WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Li Jack
Case No. D2018-2908
1. The Parties
The Complainant is Mou Limited of London, United Kingdom, represented by SILKA Law AB, Sweden.
The Respondent is Jack Li of Haozhou, Anhui, China.
2. The Domain Name and Registrar
The disputed domain names <moubootsonlineblog.com> and <mouonlinereview.com> are registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 24, 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 January 3, 2019, 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 January 4, 2019. The Respondent did not comment on the language of the proceeding.
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 January 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on February 6, 2019. 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 through sales via selected boutiques and department stores. In addition, the Complainant makes wholesale sales in more than 30 countries. The Complainant operates social media accounts advertising Mou products at “www.facebook.com/MouLondonOfficial”, “www.instagram.com/mouofficial/”, “www.twitter.com/MOUlondon”, and “www.pinterest.com/moulondon/”.
“Mou” refers to both the name of the company and the trademark on which this Complaint is based. The Complainant has over 30 trademark registrations for stylized and non-stylized versions of the word “mou” in jurisdictions around the world including the United States of America, European Union and China, and international registrations with WIPO. The MOU trademark was first registered in New Zealand on May 19, 2005 (see New Zealand trademark No.721724). In addition, the Complainant owns 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 <moubootsonlineblog.com> and <mouonlinereview.com> were registered on October 6, 2018 by the Respondent. The disputed domain names both resolve to websites promoting the Complainant’s Mou boots.
The disputed domain name <moubootsonlineblog.com> states “© 2019 Mou Boots Online Blog. All rights reserved.” in the bottom left of the page as well as an Instagram icon in the lower right-hand corner linking to the Complainant’s official Instagram page. It contains two articles named “The New Boots In Town: MOU Boots” and “WARM FACTS OF MOU BOOTS”.
The disputed domain name <mouonlinereview.com> states “Copyright © 2019 Mou Online Review” in the bottom left of the page. The home page contains an image of a blogger wearing Mou boots, whom the Complainant states it has previously worked with, the image being taken from the blogger’s article found here: “www.carolinekynast.com/outfit-streetstyle-winter-mou-boots-grey-coat-personal-stuff/”. It contains two articles called “Why Would You Fall in Love with Mou Boots?” and “ TYPES OF WINTER BOOTS AND HOW TO CHOOSE THE RIGHT ONE”. “Why Would You Fall in Love with Mou Boots?” contains a link for “Mou boots” which ultimately redirects to the Complainant’s official website at “www.mou-online.com”, but only via “www.mou-bootsonline.com”. This domain name was the subject of a prior UDRP dispute and resolved to a website selling prima facie counterfeit Mou products (Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Yu Tao, WIPO Case No. D2018-2458). The Complainant won this dispute which is presumably why the domain name now redirects to the Complainant’s official website.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain names are confusingly similar to the mark MOU in which it has rights. The Complainant submits evidence of registered and pending trademarks for stylized and non-stylized versions of the word “mou” in 20 jurisdictions. Over 30 of these marks are registered. The Complainant also submits it is well-known and well-regarded in the fashion industry demonstrated by widespread press coverage and celebrity endorsements. Mou products are sold globally via its website at “www.mou-online.com”, and via selected boutiques and department stores. The Complainant submits that the disputed domain names are confusingly similar to the mark MOU, because they 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 the descriptive words “boots”, “review”, “blog” 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
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names. The websites are not genuine “review” or “blog” sites. The disputed domain name <mouonlinereview.com> contains a link to another website “www.mou-bootsonline.com” which is the subject of a separate UDRP dispute and resolves to a website selling prima facie counterfeit Mou products. It also contains images taken without authorization from the website of a blogger that the Complainant worked with last season in Germany. The disputed domain name <moubootsonlineblog.com> has copyright text stating “© 2019 Mou Boots Online Blog” and contains a link to the Complainant’s official Instagram account, leading users to believe the site is operated by or related to the Complainant. A fan site is only legitimate if such use is considered fair in all the circumstances of the case and the Respondent has not achieved such legitimate use.
Registered and used in bad faith
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant’s marks and use of the MOU brand predate the registration of the disputed domain names. The MOU brand was used as early as 2002 and the Mou products are now distributed in more than 30 countries, including in China where the Respondent is located. The active business presence of the Respondent shows it is unlikely that the Respondent was unaware of the Complainant’s rights. The Respondent intentionally chose the disputed domain names based on the Complainant’s trademark in order to generate Internet traffic to its website. Nowhere does the Respondent disclaim the non-existing relationship between itself and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of 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.”
In this case, the language of the Registration Agreement for each disputed domain name is in Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the reasons that the content of the websites is in English and the disputed domain names include Latin script words such as “review”, “blog”, “boots” and “online”, which suggests that the Respondent is familiar with the English language. The Complainant submits that there is no discernible benefit to maintaining the default language of the proceeding and it would cause unnecessary trouble and delay.
On this issue, the Panel agrees with the Complainant. The Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a Response. Therefore, the Panel finds that there would be no prejudice caused to the Respondent by conducting the proceeding in English. On the other hand, requiring the Complainant to translate the Complaint would cause undue burden and delay. Noting the aim of conducting proceedings with due expedition and in a cost-efficient manner, the Panel will proceed in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, 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).
The Complainant has submitted evidence of over 30 trademark registrations across 20 jurisdictions for the word “mou”. Media coverage, social media and sales reach also show it has a substantial reputation in relation to the use of the mark MOU on boots. Therefore, it has adequately proved rights to the trademark MOU.
The test for whether a domain name is identical or confusingly similar to a trademark is relatively straightforward. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain names clearly contain the mark MOU with the addition of the terms “boots”, “online”, “blog” and “review”. These are descriptive words which do not prevent a finding of confusingly similarity to the trademark.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
Under the second element, the Complainant must demonstrate that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names that are the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
Both of the websites purport to be Mou fan sites or some kind of blog/review sites therefore the question is whether they are being used in a genuine noncommercial way, distinct from any official site of the Complainant, or whether they are in fact a pretext for cybersquatting and give the impression that they are authorized by or affiliated with the Complainant.
With respect to the disputed domain name <moubootsonlineblog.com>, the text of the disputed domain clearly suggests it is an online blog for Mou Boots, which could be operated by the Complainant or a third party. However, the tag line “Here to Share Anything of Mou Boots Online” suggests that this is a place for at least the website operators, if not Internet users themselves, to share information on Mou boots, when this is not in fact the case. Links to “sneakers” return an empty page, a link to “mou style” is inactive and various links to “boots” directs users to only two articles on the website promoting Mou boots. While the site itself does not have the appearance of the Complainant’s official website at “www.mou-online.com”, it does contain the copyright line “© 2019 Mou Boots Online Blog. All rights reserved.”, which gives viewers the impression it is the official online blog of the Complainant. The Instagram icon linking to the Complainant’s official Instagram page also suggests the website is operated or authorized by the Complainant. Yet there is no disclaimer to clarify this lack of relationship.
The Complainant makes a stronger case for the disputed domain name <mouonlinereview.com>, for which the home page actually contains an image of an online blogger whom the Complainant worked with, apparently copied from the original blog here: “www.carolinekynast.com/outfit-streetstyle-winter-mou-boots-grey-coat-personal-stuff/”. Furthermore, one of two articles displayed on the website contains a link for “Mou boots” which the Complainant submits previously redirected to the domain name <mou‑bootsonline.com>. This domain name was the subject of a prior UDRP dispute and resolved to a website selling prima facie counterfeit Mou products (Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Yu Tao, supra). The Panel can see that the link still redirects to the domain name <mou-bootsonline.com>, but now resolves to the Complainant’s official website following the Complainant’s win in the subject case. It is unclear if the respondent in that case is related to the Respondent in this case, but in any event, providing a redirection to a website selling products without authorization under the trademark suggests a commercial pretext.
Similar to the disputed domain name <moubootsonlineblog.com>, the overall operation of the website at the disputed domain name <mouonlinereview.com> does not have the genuine feel of a “review” site. The front page contains text such as “About MOU Boots” and “MOU Sneakers 2018 New Collection”, but a user cannot click on them. There are only two “reviews” (more akin to promotional articles), which are written by the same user “moureview2235” and on the same date – October 19, 2018. Finally, there are no comments under “recent comments”, and different links under the tabs “recent posts”, “archives” and “categories” merely lead back to the home page or the same two articles promoting Mou boots.
Therefore, given the full circumstances, the operation of the websites in this manner cannot be considered “fair use” and such use cannot confer rights or legitimate interests on the Respondent. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
Finally, the Complainant must prove that the disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The fame of the Complainant’s products and the operation of the websites at the disputed domain names indicate the Respondent had clear knowledge of the Complainant and its rights when it registered the disputed domain names.
With respect to the disputed domain name <moubootsonlineblog.com>, the lack of clarity about the purpose of the site or failure to match up with its suggested purpose raises suspicion as to the motive of the Respondent. By not disclosing the lack of relationship with the Complainant, the website gives an impression of affiliation with the Complainant when this is not the case. Given the other disputed domain name <mouonlinereview.com> copies third party material and links to another website found to be selling MOU-branded products in bad faith, there is good cause to believe that this website is also being used in bad faith. As long as it remains active, it constitutes a commercial threat to the Complainant, and the Respondent’s failure to submit any evidence to the contrary further justifies a conclusion that this is a bad faith registration.
With regard to <mouonlinereview.com>, the fact that it contains a link redirecting to a website previously selling what were probably counterfeit Mou products, strongly indicates the Respondent used the pretext of an online review site about the Complainant’s products as a means to attract Internet users to its website for commercial gain. This falls squarely under paragraph 4(b)(iv) of the Policy which constitutes evidence of bad faith. Moreover, the Panel finds that the Respondent is disrupting the business of the Complainant.
Therefore, the Panel finds that the disputed domain names were registered and are 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 names <moubootsonlineblog.com> and <mouonlinereview.com> be transferred to the Complainant.
Date: February 20, 2019