The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SILKA Law AB, Sweden.
The Respondent is IT Manager, Jack Zhang of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2016. On October 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 19, 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 Complainant filed an amendment to the Complaint on October 29, 2016.
The Center verified that the Complaint together with the amendment to 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 31, 2016. In accordance with the Rules, paragraph 5, the due date for filing the Response was November 20, 2016. The Response was filed with the Center on November 16, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 12, 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 was founded in 2002 in the United Kingdom. It manufactures and sells footwear and accessories both in physical and online stores, worldwide. The Complainant is the owner of various trade mark registrations, including the MOU device mark registered in China in April 2009 and July 2009 (“MOU Trade Marks”).
The Respondent acquired the Disputed Domain Name on April 11, 2011. At the time of filing the Complaint, the Disputed Domain Name resolved to what appeared to be a blog site. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant was established in 2002, and sells footwear and accessories all over the world, including in China. The Complainant owns the MOU Trade Marks, and several domain names incorporating the words “mou” and/or “boots” (including , , , , etc.).
(b) The Disputed Domain Name is confusingly similar to the Complainant’s MOU Trade Marks, as “mou” is the distinctive and dominant element of the Disputed Domain Name. The word “boots”, which appears in the Disputed Domain Name, is a generic word, and is insufficient to differentiate the Disputed Domain Name from the Complainant’s MOU Trade Marks.
(c) The Respondent is not commonly known by the Disputed Domain Name. There is no evidence that the Respondent has used, or has made any preparations to use, the Disputed Domain Name for a bona fide offering of goods or services. The Disputed Domain Name previously resolved to a pay-per-click website, but subsequently resolved to a blog after the Complainant contacted the Respondent offering to purchase the Disputed Domain Name for USD 100. The Complainant received a response to its offer, stating that the price needed to be in the range of USD 1,000.
(d) The pay-per-click website to which the Disputed Domain Name used to resolve, contained links to advertisements related to the Complainant’s MOU Trade Mark and to competitors of the Complainant. The blog to which the Disputed Domain Name currently resolves, claims to provide website and digital marketing services, but at the same time contains fairy tales written by Hans Christian Andersen.
(e) The Complainant’s Chinese registrations for the MOU Trade Marks predate the registration of the Disputed Domain Name by the Respondent, who is based in China. The Complainant has been using the MOU Trade Marks since 2002, and its products are distributed in more than 40 countries, including China. It is unlikely that the Respondent was not aware of the Complainant and its products and brand at the time he registered the Disputed Domain Name. The Respondent only registered the Disputed Domain Name with the Complainant’s MOU Trade Mark in mind. The current listing of the Disputed Domain Name for sale on “” even categorizes the Disputed Domain Name in the “fashion industry”.
(f) The current use of the Disputed Domain Name violates the Complainant’s rights. The blog is likely to be merely a temporary website to try and circumvent the current UDRP proceedings, as prior to being contacted by the Complainant, the Respondent had always used the Disputed Domain Name to resolve to a pay-per-click website.
(g) Had the Respondent conducted a simply search on Google or Baidu, he would have quickly learned about the Complainant and its MOU Trade Marks. The Respondent intentionally chose the Disputed Domain Name based on the Complainant’s MOU Trade Marks, in order to generate more traffic to its pay-per-click website. B. Respondent
The Respondent alleges that it acquired the Disputed Domain Name on April 11, 2011 for USD 80, in an open auction. The Respondent intended to use the Disputed Domain Name to build an e-commerce platform to sell boots and hats. However, as the Respondent never received expected venture funds, it suspended its business plans.
The Respondent claims that the Complainant approached the Respondent on October 3, 2016, offering to purchase the Disputed Domain Name for USD 100. The Respondent declined, and instead offered to sell the Disputed Domain Name to the Complainant for USD 1,000. The Respondent asserts that its offer of USD 1,000 was reasonable, and that the Complainant’s offer of USD 100 was insufficient to cover the Respondent’s out-of-pocket expenses, since the Disputed Domain Name was acquired in 2011 and there were 5 years of management costs.
The Respondent believes that the Complainant filed a Complaint under the UDRP after failing his purchase negotiations and therefore requests a finding of reverse domain name hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MOU Trade Marks based on its trade mark registrations in various jurisdictions, including in China.
The Disputed Domain Name () incorporates the dominant and distinctive part of the Complainant’s MOU Trade Marks, i.e. “mou”. The word “boots” is a generic word, and it is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See Oakley, Inc. v. Joel Wong/BlueH - INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that “mou” is the distinctive component of the Disputed Domain Name and the addition of “boots” does little to distinguish it from the Complainant’s trade mark.
It is also well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the MOU Trade Marks before the Disputed Domain Name was registered and has never authorised the Respondent to use its MOU Trade Marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, 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 Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent claims that he registered the Disputed Domain Name for the purposes of using it as an online platform to sell hats and boots. However, no evidence has been provided to show any demonstrable preparations to use the Disputed Domain Name for such purpose. Even if such evidence were provided, it cannot be said that such purpose would be bona fide as it would be in direct competition with the business of the Complainant.
Further, the Disputed Domain Name used to resolve to parking pages that contained sponsored links. As stated in paragraph 2.6 of the WIPO Overview, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”…or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” In this case, the Panel finds that the Respondent’s use of the Disputed Domain Name to resolve to a parking page does not amount to any rights or legitimate interests, as the Respondent registered the Disputed Domain Name to take advantage of the Complainant’s MOU Trade Marks for commercial gain, and included sponsored links to the Complainant’s competitors.
With regard to the use of the Disputed Domain Name to resolve to a blog, the Panel finds that this was a transparent attempt by the Respondent to try and circumvent the Policy. The Disputed Domain Name only started to resolve to the blog, after the Respondent became aware of the potential dispute, i.e. after the Complainant contacted the Respondent offering to purchase the Disputed Domain Name for USD 100. Under these circumstances, such use by the Respondent cannot confer any rights or legitimate interests.
Accordingly, the Panel finds paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
(a) The Complainant has been using the MOU Trade Marks for several years, prior to the registration of the Disputed Domain Name, and is well-known worldwide, including China. Further, the Respondent’s intended use of the Disputed Domain Name, as alleged by him, was to sell hats and boots online. The foregoing serves as evidence that the Respondent must have been aware of the Complainant at the time he registered the Disputed Domain Name, particularly since his proposed business would have been in direct competition with that of the Complainant. This cannot be mere coincidence, especially since the dominant part of the Disputed Domain Name (“mou”), is identical to the Complainant’s MOU Trade Mark.
(b) The Disputed Domain Name used to resolve to a parking page, which included sponsored links to competitors of the Complainant. In the case at hand, this is evidence of bad faith use.
(c) The Disputed Domain Name is currently advertised as being for sale. When the Complainant contacted the Respondent, the Respondent offered to sell the Disputed Domain Name for USD 1,000, which is more than the reasonable out-of-pocket expenses in relation to the acquisition of the Disputed Domain Name.
In light of the above, the Panel concludes that the Disputed Domain Name was registered and is being used by the Respondent with the intent of selling the Disputed Domain Name for profit and/or to intentionally attempt to attract Internet users to the resulting website for commercial gain, by creating a likelihood of confusion with the Complainant’s MOU Trade Marks as described under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Panel finds paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: December 16, 2016
Full & Egal Universal Law Academy