (i) the Trade Marks predate the registration of the Domain Name; (ii) it seems unlikely that the Respondent was not aware of the unlawful registrations of the Domain Name, as the Complainant started the use of the MOU brand as early as in 2002, while its products are now distributed in more than 40 countries which presumably includes the Respondent's country of residence. The Complainant also contends that the Respondent could have easily performed a search before registering the Domain Name and would have quickly learnt that the trademark MOU is owned by the Complainant and that the Complainant has been using its trademark for numerous years. The Complainant also points out that in its view, the Respondent intentionally chose the Domain Name based on a trademark in order to generate more traffic to its own business, while the Respondent does not disclaim on its website the non-existing relationship between itself and the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term "mou", of which the Trade Marks consist, in its entirety. The addition of the descriptive words "online" and "outlet" does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980. The generic Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent's use of the Domain Name in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, since on the website to which the Domain Name resolves, "MOU Eskimo" shoes, boots and sneakers are offered for sale with no disclaimer as to the non-existing relationship between itself and the Complainant.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent's registration of the Domain Name occurred nine years after the registration of the earliest of the Trade Marks;
- the trade mark MOU, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of in relation to footwear;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the Panel notes that the device mark MOU features on the website to which the Domain Name resolves, while "MOU Eskimo" shoes, boots and sneakers are offered for sale there. The Complainant has not provided evidence supporting its submission that these are counterfeit goods, but since the Respondent has not submitted a Response it has not refuted this submission.
The Panel finds that this, together with the following circumstances together, warrants a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant's rights in the Trade Marks;
- the non-dictionary nature of the mark MOU incorporated in its entirety in the Domain Name, such that the Respondent cannot claim to have "accidentally" registered a domain name that happens to correspond to the Trade Marks;
- the fact that there is no disclaimer on the website of the Domain Name with respect to the non-existing relationship between itself and the Complainant;
- the lack of a formal Response of the Respondent.
Therefore, the Panel concludes that the Domain Name has been registered and is 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 name <mouonline-outlet.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: September 10, 2018