The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stanmore IP Limited, United Kingdom.
The Respondent is Zeng Xiang of Beijing, China / Debra Nelis of Amsterdam, Netherlands / Privacy Protection Service Inc. d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Names and Registrars
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the "First Registrar").
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. (the "Second Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2016. On April 18, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 19, 2016, the Registrars transmitted by email to the Center its verification response. The Second Registrar confirmed that the Respondent Zeng Xiang is listed as the registrant and providing the contact details. The First Registrar disclosed registrant and contact information for the disputed domain names and which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 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 April 29, 2016.
On May 2, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 2, 2015, the Complainant confirmed its request that English be the language of the proceeding. 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 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 proceeding commenced on May 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on June 8, 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. A. Procedural Issue: Filing Supplemental Request to include a further Disputed Domain Name
On May 23, 2016, the Complainant filed a Supplemental Request to include a fifth domain name, , in its filed Complaint. This was after the Center had formally notified the Respondent of the Complaint, and the proceedings had commenced on May 10, 2016. The due date for the Respondent to file a Response was May 30, 2016.
Although neither the Policy nor the Rules explicitly provides for a Complaint to be amended after the commencement of proceeding to include additional domain names, the issue has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), paragraph 4.8.
Accordingly, it is for the Panel to determine, in its sole discretion, whether or not to accept the addition of the new domain name to the filed Complaint. This discretion to permit the addition of additional domain names after filing of the complaint is usually based upon one or more of the various provisions in Paragraph 10 of the Rules with respect to the general powers and obligations of the panel to "conduct the administrative proceeding in such manner as it considers appropriate", to ensure "that each Party is given a fair opportunity to present its case", to ensure "that the administrative proceeding takes place with due expedition", and to "decide a request by a Party to consolidate multiple domain name disputes". See Société Air France v. Kristin Hirsch, Hirsch Company,WIPO Case No. D2008-1213.
In the instant case, the Complainant claims it was alerted to the existence of the new domain name only on May 17, 2016, but that it believes the domain name which was registered on the same date as and , using the same Registrar, is subject to common control as the other four disputed domain names.
The UDRP procedure is designed to be quick and efficient. The Complainant's request to add an additional domain name was not made soon after the filing of the Complaint, but more than a month after the filing of the Complaint, and two weeks after the commencement of the proceedings. The Center would have to submit new registrar verifications and allow the Respondent 20 days to respond to the amendment to the Complaint. As the registrant named for the new domain name is different from the registrants named in the filed Complaint (amended on April 29, 2016), a separate issue concerning the consolidation of multiple respondents in a single complaint is raised. In the Panel's view, to allow the amendment at this late stage of the proceedings would firstly, cause duplication of work and cost to the Center without any provision for additional administrative fee, secondly, impose undue burden on the Panel, and thirdly unduly delay the expeditious and final resolution of the initial domain name dispute.
For the above reasons, the Panel rejects the Complainant's request to amend its Complaint to additionally include the domain name . It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires. B. Procedural Issue: Filing a Complaint against Multiple Respondents
According to the WhoIs information, the disputed domain names and are registered in the name of "Debra Nelis" while the disputed domain names and are registered in the name of "Zeng Xiang". The Complainant has submitted a request to have the Complaint filed against multiple respondents.
Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview 2.0, paragraph 4.16.
In order to file a single complaint against multiple respondents, the complaint must meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
In this regard, the Complainant cited the following as reasons to support its allegation that the four disputed domain names are subject to common control:
the websites to which the four disputed domain names resolved are identical or near identical to each other; and the four websites are also identical or near identical to two other websites previously connected with two domain names which were the subject of a recent UDRP decision favourable to the Complainant where the respondent is "Zhao Meng Chen".
The Panel finds that the Complainant has not furnished any concrete evidence to establish that the four disputed domain names, namely, , , and
Given the above reasons, the Panel rejects the Complainant's request to have the Complaint filed against multiple respondents. In the circumstances, with a view to expedite the administrative proceeding, the remainder of this decision shall, in the Panel's sole discretion, deal only with the disputed domain names and where the Respondent is "Zeng Xiang". It is, of course, open to the Complainant to bring a separate Complaint in respect of the domain names and if it so desires. 4. Factual Background
The Complainant is a company founded in 2002 and incorporated in England and Wales, and an international retailer of footwear and accessories such as bags, wallets, hats and gloves. The Complainant uses the name "mou" as a business identifier as well as a trade mark.
The Complainant owns trade mark registrations for the word and stylised version of MOU in a number of jurisdictions worldwide, the earliest dating from 2004, including the following: Table link
Country
Mark
Registration No.
Class No.
Registration Date
New Zealand
MOU
721724
18 & 25
November 19, 2004
China
MOU
3933443
25
April 28, 2007
International registration designating Australia, China, Switzerland, Norway, Russian Federation and Republic of Korea
1001663
3 & 25
April 8, 2009
Hong Kong, China
301308807
3, 18 & 25
March 20, 2009
European Union
8575607
3, 18 & 25
February 22, 2010
The Complainant also owns a number of domain name registrations incorporating the trade mark MOU, including the following: Table link
Domain Name
Registration Date
April 9, 2011
April 9, 2011
April 9, 2011
April 7, 2012
April 7, 2012
April 7, 2012
April 8, 2011
April 10, 2011
May 9, 2014
June 7, 2013
June 7, 2013
January 26, 2006
The Complainant offers its products for sale through its websites at "www." and "www.".
The disputed domain names and were registered on January 3, 2015 in the name of Zeng Xiang, long after the Complainant had used and registered its trade mark MOU (in 2004). As at the date of this decision, neither disputed domain name resolves to an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its trade mark MOU, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant claims that its brand is well-regarded in the fashion industry and that it enjoys a significant online presence and sales reaching customers around the world (including China and the United States of America ("USA")) via its websites at "www." and "www.". The Complainant further claims that it makes wholesale sales in various countries (including China and the USA).
The Complainant contends that as a result of its widespread and prolonged use, its trade mark MOU has developed a substantial reputation.
The Complainant furnished evidence of screenshots to show that the websites to which the disputed domain names resolved used the Complainant's trade marks to offer for sale identical goods to those offered by the Complainant, and claimed to be "authorized by MOU Inc.". The Complainant confirms that these websites are all unauthorised and that the Complainant has not licensed or permitted the Respondent to use the Complainant's trade marks or to register the disputed domain names. The Complainant alleges that the said websites reproduced entire wordings and paragraphs from the Complainant's websites and further alleges that the goods offered for sale by the Respondent may be counterfeit.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Preliminary Issue Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names and are registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the contents of the websites to which the disputed domain names resolved were entirely in English; and
(c) the disputed domain name comprises the Complainant's trade mark MOU and the English words "boots" and "sale" while the disputed domain name comprises the Complainant's trade mark MOU and the English word "it" respectively.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MOU name by virtue of its use and registration of the same as a trade mark.
The disputed domain names incorporate the Complainant's trade mark MOU in its entirety, as a dominant and distinctive element. The addition of the generic English words "boots sale" does not sufficiently differentiate the disputed domain name from the Complainant's trade mark. The letters "it" could refer to the country-code for Italy, or read as the English word "it" commonly used in reference to fashion items to refer to an item being popular or a "must-have" (e.g., the phrase "it bag"). Whichever the perception, the addition of "it" preceded by the hyphen "-" does not sufficiently differentiate the disputed domain name from the Complainant's trade mark. The addition of the generic Top‑Level Domain ("gTLD") ".com" does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974)
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the trade mark MOU or register the disputed domain names. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the name "mou".
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names.
As at the date of the decision, the disputed domain names do not resolve to any active website. The Respondent has failed to provide any evidence to establish its rights or legitimate interests in the disputed domain names.
According to evidence of screenshots submitted by the Complainant, previously the Respondent's websites used the trade mark MOU and purported to offer for sale goods identical to those offered by the Complainant. Significantly, under the "About Us" section, the Respondent's websites claimed to be "the official MOU online sale store" and the "official MOU online outlet store, authorized by MOU Inc.". As further discussed under the third element, the Panel considers the previous use of the disputed domain names intended to take advantage of the Complainant's fame for the Respondent's commercial gain or creating a likelihood of confusion with the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents' websites or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or location or of a product or service on the Respondent's websites or location.
The Panel notes that, as of the date of this decision, the disputed domain names do not resolve to any active websites. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview 2.0, paragraph 3.2.
The Panel is willing to accept that the Complainant and its trade mark MOU enjoys a certain level of online presence. Hence, a cursory Internet search would have disclosed the Complainant's trade mark. Thus a rebuttable presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain names. Registration of a domain name that incorporates a complainant's trade mark suggests opportunistic bad faith.
According to evidence of screenshots submitted by the Complainant, previously the Respondent's websites used the trade mark MOU and purported to offer for sale goods identical to those offered by the Complainant. Significantly, under the "About Us" section, the Respondent's websites claimed to be "the official MOU online sale store" and the "official MOU online outlet store, authorized by MOU Inc.".
The Panel is satisfied that the Respondent intended to take advantage of the fame of the Complainant's trade mark to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are also applicable to the present case.
The Panel also notes that efforts by the Center to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent has provided false contact details.
Taking into account all the circumstances, it is appropriate to conclude that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names, and be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: June 28, 2016
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