WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Pan Xiaoxiao
Case No. D2018-2459
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 Pan Xiaoxiao of Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <mou-onlinesale.com> is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed 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 October 31, 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 October 31, 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.
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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2018.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on December 5, 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 well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children.
The Complainant’s website “www.mou-online.com” is operated by the Complainant’s authorized licensee, showing their product range.
The Complainant was founded in 2002 and has grown significantly in size since then, being stocked in boutiques and department stores worldwide as well as having a significant online presence and sales via the Complainant’s website “mou-online.com” operated by the Complainant’s authorized licensee.
The company’s brand is well-regarded in the fashion industry and has many celebrity customers and widespread press coverage.
The Complainant has provided enough evidence that is the owner of their trademark MOU and design in many countries of the world, including, for example, the Australian trademark MOU No. 1302423 registered on September 30, 2010.
According to the Registrar’s WhoIs database, the Disputed Domain Name was registered on September 19, 2018.
According to the Complainant, the Disputed Domain Name displays a website that creates confusion and risk of association with the Complainant’s trademarks, their products and their official websites.
5. Parties’ Contentions
The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name are present in this case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant declared and proves in this case that it is the owner of the MOU trademark registered in the United Kingdom, Australia, Switzerland, China, Norway, the Russian Federation, Democratic People’s Republic of Korea, European Union and other countries, in many classes including but not limited to foot wear, clothes, accessories, and other products.
In the present case the Panel found that there is no doubt that the Disputed Domain Name is similar to the Complainant’s trademark because it contains the Complainant’s trademark MOU in its entirety. The Disputed Domain Name uses the Complainant’s trademark, alongside the descriptive words “online” and “sale”. The addition of these terms is not enough to prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark MOU. This opinion has already been recognized in other cases where the trademark MOU has been involved, by the panelist in Mou Limited v. Erica, Zhang Da Yan/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), WIPO Case No. D2016-0603: “The Panel following the well-established principles that (i) descriptive, common or generic terms appearing in a domain name registration in combination with a trademark of the complainant are “insufficient to prevent threshold Internet user confusion” and (ii) “the applicable top-level suffix in the domain name (e.g. “com”) would usually be disregarded under confusing similarity test (as it is a technical requirement of registration)” (per paragraph 1.2 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), accordingly finds that the disputed domain name is confusingly similar to the mark MOU in which the Complainant has rights.”
The first element of paragraph 4 (a) of the Policy has therefore been satisfied.
B. The Respondent has no rights or legitimate interests in respect of the domain
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case the Respondent did not answer, therefore did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant argued that it has not authorized or given any license to the Respondent to register, use or include its own trademark MOU in a domain name. Also, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name nor the name MOU.
The Respondent is not making fair use of the Disputed Domain Name. Because the Disputed Domain Name <mou-onlinesale.com> displays a website where the Respondent offers for sale products of dubious origin using the Complainant’s trademark without the Complainant’s authorization. The Panel notes that the website at the Disputed Domain Name includes the text “© 2018 Powered by mou Limited. All Rights Reserved.”
This Panel confirmed that the Respondent is using the Domain Name for commercial gain and misleadingly diverting customers whilst at the same time taking advantage of the trademark at issue. By offering for sale goods of dubious origin to genuine customers of the Complainant, the Respondent is seeking to mislead customers, and by offering this type of goods will inevitably tarnish the Complainant’s MOU trademark at issue. Other panelists have the same opinion, as in Mou Limited v. Erica, Zhang Da Yan/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), supra: “There are various “incriminating” pieces of evidence – the copying of the Complainant trademark on the Respondent website, the sale of suspected counterfeit goods bearing the Complainant’s MOU mark, the copying of portions from the Complainant’s website, and the overall false impression deliberately created by the Respondent to mislead consumers into thinking that the Respondent’s website is the Complainants or that of an authorized agent or licensee. (…) There is no evidence of a bona fide offering of goods or services by the Respondent; there is no evidence that the Respondent has been commonly known by the disputed domain name; but what there is evidence of is an illegitimate commercial and unfair use of the disputed domain name. The Respondent has not rebutted the prima facie case established by the Complainant.”
For all the above-mentioned reasons the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled.
C. The domain name was registered and is being used in bad faith
In the present case, the Complainant had started the use of the MOU brand since 2002 and is now distributed in more than 40 countries including the Respondent’s country of residence. To summarize, MOU is a known trademark in the fashion industry. There is no reasonable doubt that at the moment of registering the Disputed Domain Name, the Respondent was aware the Complainant’s rights and the value of the trademark. In the present case, the Disputed Domain Name displays a website where the Respondent has the intention of commercial gain and misleadingly divert customers and at the same time taking advantage of the good reputation of the trademark at issue.
In this case, the Panel finds merit in the Complainant’s assertation that the Disputed Domain Name has been registered and used in Bad faith. The circumstances of this case fall directly within what described in paragraph 4(b) (iv) of the Policy: “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 we site or location or of a product or service or location”.
The Respondent has not argued or presented any prove or defense to the Complainant’s assertations. This and all the circumstances present in this case, supports the conclusion that the Disputed Domain Name was registered and has been use in bad faith by the Respondent.
The panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith. 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-onlinesale.com> be transferred to the Complainant.
Ada L. Redondo Aguilera
Date: December 17, 2018