Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SILKA Law AB, Sweden.
Respondent is Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Jason Cheyney of Macon, Georgia, United States of America (“United States”), / Jonathon of Fairfax, Virginia, United States of America / P de Ree of Baltimore, Maryland, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 13, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On October 14, 2016, Complainant sent a clarification adding the domain name to the present case. On October 17, 2016, Complainant asked to remove the Disputed Domain Name from the present case in order to add it to another pending WIPO UDRP case. On the same day, Complainant filed an amendment to the Complaint, requesting to consolidate the remaining Disputed Domain Names and add another domain name . However, Complainant subsequently requested to remove the latter domain name from the present case after registrar verification disclosing registrant and contact information for this domain name which differed from the named Respondent and contact information in the amendment to the Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. The Center received an email communication from a third-party on October 25, 2016. The Center received email communications from a third-party on October 31, 2016 and November 1, 2016 in Dutch. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on November 11, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 22, 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 a company founded in 2002 and incorporated in England and Wales, United Kingdom, and an international retailer of footwear. Complainant holds various trademarks, including the following:
- word mark MOU, registered with the United States Patent and Trademark Office (“USPTO”)on August 4, 2009 under no. 3663689 in classes 18 and 25;
- Figurative mark, registered with the United Kingdom Intellectual Property Office (“UKIPO”) on June 15, 2007 under no. Uk00002432785 in classes 3, 24 and 25;
- figurative mark , registered with WIPO on April 8, 2009 under no. 1001663 in classes 3 and 25.
The Disputed Domain Name was registered on May 14, 2016.
On August 19, 2016, Complainant sent a cease-and-desist letter to the Respondent. A reminder was sent on August 29, 2016. Complainant received no response.
The Disputed Domain Names , and were registered on August 25, 2016.
The Disputed Domain Name appears to be inactive, the Disputed Domain Name
resolves to a website offering Complainant’s products for sale. The Disputed Domain Names and resolve to error pages. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and that the Disputed Domain Names have been registered and are being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. C. Third-party communications
The Center received third-party communication on October 25, 2016, stating that the registrant’s contact data regarding the Disputed Domain Name had been fraudulently used by Respondent.
The Center received a further communication from another third party on October 31 and November 1, 2016, claiming that identity theft had occurred. 6. discussion and findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondents have 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.
The Panel will deal with each of these requirements in turn. A. Preliminary Matter: Consolidation of Respondents
A complaint may be brought against more than one respondent, where (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 (see Wikimedia Foundation, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc. / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2015-1978; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
In the instant case, it is clear that the Disputed Domain Names and were registered by the same Respondent, namely Jason Cheyney. In addition, Complainant states the following:
- all Disputed Domain Names were registered through the same registrar;
- the Disputed Domain Name is very similar to the Disputed Domain Name
. Moreover, both Respondents registered domain names including the same trademark MOU;
- the Disputed Domain Name was registered on the same day as the Disputed Domain Names and , and is almost identical to the latter;
- the Disputed Domain Name used to redirect to the Disputed Domain Name
.
Moreover, emails from third parties to the Center suggest that the names and home addresses from these third parties were fraudulently used. Such factors indicate that the Disputed Domain Names may be subject to the common control of a single entity or individual.
Finally, the Panel notes that Respondents were given the opportunity to respond but did not file a response to Complainant’s contentions or object to Complainant’s request for consolidation. In light of these circumstances and on balance, the Panel is prepared to consolidate noting that it would be equitable and procedurally efficient to proceed to a single decision in this case. B. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a MOU trademark in which it has rights. The trademark has been registered and used in various countries.
All Disputed Domain Names reproduce Complainant’s trademark MOU in its entirety, but add generic terms in relation to Complainant’s business such as “botas” (being the Spanish word for “boots”) or “outlet”. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially given the addition of the word “download” because users typically download complainant’s software.)
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondents have not apparently been commonly known by the Disputed Domain Names and that Respondents do not seem to have acquired trademark or service mark rights. Respondents’ use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondents existed.
Complainant provides evidence of the fact that the Disputed Domain Name used to refer to a website offering products bearing Complainant’s trademark. Complainant also states that the Disputed Domain Name used to redirect to the Disputed Domain Name , which is not disputed by Respondents. Currently, the Disputed Domain Name is inactive and the Disputed Domain Names and resolve to error pages. The Disputed Domain Name still resolves to a website offering Complainant’s products for a reduced price. Therefore, the Panel finds that Complainant has established that Respondents have no rights or legitimate interests in the Disputed Domain Names. D. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, Complainant provides evidence of the reputation of its MOU trademark and showed that at least one Disputed Domain Name used to refer to a website offering products for sale which bore Complainant’s trademark. Moreover, the Panel notes that all Disputed Domain Names include generic terms referring to Complainant’s business. Therefore, the Panel finds that Respondents must have had knowledge of Complainant’s rights in the MOU trademark at the moment they registered the Disputed Domain Names. Complainant has valid trademarks and offers services in the United States, where Respondents appear to be located. The Panel therefore finds that Respondents’ awareness of Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
As mentioned above, Complainant showed that at least one Disputed Domain Name used to refer to a website offering products for sale which bear Complainant’s trademark. This indicates that by using this Disputed Domain Name, Respondents intentionally attempted to attract, for commercial gain, Internet users to their website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product on the web site. In the Panel’s view, this is a first indication of bad faith use.
Respondents are currently not actively using the Disputed Domain Names , and , as they are either inactive or referring to error pages. The passive holding of the Disputed Domain Names may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Names by Respondents that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation (see Inter-IKEA v Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive holding of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that Complainant’s MOU trademark is sufficiently known, and the addition of generic terms referring to Complainant’s business makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by Respondents.
The Panel also notes that Respondents did not respond to Complainant’s cease-and-desist letters. Therefore, the Panel considers that the inference of bad faith is strengthened, especially combined with the fact that Respondents used a privacy service to hide their contact information (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). It further seems plausible that Respondents’ used third party names and contact information to register the Disputed Domain Names.
Finally, by failing to respond to the Complaint, Respondents did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions from this it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: December 8, 2016
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