The Complainant is Mothercare UK Limited of Watford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Stobbs IP Limited, United Kingdom.
The Respondent is Reza Arabi of Kish, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2017.
The Center appointed William A. Van Caenegem 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 has registered its MOTHERCARE trademark and its M DOLLY figurative trademark in many jurisdictions around the world, including in the Middle East, to which the schedules attached to the Complaint attest. In this context, the Complainant has the trademark MOTHERCARE in the United Kingdom, Registration No. 855429, registered on October 18, 1963 in class 20. The Complainant further has trademark registrations for various forms of combined MOTHERCARE and M DOLLY figurative marks in the Islamic Republic of Iran: Registration No. 35690 for MOTHERCARE & M (Device), first registered January 17, 1971 in class 25; Registration No. 45809 for MOTHERCARE & M (Device), first registered September 20, 1976 in class 3,5,10,12,24,28; and Registration No. 50423, first registered on September 25, 1978 in class 35 and 39 for MOTHERCARE & Dolly (Device).
The disputed domain name was registered on August 1, 2012. The disputed domain name resolves to a website offering the Complainant’s and / or similar products for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark MOTHERCARE. An Internet user seeking out the Complainant in Kish, Islamic Republic of Iran, would come across the disputed domain name and mistakenly assume that it is connected with the Complainant. The disputed domain name is entirely descriptive, according to the Complainant, as it merely describes a geographical location.
The Complainant asserts that its trademark MOTHERCARE is incorporated in its entirety into the disputed domain name, which reinforces the impression that it resolves to a specific “Mothercare”-site for consumers on Kish Island. The Complainant contends that this impression is further reinforced by the products available on the website, highly similar to goods sold on the Complainant’s website.
The Complainant contends that, in terms of paragraph 4(b)(ii) of the UDRP, it is clear that registration of the disputed domain name would prevent it from using its brand in similar form within a domain name. It is apparent, according to the Complainant that the Respondent was acting in bad faith by registering a domain name which contains a term identical to its registered trademark MOTHERCARE. Because the disputed domain name resolves to a website which flagrantly seeks to imitate that of the Complainant, it is clear that the Respondent registered the domain name with full knowledge of the “Mothercare”-business. The Complainant asserts that the website contains highly similar imagery in terms of the copyrights and trademarks belonging to the Complainant.
The Complainant also contends that, in accordance with paragraph 4(b)(i) of the UDRP, the Respondent will expect the Complainant to learn of his domain registration and offer to purchase the disputed domain
name for a sum in excess of his out of pocket expenses.
According to the Complainant, the Respondent is disrupting its business. Mothercare UK Limited is said to pride itself on high quality and safety standards across its product range. Since the products being sold through the website to which the disputed domain name resolves have not been authorised by the Complainant, they may not adhere to the high standards that consumers have come to expect and rely on. According to the Complainant, sales of low grade, low quality or unsafe products are liable to damage its reputation.
Further, as previously mentioned, the Complainant operates successful franchises throughout the world, including in the Middle East. The Complainant asserts that the Respondent’s activities jeopardise potential franchise opportunities in the Islamic Republic of Iran, preventing the latter from extending its business to that country.
According to the Complainant, the Respondent has made flagrant use of the Complainant’s trademarks on its website and has directly copied the entire look and feel of the Complainant’s website in order to lure Internet users for his own financial gain and to the detriment of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s MOTHERCARE trademark. However, it incorporates the mark in its entirety, preceded by the term “Kish”, which is a geographical term and therefore highly descriptive in itself. The addition of this term does nothing to detract from the impression of a legitimate connection between the disputed domain name and the Complainant; it rather has the opposite effect.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s MOTHERCARE trademark. B. Rights or Legitimate Interests
The Respondent established a website by reference to the disputed domain name, within which the MOTHERCARE mark and the M DOLLY trademark appear prominently. The website seems to offer for sale similar baby goods as the website and retail outlets of the Complainant. Some of the goods offered are “Mothercare”- branded goods, and others are goods that are or might well be offered on the Complainant’s genuine website or in its stores. Registering a domain name incorporating the MOTHERCARE trademark, then offering for sale “Mothercare”-products and displaying the MOTHERCARE trademark, including the highly distinctive M DOLLY mark, on the website concerned without accurately disclosing the registrant’s relationship to the trademark holder, amounts to a false suggestion of an affiliation, authorization or franchise relationship between the Complainant and the website operator.
There is no such legitimate relationship as the marks have been incorporated in the disputed domain name and the relevant website without the authority of the Complainant. Establishing and operating a website in this manner does not give rise to rights or legitimate interests. Rather it amounts to an attempt to derive commercial gain from riding on the coat tails of the Complainant’s goodwill. That commercial gain will come in the form of deceptive reliance on whatever goodwill the Complainant possesses amongst relevant Internet users, or by triggering an offer from the Complainant to acquire the disputed domain name for a profit.
The terms “mother” and “care” might have fairly descriptive associations in the context of baby wares. However, the Respondent has gone far beyond being able to claim any rights to the use of the relevant terms in a descriptive manner.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It is clear to this Panel that the Respondent is and was fully aware of the existence of the Complainant’s trademark rights at the time of registration of the disputed domain name. In any case, the Complainant has a number of trademark registrations in the Islamic Republic of Iran, amounting to constructive notice of the Complainant’s relevant rights in that country. The manner in which the relevant website is established, the use of both the word and the device mark (M DOLLY) on that website, the adoption of the Complainant’s mark in its entirety without any disassociating element, taken all together amounts to strong indications of bad faith. In any case, the Complainant’s reputation in this relatively narrow field of baby wares is global, including the Middle East.
In terms of use in bad faith, the same factors are at play. Incorporating another party’s well established trademarks in a website without any authority and at the same time imitating the presentation and design of the Complainant’s genuine website and offering the Complainant’s or similar products for sale in the above described manner, amounts to bad faith use.
Again, the Respondent has gone beyond reliance on the terms mother and care for their descriptive connotations alone. In any case, the Complainant has established a strong reputation and distinctiveness by use in commerce over many years of its MOTHERCARE marks.
Therefore the Panel holds 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.
William A. Van Caenegem
Sole Panelist
Date: February 17, 2017
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