WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mou Limited v. Song Li Hong
Case No. D2018-2912
1. The Parties
The Complainant is Mou Limited of London, United Kingdom, represented by SILKA Law AB, Sweden.
The Respondent is Song Li Hong of Harbin, Heilongjiang, China.
2. The Domain Name and Registrar
The disputed domain name <mou-saleonline.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (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 name. On December 24, 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 January 3, 2019, 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 January 4, 2019.
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 the same day. 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 January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 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 name.
The disputed domain name <mou-saleonline.com> was registered on April 26, 2018 by the Respondent. The disputed domain name previously resolved to a website advertising products purporting to be those of the Complainant under the heading “Pre-Christmas Sale UP TO 60% OFF”. The disputed domain name now redirects to the website “www.mouboots-outlet.com” selling products bearing the Complainant’s trademark.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is 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 name is confusingly similar to the mark MOU, because it contains “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 “online” and “sale” 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 name based on the following:
(i) The Complainant has not found that the Respondent is commonly known by the disputed domain name.
(ii) The Respondent is not, nor has ever been, a licensee of the Complainant and the Respondent’s website has no affiliation with the Complainant.
(iii) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent offers for sale products bearing the Complainant’s mark without any indication of its relationship to the Complainant. On the contrary, users arriving at the disputed domain name may believe that the website is affiliated or endorsed by the Complainant or that it belongs to the Complainant. The Respondent is using the Complainant’s logo without consent and at the bottom of the website has inserted a disclaimer “© 2018 MOU Outlet All Rights Reserved” which creates the impression that the site is endorsed by the Complainant.
Registered and used in bad faith
In respect of paragraph 4(a)(iii) of the Policy, the Complainant submits that the disputed domain name was registered and is being used in bad faith on the following grounds:
(i) The Complainant started the use of the MOU brand as early as 2002 and distributes in more than 30 countries including the Respondent’s country of residence. The active business carried out using the disputed domain name shows it is unlikely that the Respondent was not aware of its unlawful registration of the disputed domain name.
(ii) The Respondent is using the disputed domain name for a commercial website misappropriating the Complainant’s trademark and offering prima facie counterfeit MOU branded products for sale. It does not disclaim on its website the non-existing relationship between itself and the Complainant. Therefore, the Complainant submits that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking MOU branded products to the Respondent’s website for financial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.
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 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 website is in English and the disputed domain name includes Latin script words such as “sale” 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 name clearly contains the mark MOU with the addition of the terms “sale” and “online” separated from the word “mou” by a hyphen. These are descriptive words which do not prevent a finding of confusingly similarity to the trademark.
Therefore, the Panel finds that the disputed domain name is 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 name that is the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
The Panel accepts the Complainant’s contention that it has not authorized the Respondent in any way to use the trademark and that the Respondent’s website has no affiliation with the Complainant.
The screenshots taken by the Complainant show that the website to which the disputed domain name resolved was selling MOU-branded boots for prices which are much lower than normal retail prices, suggesting they are counterfeit. The website clearly displayed the Complainant’s stylized mark for MOU and a disclaimer “2018 MOU Outlet All Rights Reserved”, giving the website the overall look and feel of an outlet website authorized by the Complainant. In the absence of such authorization, the operation of the website at the disputed domain name is illegitimate and cannot vest the Respondent with rights or legitimate interests.
By failing to respond, the Respondent has not presented any evidence to the contrary and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Finally, the Complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
A strong inference for bad faith can arise where the Respondent “knew or should have known” of the Complainant’s trademark rights (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). Given the fame of the Complainant’s boots products sold under the mark MOU, and the operation of the disputed domain name to offer for sale boots which look highly similar or identical to those on the Complainant’s official website at “www.mou-online.com”, the Panel can infer that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights.
The use of the MOU trademark, fake authorization and the fact that the disputed domain name differs only by the addition of the term “sale” from the official website, is all designed to create a false impression of affiliation with the Complainant. Furthermore, it shows that the Respondent explicitly set out to ride on the reputation of the Complainant and deceive Internet consumers for commercial gain through dishonest means.
Furthermore, the Respondent has been a respondent in two prior UDRP disputes with the Complainant involving the domain names <moueskimo-boots>, <mou-bootsoutlet.com>, <mou-sale-online.com>, <mousaleonline.com> and <mou-stivali.com> (Mou Limited v. Song Lihong, WIPO Case No. D2018-0988 and Mou Limited v. Whois Agent, Domain Whois Privacy Protection Service, Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Luo Yuandong, Laoyuandong, Song Li Hong, Sun YanQi, WIPO Case No. D2018-1891). In both of these cases, the respondents were found to have acted in bad faith and the domain names were transferred to the Complainant. Each case involved domain names which resolved to websites selling products purporting to be those of the Complainant. At the time of writing the decisions, the websites were inactive. Therefore, it can now be concluded that the Respondent has engaged in a pattern of bad faith registrations of domain names – including the disputed domain name - targeting the Complainant.
Given all of the above, it is clear that the disputed domain name has been registered and 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 <mou-saleonline.com> be transferred to the Complainant.
Date: February 20, 2019