The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by SILKA Law AB, Sweden.
The Respondent is Jenny Brown of Culver, California, United States of America (“United States”). 2. The Domain Name and Registrar
The 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 December 31, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2017, 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 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 January 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2017.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on February 3, 2017. 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 owner of several trademark registrations for MOU in several jurisdictions (Annex 4 to the Complaint), amongst which the United States trademark registration No. 3663689 in classes 18 and 25, registered on August 4, 2009.
The Complainant also owns a significant domain name portfolio, including , and through which the Complainant’s footwear, clothing and accessories are sold.
The disputed domain name was registered on July 15, 2016 and currently resolves to an active webpage in which various purported Mou products are being offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends to be a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children.
Founded in 2002, the Complainant claims to have developed a great amount of goodwill all over the world in the Mou brand, that is well regarded in the fashion industry and has many celebrity customers and widespread press coverage. The Complainant’s products are sold online via the website “www.” and through selected boutiques and high profile department stores across the world. As a result of the Complainant’s widespread and prolonged use of its trademark MOU, the Complainant contends that it has developed substantial reputation rights in addition to its registered trademark rights.
The Complainant argues that the disputed domain name is confusingly similar to the MOU marks because it contains the Complainant’s trademark MOU, as the distinctive and dominant element.
As to the addition of the terms “boots” and “online”, the Complainant contends that these generic English words do not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark, since the disputed domain name incorporates the Complainant’s trademark in its entirety.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons:
(i) the Respondent is not commonly known by the disputed domain name;
(ii) the Respondent is not, nor has ever been a licensee of the Complainant and has no connection or affiliation with the Complainant;
(iii) the disputed domain name is being used to advertise purported Mou products (without including, on the Complainant’s website, the non-existing relationship between itself and the Complainant) and to sell goods similar to those produced and sold by the Complainant, misdirecting Internet traffic to the infringing website; such a use cannot be considered a bona fide offering of goods or services; and
(iv) the Respondent’s use of the MOU mark, a famous and well-known mark, is clearly for the purpose to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking Mou branded products to the Respondent’s website for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s trademark; and, at the same time, tarnishing the Complainant’s trademark.
The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent’s bad faith registration is established by the fact that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. Indeed, the Complainant’s trademarks valid in the United States (where the Respondent is domiciled) predate the registration of the disputed domain name. Further, the Complainant had started the use of the Mou brand as early as in 2002 and is now distributed in more than 40 countries which includes the United States and China.
Furthermore, the fact that the Respondent did not reply to the Complainant’s cease and desist letter and to the subsequent reminder and did not try to defend its rights or interests in the registration of the disputed domain name, is also an indication of bad faith.
Moreover, the Complainant contends that the Respondent has engaged in a pattern of conduct in registering well-known trademarks as domain names and that it was recently involved in another UDRP proceeding (Annex 12 of the Complaint): also this fact has to be taken into consideration as an indication of bad faith.
Furthermore, the Respondent’s full knowledge of the Complainant’s rights can also be inferred by the fact that a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant’s trademark registrations and the Complainant’s use of said trademarks for numerous years.
The Complainant concludes that the Respondent intentionally chose the domain name confusingly similar to its MOU trademark in order to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MOU trademark, in which the Complainant has established rights through registrations and extensive use all over the world.
The disputed domain name incorporates the Complainant’s MOU trademark in its entirety; the only difference is the mere adjunction of the English words “boots” and “online”.
The addition of the above terms is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant’s trademark (besides the decisions cited by the Complainant see also America Online, Inc. v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987). Indeed, the Panel finds that the addition of the dictionary term “boots” that clearly relates to one of the Complainant’s main products, is likely to enhance confusion and to lead Internet users to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes that people considering the disputed domain name without awareness of its content may think that the disputed domain name is in some way connected and associated with the Complainant.
Finally, with regards to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A. v. Name Privacy,WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the disputed domain name and does not give any distinctiveness.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the trademark MOU in any other manner. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the Panel is of the opinion that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name, the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark, diverting Internet users to its website in which various purported Mou products and goods similar to those produced and sold by the Complainant are advertised and offered for sale.
Such use cannot be considered by any means as a “bona fide use”, as stated in various previous UDRP decisions in similar cases, and in particular in the following decision, where the panel stated:
“Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Respondent also contends that it has a legitimate interest in using the AMPHENOL mark because it purchases products from Complainant… It appears that Respondent used the Domain Name as a means of attracting Internet Users to its site where it sells cable assemblies comprised of parts from Complainant and from other companies… the mark is used as ‘bait’ to lead consumers to its own hybrid cable assemblies. Other cases have found that the use of a trademark as part of a domain name leading to a site selling other products was not bona fide. Similarly I believe that Respondent does not have a legitimate interest in using Complainant’s mark to lead customers to a site that sells its own hybrid cable assemblies.”
(Amphenol Corporation v. Applied Interconnect, Inc,WIPO Case No. D2001-0296, internal citations omitted).
Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s marks and name for its own profit, misleading Internet users to a commercial website by seeking to create an impression of association with the Complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067), it can be stated that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
In light of the evidence submitted by the Complainant, the Complainant’s registered MOU trademark predates the registration of the disputed domain name.
Moreover, the Complainant’s name and trademark are well-known throughout the world, at least in the field of the fashion industry and considering the widespread use and reputation of the Complainant’s trademark, in this Panel’s view the Respondent must have been aware of the Complainant’s existence when it registered the disputed domain name.
And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the MOU trademark in its entirety, with the mere addition of the dictionary terms “boots” and “online” that clearly relate to the Complainant’s business activity.
Furthermore, the website to which the disputed domain name resolves offers for sale several purported Mou products. In this Panel’s view the Respondent would not have advertised goods purporting to be Mou products, without having knowledge of the Complainant’s Mou trademark and without being aware of its reputation.
Moreover, the Respondent’s full knowledge of the Complainant’s rights can also be inferred by the fact that a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant’s trademark registrations.
As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395), the Panel believes that, given the circumstances of this case, the evidence of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No.D2007-1412; and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411).
Moreover, as referred to by the Complainant, the Respondent did not reply to the Complainant’s cease and desist letter sent on September 28, 2016 or to the subsequent reminder. In line with previous UDRP decisions, the Panel also finds that “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (besides the decisions cited by the Complainant see also Bayerische Motoren Werke AG v. This Domain is For Sale / Joshuathan Investments Inc,WIPO Case No. D2002-0787; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242).
Concerning the use of the disputed domain name, as already indicated above, the Complainant has submitted evidence that it resolves to a website, which advertises and offers for sale various purported Mou products and goods similar to those produced and sold by the Complainant.
The Panel is persuaded by the evidence of record that the Respondent is using the disputed domain name to attract Internet users for commercial gain by using the Complainant’s MOU trademark. Indeed, in the Panel’s opinion, the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s products and to obtain information about the Complainant’s activities, to its own website, by creating a likelihood of confusion with the Complainant’s trademark and business, as to, inter alia, the source of its website and obtaining revenues from the diverted traffic (see Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194; and Giorgio Armani S.p.A. v. Daulet Tussunbayev,WIPO Case No. D2011-2082).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name was registered and is 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 name be transferred to the Complainant.
Alessandra Ferreri
Sole Panelist
Date: February 17, 2017
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