The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by SILKA Law AB, Sweden.
The Respondents are Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia; Elizabeth Davis of Hong Kong, China; Samantha Rampin of Amsterdam, Netherlands; and P de Ree of Baltimore, Maryland, United States of America (“USA”). 2. The Domain Names and Registrar
The disputed domain names , , , and 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 January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 31, 2017, 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 the Complainant on February 2, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amendment to the Complaint on February 3, 2017. On February 6, 2017, the Complainant filed the second amendment to the Complaint upon the Center’s request for clarification.
The Center verified that the Complaint together with the first and second 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 Respondents of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 2, 2017.
The Center appointed Alexandre Nappey as the sole panelist in this matter on March 8, 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 MOU Limited is an UK company founded in 2002 providing footwear and accessories such as handbags, wallets, hats and gloves for men, women, and children.
The Complainant holds various trademarks, among which are 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 Complainant’s brand MOU is well-regarded in the fashion industry and has many celebrity customers and widespread press coverage. The Complainant is selling products in 40 countries worldwide and has a significant presence online under and various accounts on social media (Facebook, Twitter, Instagram, Pinterest).
According to the information provided by the Registrar for the five disputed domain names:
- The registrant of the disputed domain name is Elizabeth Davis, an individual located in Hong Kong.
- The registrant of the disputed domain name is Samantha Rampin, an individual located in Amsterdam, Netherlands.
- The registrant of the disputed domain names , , and is P de Ree, an individual located in Baltimore, Maryland, USA.
The disputed domain name was registered on December 1, 2016; the disputed domain name was registered on December 23, 2016; and the disputed domain names , and were registered on December 27, 2016.
The disputed domain names and resolve to an active website offering for sale “MOU” products.
The disputed domain names , , and resolve to a parking page containing various commercial links. 5. Parties’ Contentions A. Complainant
(1) The Complainant first alleges that the disputed domain names , , , , and are confusingly similar to its trademark MOU.
The disputed domain names incorporate the Complainant’s earlier registered trademark MOU in its entirety.
The disputed domain names use the Complainant’s trademark, alongside the descriptive words “shop”, “online”, “sneakers”, “uk” and “store”.
The addition of the generic words is not sufficient to distinguish or differentiate the disputed domain names from the Complainant’s trademark MOU.
The mere addition of the descriptive terms to the MOU trademark do not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain names.
(2) Secondly, the Complainant alleges that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not found that the Respondents are commonly known by any of the disputed domain names. The Respondents have not by virtue of the content of the respective websites, nor by their use of the disputed domain names, established that they will be used in connection with a bona fide offering of goods or services.
There is no evidence that the Respondents have a history of using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods and services.
(3) Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith.
The Complainant alleges that the Respondents use a privacy shield and although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith; a motive for using a privacy service has been to increase its difficulty of identifying the Respondents, which does not reflect good faith.
The Complainant’s trademarks predate the registration of the disputed domain names and MOU is a known trademark in the fashion industry.
The Respondents intentionally chose the disputed domain names based on the MOU trademark in order to generate more traffic to its own business. Nowhere on their websites do the Respondents disclaim the non-existing relationship between themselves and the Complainant. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the lack of a formal response from the Respondents, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following: A. Preliminary Matter: Consolidation of the 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 present case, it is clear and indisputable that the disputed domain names , , and were registered by the same Respondent, namely P de Ree.
In addition, the Complainant states the following:
all disputed domain names were registered through the same registrar;
- the disputed domain names and resolve to websites that are identical to each other in content;
- the disputed domain names and share the same IP address (in Moscow, Russian Federation);
- the registrant of the disputed domain names , , and , P de Ree, has previously been involved in a UDRP proceeding involving the Complainant (see Mou Limited v. Privacy Protection Service INC d/b/a PrivacyP / Jason Cheyney / Jonathon / P de Ree,WIPO Case No. D2016-2071). At least one of the disputed domain names in that case resolved to content identical to the content to which the disputed domain names and resolve; and
- all of the Respondents registered domain names targeting the same trademark MOU.
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 all Respondents were given the opportunity to respond but did not file a response to the Complainant’s contentions or object to the 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. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in MOU, which predate the registration of the disputed domain names , , , , and .
The Panel finds that the disputed domain names are confusingly similar to the registered MOU trademark owned by the Complainant.
Indeed, the disputed domain names incorporate the entirety of the Complainant’s MOU trademark with the mere addition of:
- in the disputed domain name , the descriptive term “boots” which directly refers to the Complainant’s products and the expression “online” which directly refers to Internet sales;
- in the disputed domain name , the descriptive term “shop” which directly refers to the sales activity;
- in the disputed domain name the descriptive term “sneakers” which directly refers to the Complainant’s products;
- in the disputed domain name the descriptive term “store”;
- in the disputed domain name the two letters “uk”, the common abbreviation for “United Kingdom”, which directly refers to the Complainant’s main location.
The dominant part of the disputed domain names is the Complainant’s trademark MOU, and the addition of the above-listed terms does not avoid confusing similarity.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the respondent] has acquired no trademark 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 trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, the burden shifts to the respondent to demonstrate its rights or legitimate interests.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondents any use of its MOU trademark.
It appears from the circumstances and record that the Respondents do not own any rights to the trademark MOU and are not commonly known by the disputed domain names.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
As the Respondents have not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Since MOU is a well-known and distinctive trademark particularly in the fashion industry and there is no evidenced relationship between the Parties, it may be assumed that the Respondents were aware of the Complainant’s trademark at the time it registered the disputed domain names , , , and .
Moreover, the Complainant submitted printouts showing that the websites operated under:
- the disputed domain names and offer for sale products using the Complainant’s mark without any indication of its relationship to the Complainant.
- the disputed domain names , , and resolve to parking pages displaying sponsored links, some of which are related to or compete with the products sold by the Complainant.
The Panel accepts the Complainant’s evidence (which the Respondents have not challenged) that the Respondents have used the disputed domain names for the purpose of impersonating the Complainant’s websites and were intended to mislead Internet users into believing that they are dealing with the Complainant or its authorized suppliers.
In the circumstances, the Panel finds that, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their websites or of a product on their websites (paragraph 4(b)(iv) of the Policy).
The Panel also takes into account the inaccurate, incomplete or false WhoIs data, as additionally suggestive of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy is fulfilled. 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.
Alexandre Nappey
Sole Panelist
Date: March 22, 2017
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