Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SILKA Law AB, Sweden.
Respondents are Xinnet Whois Privacy Pro Service of Beijing, China / Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America ("United States") / Cai Jimmy (蔡少鹏) of Xiamen, Fujian, China / Luo Yuandong, Lao Yuandong (劳远东) of Jiangmen, Guangdong, China / Samantha Rampin of Amsterdam, Netherlands. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with Xin Net Technology Corp.
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (together, the "Registrar"). 3. Procedural History
Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 7, 18 and 20, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on October 20, 2017 providing the registrants and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On October 22, 2017, Complainant submitted a request of consolidation of Respondents and a request that English be the language of the proceeding. In response to the request of amendment by the Center, Complainant filed an amended Complaint in English on October 25, 2017. Respondent made no submission regarding the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint in English and Chinese, and the proceedings commenced on October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on November 17, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on December 6, 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 A. Complainant
Complainant, Mou Limited, is a company incorporated in London, United Kingdom. Complainant is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. Founded in 2002, it has grown significantly in size since then, being stocked in boutiques and department stores worldwide as well as having a significant online presence and sales via Complainant's website . The company's brand is well-regarded in the fashion industry and has many celebrity customers and widespread press coverage.
Complainant has exclusive rights in the MOU marks. Complainant is the exclusive owner of numerous MOU trademarks worldwide, including the United Kingdom trademark registered since June 15, 2007 (the United Kingdom Trademark registration number 2432785), the European Union ("EU") trademark registered since December 11, 2009 (the EU registration number 8164204), and International trademark (covering China) registered since April 8, 2009 (the International trademark registration number 1001663) (Annex 4 to the Complaint). Complainant also owns and operates domain names, which contain MOU mark in its entirety, such as (registered on January 26, 2006); (registered on April 11, 2011); and (registered on June 7, 2016). B. Respondents
Respondents are Xinnet WhoIs Privacy Pro Service of Beijing China / Domain Admin, Privacy Protect, LLC (PrivacyP) incorporated in Burlington, Massachusetts, United States / Cai Jimmy (蔡少鹏), an individual residing in Xiamen, Fujian, China / Luo Yuandong, Lao Yuandong (劳远东), an individual residing in Jiangmen, Guangdong, China / Samantha Rampin, an individual residing in Amsterdam, Netherlands.
The disputed domain names , , , and were registered with Xin Net Technology Corp on August 31, 2017, August 24, 2017, February 6, 2017, and September 1, 2017 respectively. The disputed domain name was registered with PDR Ltd. d/b/a PublicDomainR on August 3, 2017.
The disputed domain names , and currently resolve to websites selling products under Complainant's trademark and indicate that the websites are the official website of Complainant. The disputed domain name and currently resolve to inactive websites. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names , , , , and are confusingly similar to Complainant's MOU trademarks. The disputed domain names include MOU mark in its entirety. The addition of the generic terms "boot", "eskimo", "outlet", "sale", and "-" at the end of the disputed domain names as well as the generic Top-Level Domain ("gTLD") ".com" is not sufficient to eliminate the confusing of similarity.
Complainant contends that Respondents have no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names be transferred to it. B. Respondents
Respondents did not formally reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) It is likely to be the same Respondent as in previous disputes and Respondent has never bothered to respond to any previous UDRP disputes;
b) In the current case, the content of the active websites are also in English and the domain name includes latin script words such as "outlet" and "boots" which further strengthens that Respondents is familiar with the English language;
c) The proceeding will likely be put through unnecessary trouble and delay if Chinese were made the language of the proceeding; and
d) There would be no discernible benefit to the parties or the proceeding in the circumstances may be gained by maintaining the default language of the proceeding.
Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding before October 25, 2017.
Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:
"Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement."
(WIPO Overview 3.0, section 4.5.1; see also L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the United Kingdom, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names include Latin characters ("mou", "eskimo") and English words ("boot", "outlet", and "sale") and are registered in the gTLD space comprising of the Latin characters ".com" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, two of the Respondents normally appears to be Chinese individuals and are thus presumably not native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondents may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names include Latin characters "mou" and "eskimo", and English words "boot", "outlet", and "sale" respectively, rather than Chinese script; (b) the gTLD of the disputed domain names is ".com" is in Latin characters; (c) the disputed domain names , and currently resolve to websites which are the sites in English-language; (d) the Center has notified Respondents of the proceeding in both Chinese and English; (e) the Center informed Respondents that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantial Issues
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Preliminary Issue - Consolidation of Respondents
The Panel notes that the present Complaint has been filed against multiple Respondents and Complainant has submitted a request for consolidation. On this subject, section 4.11 of the WIPO Overview 3.0 provides inter alia as follows:
"The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint".
In relation to "complaint consolidated against multiple respondents", section 4.11.2 of the WIPO Overview 3.0 further provides:
"Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)."
The Panel is satisfied that Complainant has rights in the MOU mark as set out in the Factual Background section above. Complainant asks the Panel to consolidate Respondents in the current proceeding in order to process an efficient and timely dispute. The Panel notes that Complainant asserts that:
- All five disputed domain names (besides one – ) are registered via the same Registrar.
- All five (besides one ) are registered to a Chinese individual.
- The first listed Respondent for the disputed domain names and , Luo Yuandong was serving as Respondent in Mou Limited v. luo yuandong, laoyuandong / Xinnet Whois Privacy Pro Service, Debra Nelis / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2017-0648; and Respondents at that time didn't object to the consolidation.
- All five disputed domain names were initially registered via a masked registration.
- All five disputed domain names, besides one domain name which was inactive at the time of the submission of the Complaint, link to the exact same page (see Annex 10 of the Complaint). The Panel notes that the disputed domain name , which was inactive, was registered by the same nominal Respondent (Luo Yuandong) as another disputed domain name.
- All five disputed domain names were registered in close proximity.
- All five disputed domain names are similar in the URL string incorporating the trademark MOU and one or two generic words related to the Complainant.
The Panel finds that Complainant has provided sufficient evidences to establish that the disputed domain names or corresponding websites are subject to common control. Moreover, any of the Respondents has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. Respondents have not otherwise contested the request for consolidation. In all of these circumstances, the Panel considers that it is procedurally efficient to allow Complainant to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. B. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the MOU marks acquired through registration. The MOU marks have been registered in the United Kingdom since 2007 and internationally (with international registration covering China) since 2009. All disputed domain names , , , , and comprise the MOU mark in its entirety. The disputed domain names only differ from Complainant's trademarks by the suffix "boot", "eskimo", "outlet", "sale", and "-" or their combinations respectively, and the gTLD suffix ".com" to the MOU marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain names. By contrast, it may increase the confusing similarity because "boots" and "eskimo boots" are featured products of Complainant. Internet users may believe these websites are online "outlet" for selling "eskimo boots", which are authorized by Complainant and targeting consumers on the Internet. In relation to the gTLD suffix, WIPO Overview 3.0 further states:
"The applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, section 1.11).
Thus, the Panel finds that disregarding the suffix "boot", "eskimo", "outlet", "sale", and "-" or their combinations as well as the gTLD suffix ".com", disputed domain names are identical to the MOU marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain names:
(i) before any notice to Respondents of the dispute, the use by Respondents 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) Respondents have been commonly known by the disputed domain names, even if Respondents has acquired no trademark or service mark rights; or
(iii) Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
According to the Complaint, Complainant is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. Founded in 2002, it has grown significantly in size since then, being stocked in boutiques and department stores worldwide as well as having a significant online presence and sales via Complainant's website . Complainant has rights in the MOU marks since 2007 in the United Kingdom and 2009 internationally, which precede Respondents' registration of the disputed domain names (2017).
Moreover, Respondents are not authorized dealers of MOU-branded products or services but is rather offering competing products for sale on the websites. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby shifts the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term "mou" in the disputed domain names and in their business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the MOU marks or to apply for or use any domain name incorporating the MOU mark and Respondents have, through the use of a confusingly similar domain names and their webpage contents (particularly the websites resolved by , and ), created a likelihood of confusion with the MOU marks. The disputed domain name and are currently inactive. Noting also that apparently the websites resolved by , and , imply that they are the official websites of Complainant, potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant's sites or the sites of an official authorized partner of Complainant, which they are not;
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondent registered all disputed domain names in 2017, long after the MOU marks became internationally known. The disputed domain names are identical or confusingly similar to Complainant's MOU marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported MOU and other products at the websites resolved by , , and ).
The Panel finds that Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondents have registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondents have registered the disputed 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 Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents' website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the MOU marks with regard to its products and services. Complainant, founded in 2002, is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. The company's brand is well-regarded in the fashion industry and has many celebrity customers and widespread press coverage. Complainant has rights in the MOU marks since 2007 in the United Kingdom and 2009 internationally. It is not conceivable that Respondents would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain names (in 2017) particularly given that Respondents have used Complainant's marks on their websites.
Thus, the Panel concludes that the disputed domain names were registered in bad faith. b) Used in Bad Faith
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain names, Respondents have "intentionally attempted to attract, for commercial gain, Internet users to Respondents' websites or other online location". To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the MOU marks, the confusingly similar domain names , and , as well as the use of "mou" logo or the inappropriate affiliation statement, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondents' websites. In other words, Respondents have, through the use of a confusingly similar domain names and webpage contents, created a likelihood of confusion with the MOU marks. Noting also the implication on the websites that they are the official websites of Complainant, potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant's site or sites of official authorized partner(s) of Complainant, which they are not. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.
The disputed domain name and are inactive. In terms of inactive domain name, the WIPO Overview 3.0 provides: "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding." (Section 3.3, WIPO Overview 3.0).
The WIPO Overview 3.0 further states: "While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." As discussed above, Complainant's MOU marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that inactive use of the disputed domain name and by Respondent is in bad faith also.
In summary, Respondents, by choosing to register and use domain names which are confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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.
Yijun Tian
Sole Panelist
Dated: December 24, 2017
Full & Egal Universal Law Academy