WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M and M Direct Limited v. Domain Administrator, See PrivacyGuardian.org / Mitchell Herbertson
Case No. D2019-2032
1. The Parties
The Complainant is M and M Direct Limited, United Kingdom, represented by Eversheds Sutherland (International) LLP, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Mitchell Herbertson, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <mandm.xyz> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2019, 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 September 2, 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 amended Complaint on September 5, 2019.
The Center verified that the Complaint together with the amended 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 September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. The Response was filed with the Center on September 24, 2019.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 16, 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 incorporated in the United Kingdom and operates as an online retailer of discount fashion goods under the name “M and M”. The Complainant began using the name “M and M Sports” in 1987 and then in August 2004 the Complainant’s name changed to “M and M Sports Limited” as a result of a private-equity buy-out. In 2006, the Complainant changed its name again to “M and M Direct Limited” to reflect the company’s focus on selling fashion and lifestyle brands.
The Complainant’s business has grown significantly over the years and now has over 2 million active customers across Europe, including Ireland, Germany, France, the Netherlands, Denmark and Poland.
The Complainant owns several trademark registrations for M AND M as follows:
European Union Trademark for M AND M and design under Registration No. 004631677 registered January 19, 2007;
European Union Trademark for M AND M under Registration No. 006679534 registered January 22, 2009; United Kingdom Trademark for M AND M under Registration No. 03085663 registered March 13, 2015; Australian Trademark for M AND M DIRECT under Registration No. 1111792 registered August 27, 2012.
The Complainant also owns a domain name registration for <mandmdirect.com>, which it has used in association with its online business for many years.
The Respondent registered the disputed domain name <mandm.xyz> on January 2, 2019, and at the time the Complaint was filed the disputed domain name did not appear to revert to an active website.
5. Parties’ Contentions
The Complainant submits that it owns several trademark registrations for the mark M AND M and the trademark M AND M DIRECT, which are listed in section 4 of this Decision. The disputed domain name <mandm.xyz> incorporates the Complainant’s registered trademark M AND M in its entirety. The addition of the Top-Level Domain (“TLD”) “.xyz” does not differentiate the disputed domain name from the Complainant’s trademark. Accordingly, the Complainant contends that the disputed domain name <mandm.xyz> is confusingly similar with the Complainant’s registered trademark.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name M AND M and has no registered trademark rights in Australia which would support the disputed domain name <mandm.xyz>. Further, the Respondent was never authorized or licensed to use the Complainant’s registered trademark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. At the time the Complaint was filed, the disputed domain name did not revert to an active website.
The Respondent resides in Australia, where the Complainant owns a registered trademark and has conducted business, through its online sales of fashion products.
The Complainant argues that the Respondent has registered a confusingly similar domain name and is passively holding the disputed domain name to prevent the ownership of the disputed domain name by the registered trademark owner, thereby interfering with the Complainant’s ability to use the disputed domain name in association with its business activities. The Complainant submits that the Respondent has deliberately hidden his identity through privacy protection which is evidence of bad faith under the Policy.
The Respondent does not dispute that the disputed domain name and the Complainant’s registered trademark are confusingly similar.
The Respondent claims that he has rights and legitimate interests in the disputed domain name. The Respondent has used the disputed domain name <mandm.xyz> in a noncommercial private capacity as a subdomain which resolves to a private server. The domain name <wx.mandm.xyz> is password protected and encrypted and is not accessible to Internet users generally.
The Respondent argues that he resides in Australia, where he had no prior knowledge of the Complainant’s online discount store. From the Respondent’s perspective, the Complainant appears to a European company with no local Australian based website or sales.
The disputed domain name has never resolved to any active public website and would not therefore compete with or diminish the Complainant’s business or website in any way.
The Respondent submits that he chose the name “m and m” in good faith because the short combination of letters corresponds to a personal nickname. The Respondent also argues that the use of privacy protection does not prove bad faith on its own and it is a commonly accepted method to avoid spam.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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 Panel finds that the disputed domain name <mandm.xyz> is confusingly similar to the Complainant’s registered trademarks. The Complainant has submitted evidence that it owns several trademark registrations internationally and in Australia, as listed in section 4 of this Decision. The disputed domain name <mandm.xyz> replicates the Complainant’s M AND M registered trademark in its entirety except for the addition of the TLD “.xyz”. A TLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests; Registered and Used in Bad Faith
The Respondent has filed a response in this proceeding stating that he was not aware of the Complainant’s business or trademark. He resides in Australia, where the Complainant does not have a significant business presence. The Complainant’s evidence in this regard is weak. The Complainant’s online sales to customers in Australia are not substantial; in fact sales declined to GBP 1,000 in 2018. These online sales were generated through the website at “www.mandmdirect.com” and can be characterized as de minimus. In these circumstances, the Panel accepts the Respondent’s assertion that he was not aware of the Complainant’s trademark and its business, when he registered the disputed domain name.
The Panel further notes that the disputed domain name appears to be used in association with a private server and as such does not show that the Respondent registered the disputed domain name with the Complainant’s trademark in mind, as it is not connected in any way to the retail services of the Complainant.
Accordingly, on the limited record available in this proceeding, the Panel finds that the Complainant has failed to establish the absence of rights and legitimate interests in the disputed domain name by the Respondent. The Panel also finds that the Complainant has failed to establish that the disputed domain name was registered in bad faith.
The Panel concludes that the Complainant has not satisfied the requirements under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: November 1, 2019