WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M and M Direct Limited v. Fulai Chen

Case No. D2016-1998

1. The Parties

Complainant is M and M Direct Limited of Leominster, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") represented by Kate Ellis, United Kingdom.

Respondent is Fulai Chen of Guangzhou, China.

2. The Domain Name and Registrar

The disputed domain name <mandmdirect.store> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, 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.

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 Respondent of the Complaint, and the proceedings commenced on October 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 27, 2016.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on November 7, 2016. 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

Complainant is the owner of several registrations for the trademark M AND M DIRECT, including International Reg. (WIPO) No. 1111792, extended to Australia, Japan and the United States of America registered on 11 November 2011; European Union Trade Mark ("EUTM") Reg. No. 004631693, registered on September 28, 2006; and EUTM Reg. No. 00667559, registered on January 22, 2009. Complainant also owns EUTM registrations for the M AND M DIRECT Logo, Reg. No. 014013494, registered on September 4, 2015, and Reg. No. 011766045, registered on September 5, 2013.

The Disputed Domain Name was registered on August 30, 2016.

5. Parties' Contentions

A. Complainant

Complainant asserts that its predecessor first started to use the name "M and M" in 1987, when its activities were focused in the United Kingdom and related to the sale of discounted sports clothing and footwear. The company's product range expanded to include the sale of men's, women's and children's fashion clothing, footwear and accessories.

Incorporated in 2004 as "M & M Sports Ltd", the company changed its name in February 2006 to "M and M Direct". Complainant asserts that it registered its domain name <mandmdirect.com> in July 2005. Complainant asserts that its related website receives a large number of visitors every year, with 61.5 million visitors last year. The name "M AND M DIRECT" appears prominently throughout the webpages.

Complainant asserts that today it is one of Europe's leading online retailers of discount fashion items, operating in over 30 countries through its website "www.mandmdirect.com". Complainant asserts that its turnovers since 2011 have exceeded GBP 100,000,000 per year.

Complainant asserts that it has registered M AND M DIRECT as a trademark in Australia, Japan and the United States of America ("United States"), and also has protection for the name combined with various logos as European Union Trade Marks. Complainant asserts that it has filed trademark applications in China for M AND M DIRECT in 2011, 2013 and 2016. Complainant owns an International Registration for M AND M DIRECT which has designated China. Protection has not yet been extended to China. Complainant asserts that it has used the name M AND M DIRECT extensively and has therefore built up extensive and substantial goodwill in the name M AND M DIRECT in the United Kingdom and throughout the world.

Complainant asserts that Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because Respondent is not connected to or authorized by Complainant and has no rights or legitimate interest in the name M AND M DIRECT; that the name is not merely a generic or common word such that Respondent would be entitled to register it; that the Disputed Domain Name has been registered by Respondent without Complainant's authorization or consent; that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, but instead, that Respondent has registered the Disputed Domain Name with the intention of piggy-backing off the goodwill and reputation that Complainant has built up in the name M AND M DIRECT in connection with Complainant's retail services; that there can be no legitimate reason for Respondent to register the Disputed Domain Name given Complainant's rights in M AND M DIRECT; and that Respondent was not entitled to register the Disputed Domain Name without Complainant's consent. In sum, Complainant asserts that Respondent is not using the Disputed Domain Name in the course of any legitimate trade or bona fide offering of goods or services.

Complainant asserts that Respondent is not commonly known by the name M AND M DIRECT; rather, Respondent is an individual named Fulai Chen, whose name bears no resemblance to M AND M DIRECT. In view of Complainant's reputation in the field of retail services, Respondent's use of the name M AND M DIRECT in connection with a domain name including the generic Top-Level Domain ("gTLD") ".store" shows that Respondent intended to take advantage of the goodwill that Complainant has built up in the name M AND M DIRECT. Complainant asserts that there can be no other legitimate reason for the registration and use of the Disputed Domain Name.

Complainant asserts that Respondent cannot claim any legitimate entitlement to use the Disputed Domain Name for his own business because it resolves to a holding page, and because Respondent does not appear to have any relevant trademark rights in the Disputed Domain Name.

Complainant asserts that Respondent is not using the Disputed Domain Name for a legitimate non‑commercial or fair use purpose. Indeed, Complainant asserts that Respondent is not making any active use of the Disputed Domain Name, but assumes that Respondent intends to set up a website taking advantage of Complainant's rights and reputation in M AND M DIRECT to drive traffic to the website. Complainant asserts there is a risk that Respondent will offer the Disputed Domain Name for sale at an inflated price either to Complainant or to a third-party who will seek to use the Disputed Domain Name for financial gain.

Complainant asserts that Respondent has unfairly used the name M AND M DIRECT to take unfair advantage of the rights, goodwill and reputation that Complainant has built up in the name M AND M DIRECT.

Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because at the time the Disputed Domain Name was registered on August 30, 2016, Complainant had rights in the name M AND M DIRECT as set forth above. Complainant has at no time consented to or otherwise approved Respondent's registration of the Disputed Domain Name. Respondent is not known by the name M AND M DIRECT and there can be no fair or legitimate reason for Respondent's registration of the Disputed Domain Name.

Complainant asserts that Respondent's registration of the Disputed Domain Name cannot be mere coincidence because the name is arbitrary and distinctive. Furthermore, Complainant asserts that the fact that Respondent has chosen to register a domain name with the gTLD ".store" that is identical to Complainant's trading name under which it provides retail services, demonstrates that Respondent must have been aware of Complainant and its activities at the time Respondent registered the Disputed Domain Name. Complainant asserts that it was not coincidence that Respondent registered a domain name that is identical to a name in which Complainant has rights together with the gTLD ".store" given Complainant's activities as a retailer.

In addition, Complainant asserts there is a serious risk of both tarnishment and dilution to Complainant's reputation built up in the name M AND M DIRECT.

Complainant asserts that Respondent should be deemed to have constructive, if not actual, notice of Complainant's registrations, goodwill and reputation in the name M AND M DIRECT. Complainant asserts that a cursory Internet search would have disclosed the M AND M DIRECT trademark and its extensive use by Complainant.

Complainant notes that previous UDRP panels have decided that bad faith registration may be inferred from the registration of a well-known mark. See, e.g., The Fragrance Foundation, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982. Complainant asserts this decision is applicable as Complainant has a trademark registration and pending applications in China for M AND M DIRECT and Respondent is based in China.

Complainant asserts that Respondent has registered the Disputed Domain Name in bad faith as he has previously engaged in a pattern of registering domain names corresponding with third-party trademarks in which he has no legitimate interest. Specifically, Complainant conducted a reverse WhoIs-search for Respondent that mentions other domain name registrations corresponding to third-party trademarks that resolve to live third-party websites, namely <britneyspears.vip>, <buildabear.store>, and <disneystore.store>.

Complainant asserts that Respondent has used the Disputed Domain Name in bad faith because it contains exclusively Complainant's name M AND M DIRECT, and thus Respondent made a concerted effort to take advantage of Complainant's rights, goodwill and reputation in the name M AND M DIRECT by leading members of the public to the mistaken belief that the Disputed Domain Name has been registered by Complainant.

Complainant asserts that Respondent has effectively prevented Complainant from registering the Disputed Domain Name, and has engaged in a pattern of such behavior by registering domain names that correspond directly to third-party trademarks.

Complainant asserts that Respondent's website may also be diverting business away from Complainant as consumers who may be trying to access Complainant's services may try to visit the website to which the Disputed Domain Name resolves in search of Complainant's website, causing damage to Complainant.

Complainant asserts that because the Disputed Domain Name has only been registered relatively recently, it is not known whether Respondent is making preparations to use the Disputed Domain Name in a more active manner.

Complainant asserts that there can be bad faith use of a domain name when the domain name is not being actively used, even if the registrant has taken no active steps to contact the rights owner, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Complainant asserts that it is not possible to see what active use Respondent could make of the Disputed Domain Name that would not be illegitimate given Complainant's reputation in M AND M DIRECT and its extensive trademark portfolio.

Complainant asserts that the Disputed Domain Name was registered primarily to take advantage of the rights, goodwill and reputation that Complainant has built up in the name M AND M DIRECT in connection with its retail services in view of Respondent's pattern of behavior in registering and using domain names that correspond to third-party domain names, and because there is no legitimate reason for Respondent to register the Disputed Domain Name given that the term M AND M DIRECT is arbitrary and distinctive.

Complainant asserts that circumstances indicate that Respondent may have registered the Disputed Domain Name intentionally to attract, for commercial gain, Internet users by creating a likelihood of confusion, sponsorship, affiliation or endorsement with Complainant's trademark.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [Respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [Respondent has] registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

According to paragraph 4(c) of the Policy a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:

"(i) Before any notice to you 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, 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 are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue."

Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).

B. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name <mandmdirect.store> is confusingly similar to Complainant's registered M AND M DIRECT mark. The addition of the gTLD ",store", which is related to Complainant's activities, does not decrease such similarity. See Orange Brand Services Limited v. Ancient Holdings, LLC, Wendy Webbe, WIPO Case No. D2014-0397; "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142.

The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant has made a prima facie case, namely by showing that Complainant has not authorized Respondent to use the M AND M DIRECT mark, that Complainant has no relationship with Respondent, that Respondent is not known by the Disputed Domain Name, and that Respondent is not making a bona fide or fair use of the Disputed Domain Name.

Once Complainant makes its prima facie case, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0") paragraph 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Complainant asserts that Respondent should be found to have known of Complainant's rights in its trademark at the time Respondent registered the Disputed Domain Name. Prior cases have applied the doctrine of constructive use only to United States trademarks, and only where the Respondent was a resident. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Section 3.4.Complainant's trademark is not registered in China, where Respondent is located. China does not recognize the doctrine of constructive use. See Trademark Law of the People's Republic of China ("China Trademark Law"), Chapter 7, Article 56 (revised 2013). Although China recognizes rights in unregistered marks that have become well-known (See China Trademark Law, Chapter 7, Article 58), Complainant has made no assertion that its mark is well-known in China. Absent such a specific assertion and evidence thereof, this Panel will not apply the doctrine of constructive use against a Chinese individual.

The Disputed Domain Name is not being and has not been actively used except as a Registrar parking page. Therefore, the Panel does not find that Respondent has used the Disputed Domain Name to attract Internet users to its website or other location by creating a likelihood of confusion with Complainant's trademark.

Nevertheless, Complainant has provided sufficient evidence to establish that Respondent has registered the Disputed Domain Name in order to prevent Complainant from reflecting its mark in a corresponding domain name under paragraph 4(b)(ii) of the Policy. Complainant has provided evidence indicating that Respondent has engaged in a pattern of registering domain names corresponding to registered, famous trademarks, including <britneyspears.vip> (subject of United States Reg. Nos. 3624626, 3692573, 3692572, and others), <buildabear.store> (subject of United States Reg. Nos. 2884223, 3966451, 3741249, and others), and <disneystore.store> (subject of United States Reg. Nos. 4183707, 3832378, 3832378, and others). Furthermore, Respondent's registration of the domain name <cerner.store> was the subject of a prior proceeding in which Respondent was found to have registered and used the domain name in bad faith. See Cerner Corporation v. Fulai Chen, NAF Claim No. FA1610001698981. Combined with Respondent's failure to respond to the Complaint, the Panel finds this sufficient evidence to infer that Respondent was aware of Complainant's registered mark and sought to prevent Complainant from reflecting its mark in the ".store" domainspace.

7. Decision

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 <mandmdirect.store> be transferred to the Complainant.

Jordan S. Weinstein
Sole Panelist
Date: November 21, 2016