WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Yu Tao
Case No. D2018-2458
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 Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China / Yu Tao of Fuyang, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <mou-bootsonline.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 October 29, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2018, 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 5, 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 November 6, 2018.
On November 5, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 6, 2018. The Respondent 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on December 14, 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 states that it is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. The business was founded in 2002 and has since grown significantly, with its products stocked in boutiques and departments stores worldwide, and with a significant online presence, with sales worldwide operating from the Complainant’s licensee’s website at “www.mou-online.com”.
The Complainant has many celebrity customers and widespread coverage, and its products have been endorsed by celebrities such as Cameron Diaz and Gwyneth Paltrow. The Complainant’s goods are sold in many countries worldwide including in China, Republic of Korea and Japan.
The Complainant has trade mark registrations in MOU and figurative versions thereof in, inter alia, the United States of America (USA) (Trade Mark Registration No. 3663689, registered on August 4, 2009), the United Kingdom ( Trade Mark Registration Nos. 2432785, 2513487 and 2511429, registered on June 15, 2007, October 16, 2009 and September 11, 2009, respectively), China (by virtue of International Registration No. 1005206, registered on April 28, 2009) and the European Union (“EU”) (Trade Mark Registration Nos. 008164204 and 008575607, registered on December 11, 2009 and February 22, 2010, respectively).
Apart from the domain name <mou-online.com> (registered on January 26, 2006), the Complainant also owns domain names such as <mou-boots.com> (registered on April 11, 2011), <mouboots.net> (registered on June 7, 2016), <mouboots.info> (registered on April 9, 2011) and <mouboots.online> (registered on March 1, 2016).
The disputed domain name was registered on August 22, 2018 and resolves to a website selling the products under the Complainant’s trademark.
5. Parties’ Contentions
The disputed domain name is similar to the trade mark MOU in which the Complainant has rights. It contains the MOU trade mark as the distinctive and dominant element. The addition of the generic words “online” and “boots” are not sufficient to distinguish and differentiate the disputed domain name from the Complainant’s MOU trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. Further, the Respondent has not by virtue of the content of the website to which the disputed domain name resolves established that the disputed domain name is used in connection with a bona fide offering of goods or services.
The figurative version of the Complainant’s mark is reproduced on the Respondent’s website without the Complainant’s consent. At the bottom of the website, a disclaimer which reads “© 2018 Powered by mou Limited. All Rights Reserved” is inserted. It creates the impression that the website is endorsed by the Complainant. The Mou-branded goods offered on the Respondent’s website appear to be counterfeit.
The Respondent is therefore seeking to divert 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 trade mark.
The disputed domain name was registered and is being used in bad faith. The Complainant’s MOU trade marks predate the registration of the disputed domain name. The Complainant’s Mou brand was used since as early as in 2002 and is now distributed in more than 40 countries, including in China where the Respondent is resident. The active business activity of the Complainant also shows that it is unlikely that the Respondent was unaware of the Complainant’s trade mark registrations. The Respondent intentionally chose the disputed domain name based on the Complainant’s MOU trade mark in order to generate Internet traffic to its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Complainant requested that English be adopted as the language of the proceeding even though the Registration Agreement is in Chinese because the content of the Respondent’s website is in English and the disputed domain name includes Latin script and comprises English words, namely “online” and “boots”. This shows that the Respondent is familiar with the English language.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless 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”. Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
In view of the Respondent’s choice of the disputed domain name which combines the English words “boots” and “online”, as well as the content of the Respondent’s website, the Panel is persuaded that the Respondent is familiar with the English language. As such, the Panel finds it appropriate to make a determination that English apply as the language of the proceeding,
If the Respondent had any concern or objections in this regard, it could have raised these concerns or objections to the Center. It chose not to; and neither did it choose to respond in Chinese. To compel the Complainant to have the Complaint translated into Chinese would lead to a delay in the proceeding, which the Panel finds no reasons for in the circumstances of this case.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the MOU trade mark in which the Complainant has shown to have rights. The only differences between the disputed domain name and the Complainant’s MOU trade mark lie in
(i) the Top-Level Domain (“TLD”) “.com”, which is a technical requirement of domain names and has no relevance to the issue of identity or confusing similarity; and
(ii) the addition of the terms “boots” and “online” which are descriptive in nature and denote the goods and services offered by the Complainant, namely the sale of boots online.
The differences therefore do not prevent the finding of confusing similarity between the disputed domain name and the Complainant’s MOU trade mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the MOU trade marks or to register the disputed domain name incorporating the MOU trade mark.
From the content and look of the Respondent’s website, it is rather evident that the Respondent was very familiar with the Complainant’s MOU trade marks and its range of products when it registered the disputed domain name, and that it specifically targeted the Complainant’s trade marks for commercial purposes, the aim being to draw and mislead existing customers of Mou-branded products or prospective customers who might be looking for the Complainant’s products to the Respondent’s website. It has sought to do this by not only registering the disputed domain name incorporating the Complainant’s MOU trade mark but by also giving the false impression that it is an authorized distributor of the Complainant and/or that the website is endorsed by the Complainant and/or that the products offered for sale are genuine products of and originate from the Complainant. Such use of the disputed domain name does not constitute a bona fide offering of goods or services.
Whilst the Complainant has not given direct evidence that the goods offered for sale by the Respondent are indeed counterfeit, the Panel is satisfied with the prima facie evidence submitted by the Complainant.
The Respondent failed to respond to dispute the Complainant’s allegations, which is indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel therefore concludes that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
For the reasons mentioned in the preceding section, the Panel is persuaded that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent. One of these circumstances (paragraph 4(b)(v)) is:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the circumstances of the instant case are described by and fall within paragraph 4(b)(iv) of the Policy.
In the premises, the Panel finds that the third element of paragraph 4(a) of the Policy has been 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 <mou-bootsonline.com> be transferred to the Complainant.
Date: December 16, 2018