The Complainant is Minnetonka Moccasin Company, Inc of Minneapolis, United States of America represented by Fredrikson & Byron, P.A., United States of America.
The Respondents are wei liang, wangli, xiahong, baohan, lipai, li hong, xuwei, hu yurui, hu mo, fang wei, hu haonan, liu ruyun, ma ling, wenfang, tangling, jiang yilan, ma qing, yang shuoqing, lisai, chenyang, chenliang, bailianhua of China.
As detailed below, the Complainant filed Supplemental Filings, requesting to add to the Complaint additional domain names (“Additional Domain Names”) that are registered to the following registrants ("the Additional Registrants"):
zheng zi, hong yaotian, zhang sha, yuan xi and cheng yuanyuan of China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , and are registered with B, Inc.
The disputed domain names , , , , , , , , , and are registered with Jiangsu Bangning Science & technology Co. Ltd.
The Additional Domain Names , , , and are registered with B, Inc 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain names. On April 19, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the relevant Respondents are listed as the registrants and providing the contact details. On April 18, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the relevant disputed domain names. On April 27, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the relevant Respondents are listed as the registrants and providing the contact details.
On May 3, 2012, the Center transmitted an email to the Parties in both the Chinese and English languages regarding the language of the proceeding. On May 4, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not submit any comments.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 30, 2012.
On June 1, 2012, the Complainant submitted a Supplemental Filing, requesting to add to the Complaint four additional domain names: , , and .
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 22, 2012. 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.
On June 25, 2012, the Complainant submitted a second Supplemental Filing, requesting to add to the Complaint an additional domain name .
On July 5, 2012, the Panel issued an Administrative Procedural Order, requesting the registrants to submit responses to the Supplemental Filings within 10 days. The additional gegistrants did not submit any response to the Complainant's Supplemental Filings. 4. Factual Background
The Complainant is an American corporation, which engages in the field of fashion and especially shoes.
The Complainant is the owner of numerous worldwide trademark registrations for the marks MINNETONKA and MINNETONKA MOCCASIN. For example: Community trademark registration No. 18531 - MINNETONKA MOCCASIN (logo), with the registration date of June 16, 1998; Republic of Korea trademark registration No. 0745631 – MINNETONKA, with the registration date of May 2, 2008; Japanese trademark registration No. 5216278 – MINNETONKA MOCCASIN, with the registration date of March 19, 2009; United States of America trademark registration No. 3,655,353 – MINNETONKA, with the registration date of July 14, 2009, and many more.
Among others, the Complainant markets its products and operates through a website under the domain name .
The disputed domain name was registered on April 17, 2011.
The disputed domain name was registered on December 12, 2011.
The disputed domain names , , , , and were registered on December 21, 2011.
The disputed domain names , , , , and, were registered on December 22, 2011.
The disputed domain name was registered on December 28, 2011.
The disputed domain names , , , , and were registered on December 29, 2011.
The disputed domain name was registered on January 31, 2012.
The additional domain name was registered on May 7, 2012.
The additional domain name was registered on May 10, 2012.
The additional domain name was registered on May 14, 2012.
The additional domain name was registered on May 16, 2012.
The additional domain name was registered on May 28, 2012.
At the time the Complaint was filed, the disputed domain names and Additional Domain Names with the exception of the disputed domain name and resolved to nearly identical online commercial websites, some in different languages, that bear the Complainant’s trademark and offer for sale products that appear to be the Complainant's.
The disputed domain name resolves to an online commercial website that is similar but not identical to the above disputed domain names, which also bears the Complainant’s trademark and offers for sale products that appear to be the Complainant's.
The disputed domain name resolves to an inactive webpage that contains sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant argues that it has rights in the disputed domain names due to its registered trademarks.
The Complainant further argues that the Respondents advertise and sell counterfeit versions of the Complainant's products on the websites under the disputed domain names, which also feature the Complainant's design mark.
The Complainant further argues that the disputed domain names are confusingly similar to the Complainant's marks. The Complainant further contends that the fact that the disputed domain names consist of the elements of the Complainant’s marks in reverse or with the addition of descriptive words, in English or in a another language, does not reduce confusing similarity.
The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names as they are not known by the disputed domain names. The Complainant further contends that the Respondents registered the disputed domain names with knowledge of the Complainant and the Complainant's marks.
The Complainant further argues it has not authorized, licensed or granted the Respondents the right to use the Complainant's mark or any variation thereof.
The Complainant further argues that the Respondents registered the disputed domain names well after the Complainant had established its trademark rights.
The Complainant further argues that the Respondents are making a non-legitimate commercial use of the disputed domain names. The Complainant contends that the Respondents are using the disputed domain names in order to confuse consumers as to their origin and selling counterfeit products of the Complainant's.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – Supplemental Filings
The Complainant submitted Supplemental Filings on June 1, 2012 and on July 5, 2012 requesting to add to the Complaint five additional domain names.
Paragraph 10(a) of the Rules provides that the panel has authority to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules. As established by previous UDRP decisions, it is within the Panel's authority to accept unsolicited supplemental submissions (see Inter alia, AutoNation Holding Corp. v. Rabea Alawneh,WIPO Case No. D2002-0058; NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A,WIPO Case No. D2008-1984).
Accordingly, the Panel is authorized, after examining the circumstances of the case, to consider the Supplemental Filings when rendering its decision and include the additional domain names to the Complaint (see: General Electric Company v. Prabish Thomas/Green Energy LLC,WIPO Case No. D2007-1866; General Electric Company v. Edison Electic Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334; Tractor Supply Co. of Texas and Tractor Supply Company v. S/Troy Rushton,WIPO Case No. D2010-0795; The Canadian Education Centre (CEC) Network, CEC Turkey-Kanada Egitim Merkezi v. Ismail Ince / Savas Dost,WIPO Case No. D2009-0698).
In the present case, the Panel decides to take into account the Complainant's Supplemental Filings when rendering its decision. The Panel's decision is based on the fact that the Supplemental Filings concern the same factual and legal grounds as the original Complaint and that no prejudice has occurred, as the Respondents and the Additional Registrants had the opportunity to respond to the Supplemental Filings and chose not to do so. The disputed domain names and the Additional Domain Names will be referred hereinafter, together, as “the Disputed Domain Names”. B. Preliminary Issue – Consolidation of Multiple Domain Names and Respondents
This case raises the question whether the Complainant may bring the Complaint against multiple Respondents, who are the registrants of different Disputed Domain Names, where the connection between the Respondents is not conclusive on its face. Previous UDRP panels have addressed this issue and found that there are situations when multiple domain name registrants can be considered as one for the purposes of a UDRP proceeding.
The general rule was asserted in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345 stating that “A number of panels deciding cases under the Policy have permitted a single complaint in respect of multiple domain names for which the registrants were not the same person, where the circumstances suggested that the registrants (being the named respondents) were controlled by a single entity”. (See also Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al.,WIPO Case No. D2004-0492; Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890).
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 broadened the above approach and concluded that “the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve”.
Common control has been given a broad interpretation. UDRP panels have found that common control can be exercised in various circumstances, including, where the content of the websites were substantially identical and referred Internet visitors to a common “homepage” (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071), and in circumstances where the domain names were registered with the same registrar and resolved to essentially identical websites (see Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659).
The Complainant provided the following evidence and arguments to indicate a connection between the Respondents:
a) The Websites under the Disputed Domain Names are identical in appearance, with the exception of the website under disputed domain name , which is similar but not identical and the website under the disputed domain name , which is inactive;
b) The Disputed Domain Names were registered within a short time from one of the other;
c) The Disputed Domain Names were all registered with one of two registrars: Jiangsu Bangning Science & technology Co. Ltd. or B, Inc.;
d) Except for the disputed domain name , each of the Disputed Domain Names is hosted at one or two combinations of DNS servers;
e) With the exception of the website under the disputed domain name , which is inactive, the Disputed Domain Names offer identical counterfeit products.
The Panel deems that the above facts are sufficient for a finding of common control or connection between the Disputed Domain Names, with the exception of the disputed domain names and .
The Panel supports its decision with the evidence the Complainant provided above and the fact that the email addresses for all of the Respondents, except the registrant of the disputed domain name , consist of one of three domain names: , and , all registered to the registrant N, Inc.
The disputed domain names and differ from the other Disputed Domain Names by the following:
a) The disputed domain names and do not share the same website visual appearance;
b) The DNS server of disputed domain name is different from the DNS servers of the other Disputed Domain Names;
c) The registrant of the disputed domain name does not share the same a similar email address to the email addresses of the other Respondents.
The above gives rise to a concern that the disputed domain names and might not in fact be under the same common control or connected to the other Disputed Domain Names.
As a result, the Panel finds that under the circumstances of this case, the Complainant established that the Disputed Domain Names , , , , , , , , , , , , , , , , , , , , , , , and are subject to the common ownership or control of the same person or company. The connection is sufficient to permit the filing of a single Complaint against the multiple Respondents holding these Disputed Domain Names, and accordingly, the Panel will allow the consolidation of these.
The Panel does not view that the instant circumstances are appropriate to grant the Complainant’s request to consolidate the disputed domain names and and will not discuss those domain names further.
The decision of the Panel is made without prejudice to the Complainant’s right to file a separate complaint (should it wish to do so) with respect to the disputed domain names and . C. Preliminary Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
The language of the Registration Agreements for the Disputed Domain Names is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judiciously in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The Disputed Domain Names incorporate English words, or translations thereof, such as "discount", "sale", "boots", etc.;
b) The Disputed Domain Names resolve to online marketplaces, using, primarily but among others, the English language; and providing the option to conduct transactions in predominantly English-related currencies such as USD, GBP and Euros;
c) None of the Disputed Domain Names operates using the Chinese language;
d) The Respondents did not object to the Complainant's request that English be the language of proceedings;
e) All case-related communications have been sent in both the English and Chinese languages.
Upon considering the above, the Panel decides to allow the Complainant's request and rules that English be the language of proceedings. D. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of numerous worldwide trademark registrations for the marks MINNETONKA and MINNETONKA MOCCASIN. For example: Community trademark registration No. 18531 - MINNETONKA MOCCASIN (logo), with the registration date of June 16, 1998; Republic of Korea trademark registration No. 0745631 – MINNETONKA, with the registration date of May 2, 2008; Japanese trademark registration No. 5216278 – MINNETONKA MOCCASIN, with the registration date of March 19, 2009; United States trademark registration No. 3,655,353 – MINNETONKA, with the registration date of July 14, 2009, and many more.
Each of the Disputed Domain Names integrates the Complainant’s MINNETONKA MOCCASIN or MINNETONKA trademarks in their entirety. The Disputed Domain Names differ from the Complainant’s trademark by the additional common terms, including, “buy”, “sale”, “boots”, "discounts", in English and in other languages and the gTLD “.com”.
Also, reversal of the elements MINNETONKA and MOCCASIN in a disputed domain name has no consequences and does not avoid the confusing similarity (see: ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425).
The additional the common terms do not serve to sufficiently distinguish or differentiate the Disputed Domain Names from the Complainant’s trademarks, as they are descriptive elements that relate to the Complainant’s field of business.
The mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark for the purposes of the Policy: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The addition of the gTLD “.com” to the Disputed Domain Names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. E. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, Paragraph 2.1).
In the present case, given the facts and reasons stated in Sections 4 and 5 respectively, the Complainant has demonstrated to the Panel that the Respondents lack rights or legitimate interests in respect of the Disputed Domain Names and the Respondents failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use the Complainant’s MINNETONKA MOCCASIN or MINNETONKA trademarks, or a variation thereof.
The Respondents did not submit a response and did not provide any evidence to show any rights or legitimate interests in the Disputed Domain Names that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. F. Registered and Used in Bad Faith
The Complainant must show that the Respondents registered and are using the Disputed Domain Names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant maintains that the Respondents registered the Disputed Domain Names well after the time that the Complainant’s trademark was registered. According to evidence provided by the Complainant, the Complainant’s trademark has been registered and in effect at least since the year 1998. It is suggestive of the Respondents’ bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the Disputed Domain Names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain name resolves to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name resolves to.
The Disputed Domain Names resolve to websites that advertise and market footwear products bearing the Complainant's marks.
The Respondents’ use of the Complainant's marks to promote the sale of similar or identical goods to the goods being offered by the Complainant constitutes evidence that the Respondents registered and used these Disputed Domain Names with knowledge of the Complainant and the Complainant’s trademarks and reputation, and subsequently intended to trade off the value of these. The Respondents’ actions therefore constitute bad faith. See 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”.
Furthermore, the Disputed Domain Names are confusingly similar to the Complainant's trademarks. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the complainant’s site to the respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant’s distinctive registered trademark and the Respondents’ use of the Disputed Domain Names, the Panel finds that the Disputed Domain Names, which are confusingly similar to the Complainant’s mark, create a likelihood that Internet users would be confused and potentially identify the Respondents as either associated or affiliated with the Complainant.
Based on the evidence presented to the Panel, including the registration of the Disputed Domain Names significantly after the registration of the Complainant’s marks, the similarity between the Disputed Domain Names and the Complainant’s distinctive trademark and the Respondents’ use of the Disputed Domain Names to sell goods that are regularly sold by the Complainant, the Panel draws the inference that the Disputed Domain Names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
The Panel, without prejudice to the Complainant’s ability to file future UDRP Complaints, declines to make a finding with respect to the disputed domain names and , given the above discussion of consolidation principles.
Jonathan Agmon
Sole Panelist
Dated: July 22, 2102
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