The Complainant is Moomin Characters Oy Ltd of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Jermaine Pendelton, S of Los Angeles, California, United States of America, self-represented 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2016. On February 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 22, 2016 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 February 23, 2016.
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 March 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2016.
An email from the Respondent was submitted to the Center on March 9, 2016 in which the Respondent claimed that it was "not really interested in the domain name". On March 10, 2016, the Center sent an email to the Parties inviting the Parties to consider suspension of the proceeding for purposes of exploring settlement options. The Complainant sent an email to the Center on March 11, 2016 requesting the continuation of the proceeding, and on the same date the Center notified the Parties that it would continue in the administration of the proceeding. An additional email from the Respondent was received by the Center on March 28, 2016, offering the transfer of the disputed domain name.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 31, 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
The Complainant is the official entity in charge of licensing the character "Muumi", created in 1945 by Ms. Tove Jansson. The characters have been known as "Muumit" in Finnish, "Mumin" in Swedish and "the Moomins" in English.
The Complainant is the owner of the following European Union trademark registrations for MUUMI:
- No. 012683462, filed on March 12, 2014 and registered on July 9, 2014, covering classes 5, 29 and 30, and
- No. 013530308, filed on December 5, 2014 and registered on May 20, 2015, covering classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 34, 35, 41, 43 and 45.
The disputed domain name was registered by the Respondent on January 4, 2016 and currently redirects Internet users to Google's webpage. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the official entity in charge of licensing the character "Muumi", created in 1945 by Ms. Tove Jansson. The characters have been known as "Muumit" in Finnish, "Mumin" in Swedish and "the Moomins" in English and are quite famous especially in Finland. According to the Complainant, these characters have been the basis for numerous television series, films, opera, a theme park called "Muumimaailma" (which translates to "Moomin World" in English) in Naantali, Finland, as well as various MOOMIN and MUUMI-licensed products.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant's well-known trademark, creating a likelihood of confusion. Under Complainant's point of view, the addition of the word "mails" is non-distinctive and does not decrease the level of high similarity between the trademark and the domain name.
Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(a) the Respondent did not register any trade or service mark or has a company name associated with the disputed domain name;
(b) the Complainant has not licensed or otherwise permitted the Respondent to register the disputed domain name;
(c) there is no relationship between the Respondent and the Complainant;
(d) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
As to the registration of the disputed domain name in bad faith the Complainant asserts that the Respondent selected it as part of a scheme to divert the recipients of its e-mails to a website linked to the disputed domain name, creating an impression that the e-mail, written in Finnish, would be an official newsletter from the Complainant, encouraging recipients to click on a link provided in its emails, which contained job offers which could be easily mistaken with e-mail advertisements of job opportunities offered by the Complainant's licensee, the theme park Muumimaailma Oy which is a large employer and hires over 200 summer employees yearly.
Lastly, also according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant's trademarks by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its domain name, diverting Internet users for fraudulent purposes, apparently for Respondent's financial gain. B. Respondent
The Respondent did not formally reply to the Complainant's contentions, having merely sent on March 9, 2016 an email to the Center stating that it "is not really interested in the domain name, [which] was generated through a random domain name generator" and that it "was not aware that muumi was a type of freaky white hippo".
On March 28, 2016, the Respondent sent a second email stating: "I already said he could have it. (…) What do I actually have to do in this process cos (sic) it is wasting my time. Do I contact the white hippo people directly and say HEY you can have it, because their lawyers aren't listening." 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established rights in the MUUMI trademark duly registered in the European Union (Annex 3 to the Complaint).
In this case, the addition of the word "mails" does not avoid a likelihood of confusion considering that, as past URDPR panels have already indicated, such term might be understood by Internet users as a mean to locate or correspondence with the Complainant.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Panel notes that the Respondent's communications with the Center clearly indicates that it makes no claim whatsoever to any rights or legitimate interests in the disputed domain name.
As decided in past similar UDRP cases where "an exchange of e-mails between the Center and the Respondent subsequent to the initiation of the dispute and at a time when the Respondent had been served with the Complaint" in which "exchange of e-mails the Respondent makes no claim whatsoever to rights or legitimate interests in the domain name", the Panel may establish "on the balance of probabilities that the domain name in issue can only refer to the Complainant's […] trademark and that the Respondent has no rights or legitimate interests in the domain name in issue" (Produits Berger v. Matthew Shewchuk,WIPO Case No. D2004-1083).
Furthermore, the use of the disputed domain name in connection with emails written in Finnish is a further indication that the Respondent targeted the Complainant's clientele or fans located in that country where its characters are notoriously known.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met. C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name given that:
a) the Complainant's trademark is registered and is well known in Finland where the Respondent directed its actions based on the disputed domain name;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and, instead has used the disputed domain name to send misleading emails for its own personal gain.
c) the Respondent has taken active steps to conceal his true identity, by choosing to operate under a privacy shield/privacy protection service;
d) the Respondent's address made available at the WhoIs database was false or incomplete;
e) the use made by Respondent of the disputed domain name indicates that it targeted the Finnish market where the Complainant's characters are notoriously known.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. 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, be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: April 14, 2016
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