WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Domain Admin, Privacy Protect, LLC / Vicky Rogers
Case No. D2018-2910
1. The Parties
The Complainant is Mou Limited of London, United Kingdom, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (the “United States”) / Vicky Rogers of Staffordshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <moureview.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed 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 name. On December 22, 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 December 24, 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 December 28, 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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on January 28, 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 was founded in 2002 and designs and sells fashion footwear together with accessories, such as wallets, hats and gloves, for men, women and children. Its products are stocked in boutiques and department stores in numerous countries as well as being sold, via the Complainant’s website at “www.mou-online.com”, by the Complainant’s authorized licensee. The Complainant has received widespread press coverage as well as celebrity endorsements from, amongst others, Cameron Diaz and Gwyneth Paltrow.
The Complainant trades as MOU. It has registered many trade marks to protect its trading style including, by way of example only, United States of America trade mark registration number 3663689 for MOU in classes 18 and 25, registered on August 4, 2009. The Complainant also owns a number of domain name registrations, including <mou-online.com> and <mou-boots.net>. It is active on social media, where it actively promotes its MOU brand.
The disputed domain name was registered on November 9, 2017. It resolves to a website which purports to be a review website of the Complainant’s products. A section of the website entitled “here-is-what-you-need-to-know-about-mou-boots” provides outline information about the Complainant’s products. The website content has previously contained several links to a third party website, which offered for sale MOU-branded products which were described as being those of the Complainant but which, the Complainant asserts, were actually counterfeit.
5. Parties’ Contentions
The Complainant says that the disputed domain name is similar to its MOU trade mark. The dominant and distinctive element of the disputed domain name is MOU. The addition of the descriptive word “review” is insufficient to distinguish or differentiate the disputed domain name from the Complainant’s MOU trade mark, especially when that mark has previously been used by the Complainant in conjunction with the word “review”.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent is commonly known by the disputed domain name. The Respondent is using a privacy WhoIs service and its website is not a genuine review site. Specifically, it contains links which redirect the user to another third party website, “www.mou-bootsonline.com”, which has been selling counterfeit copies of the Complainant’s products. The domain name <mou-bootsonline.com> is the subject of a separate proceeding under the Policy and the underlying registrant of that domain name might also own the disputed domain name. The Complainant has taken other proceedings under the Policy in respect of other so-called review and blog sites, which seem at first to be genuine websites but which contain hyperlinks to fake MOU websites. Section 2.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the facts and circumstances that panels typically consider when assessing whether the use of a domain name by a respondent should be considered fair use. Applying these factors, the Respondent has not established legitimate use of the disputed domain name.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent is using a privacy shield. Although the use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The Complainant has brought other proceedings under the Policy recently where the identity of the respondents has been hidden and this is making it more difficult to investigate whether there are more domain names linked to the same party. Accordingly, the Complainant believes that the motive for use of a domain privacy service has been to increase the difficulty for the Complainant in identifying the underlying registrant, which does not reflect good faith.
The Complainant’s trade marks predate the registration of the disputed domain name. The Complainant had started the use of the MOU brand as early as 2002 and it is now distributed in more than 40 countries. These will presumably include the Respondent’s country of residence. It seems likely that the Respondent was aware that the registration of the disputed domain name was unlawful. The Respondent intentionally chose the disputed domain name based on the Complainant’s trade mark in order to generate more traffic for its own business. Nowhere does the Respondent disclaim on its website the non-existent relationship between itself and the Complainant. The Respondent could easily have performed a search before registering the disputed domain name and would have found that the Complainant has been using its MOU trade mark for many years.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its trade mark registrations for MOU, including the mark in respect of which full details have been given above.
The generic Top Level Domain (“gTLD”) “.com” is disregarded under this element of the Policy as it is a technical requirement of registration. The disputed domain name incorporates the Complainant’s registered trade mark for MOU in full and without alteration. The additional word “review” does not serve to prevent the disputed domain name from being considered confusingly similar for the purpose of this element of the Policy. As explained at section 1.7 of the WIPO Overview 3.0; “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
When a respondent’s website purports to comprise a tribute website, a panel is required to determine if it is a genuine and good faith website or a sham website, intended to disguise a less worthy intention on the respondent’s part. Section 2.7.1 of the WIPO Overview 3.0 explains that: “…for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. Again, similar to claimed criticism sites, there are a number of UDRP cases in which the respondent claims to have a true fan site but the panel finds that it is primarily a pretext for cybersquatting or commercial activity”.
The Complainant has provided some extracts from the Respondent’s website, but it is often helpful to consider the features of a purported tribute website in detail. In this respect, section 4.8 of the WIPO Overview 3.0 explains that; “[n]oting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name...”.
The Panel has accordingly visited the website to which the disputed domain name resolves and noted a number of features of the Respondent’s website additional to those referred mentioned by the Complainant. First, contrary to what might be expected with a genuine tribute website, there is nothing on the Respondent’s website which identifies the creator of the website or explains why the Respondent has chosen to establish a seeming tribute site relating to the Complainant. Second, both the “Mou Review BLOG” and the “Style Review” tabs of the website are actually empty, which is suggestive of the superficial appearance of the website being more important than the actual substance. Third, a section of the website entitled “Five Amazing Women Boots You Will Love” recommends one of the Complainant’s boots and four boots made by the Complainant’s competitors. Such content would not typically be associated with a genuine tribute site. Fourth, much of the content of the website is not devoted to the Complainant’s products but to various, relatively uninformative, articles generally related to boots, such as “6 Amazing Winter Boots Outfits Ideas” and “Elements to consider when choosing new boots”. The Panel also notes that, the links to the third party website, “www.mou-bootsonline.com”, referred to in the Complaint now resolve to the Complainant’s website although the Panel expects that this is because, very shortly before the filing of the Complaint, <mou-bootsonline.com> was the subject of a successful complaint by the Complainant under the Policy; see Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Yu Tao, WIPO Case No. D2018-2458.
Cumulatively, the oddities in the website to which the disputed domain name resolves are, in their totality, sufficient for the Panel to conclude that it is not a genuine website and is a mask for some form of commercial or unlawful activity directed at abusing the Complainant’s interests. In this respect, the Panel gives particular weight to the links which were formerly present on the Respondent’s website to the third party website at “www.mou-bootsonline.com”. The use of a privacy service by the Respondent, on the facts outlined above, reinforces this view.
The Respondent’s website does not purport to comprise an offering of goods and services and so paragraph 4(c)(i) of the Policy is inapplicable. Paragraph 4(c)(ii) of the Policy is also inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name. Lastly, paragraph 4(c)(iii) is inapplicable. Having regard to the findings of the Panel that the Respondent’s website is both commercial and not bona fide, the Respondent cannot be said to be making a legitimate, noncommercial or fair use of it. See also section 2.7.1 of the WIPO Overview 3.0: “…for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site”.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests and the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent has made no attempt to rebut the Complainant’s submissions and the Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s MOU trade mark in full and adds a dictionary word, “review”, associated with the form of website which the Respondent has established. This points to an awareness by the Respondent of the Complainant and its MOU business as at the date of registration of the disputed domain names. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
Paragraph 4(b) of the Policy sets out a number of circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides that bad faith registration and use will be found if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website.
There is insufficient information in the Complaint for the Panel to conclude that the goods sold on the website at “www.mou-bootsonline.com” were counterfeit and the Panel notes the panel’s decision in that regard in Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service / Yu Tao, WIPO Case No. D2018-2458. However, the fact that, prior to the Complainant’s successful proceeding under the Policy in respect of <mou-bootsonline.com> the Respondent’s website contained links to “www.mou-bootsonline.com”, which was, at least, an unauthorized seller of the Complainant’s goods, points to an intention by the Respondent to cause confusion to Internet users. Simply because the Respondent’s website at the disputed domain name does not itself offer for sale either authentic or counterfeit copies of the Complainant’s products does not materially affect the position. For the reasons outlined earlier, the Respondent’s underlying motivation is to derive commercial advantage from the confusion caused to Internet users who are lured by both the use of the Complainant’s trade mark within the disputed domain name as well as the content of the website to which it resolves, into believing that the disputed domain name is in some way connected with or authorized by the Complainant.
In this respect, the Respondent’s conduct is essentially the same as in other decisions under the Policy where panels have found a respondent’s tribute site to be fake. See, for example the comments of the panel in Miranda Kerr v. orangesarecool.com, WIPO Case No. D2013-0553; “[t]he use of the Complainant’s trade mark either as or as the dominant part of the Domain Names is intended to capture Internet traffic from Internet users who are looking for information, photographs and film clips about the Complainant as well as about the Complainant’s products. The Domain Names and the content of the Websites are calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites and the products sold on them were authorised or endorsed by the Complainant”.
For these reasons, the Panel accordingly finds that the disputed domain name was 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 <moureview.com> be transferred to the Complainant.
Date: February 11, 2019