The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SILKA Law AB, Sweden.
The Respondents are Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China, Domain Admin Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America (“United States”) / Luo Yuandong, Lao Yuandong (劳远东) of Jiangmen, China, Song Li Hong of Haerbin, China, Sun YanQi (孙燕琪) of Hangzhou, China. 2. The Domain Names and Registrars
The Disputed Domain Names , are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina ; the Disputed Domain Name is registered with Xin Net Technology Corp.; the Disputed Domain Name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (collectively the “Registrars”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2018. On August 21, 2018, the Center transmitted by email to the Registrars a request for registrars’ verification in connection with the Disputed Domain Names. On August 21, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrants 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 the Complainant on August 26, 2018 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 28, 2018.
On August 26, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on August 28, 2018. The Respondents didn’t comment on the language of the proceeding.
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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 24, 2018.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 4, 2018. 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, founded in the United Kingdom in 2002, provides footwear and accessories such as bags, wallets, hats and gloves, for men, women and children. The Complainant’s products are sold globally via their website “” and are also available for sale via selected boutiques and high profile department stores across the world. In addition, it makes wholesale sales in 35 countries, including China.
“Mou” refers to both the name of the company and the trademark on which this Complaint is based. The MOU trademark was registered in the United Kingdom on June 15, 2007 (see United Kingdom trademark No. 2432785). The Complainant now has at least 30 MOU marks registered in jurisdictions including the United States, the European Union and China, and international registrations with WIPO. It is also the owner of among others, 12 domain names, containing the denomination “mou” combined with the words “boots” or “online”, all registered prior to the registration date of the Disputed Domain Names.
According to the WhoIs data and Registrars’ verification responses, the Disputed Domain Names and were registered on April 26, 2018 and May 30, 2018 respectively by the Respondent Song Li Hong located in Haerbin, China. The Disputed Domain Name was registered on February 6, 2017 by the Respondent Luo Yuandong, Lao Yuandong (劳远东) of Jiangmen, China. The Disputed Domain Name was registered on November 20, 2017 by the Respondent Sun YanQi (孙燕琪) of Hangzhou, China.
The Disputed Domain Name currently resolves to an inactive website.
According to the Complaint and relevant evidence, at the time of filing of the Complaint, the Disputed Domain Name redirected to the Disputed Domain Name , and the Disputed Domain Name had links to in the blog text. The Disputed Domain Name offered products bearing the Complainant’s mark for sale on its website without any indication of its relationship to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant requests that the Disputed Domain Names be transferred to the Complainant based on the following grounds:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has registered rights in the mark MOU by virtue of numerous trademark registrations and unregistered rights on account of its well-known status in the fashion industry, widespread press coverage, celebrity endorsements and global reach of sales via its website, selected boutiques and department stores. The Disputed Domain Names are confusingly similar to the mark MOU, because it contains “mou” as the distinctive and dominant element and “the incorporation of a trademark in its entirety is sufficient” to establish confusing similarity (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). The addition of the generic words such as “online”, “outlet” and “sale” do not eliminate the confusing similarity, especially when considering that the MOU trademark has been used by the Complainant in conjunction with the referenced term.
(ii) The Respondents have no rights or legitimate interests in respect of the domain names.
1) The Complainant has not found that the Respondents are commonly known by any of the Disputed Domain Names.
2) 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 use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondents offer for sale products bearing the Complainant’s mark without any indication of their relationship to the Complainant. On the contrary, users arriving at the Disputed Domain Names may believe that the websites may be affiliated or endorsed by the Complainant or that they belong to the Complainant. Such use cannot be considered a bona fide offering of goods under the Policy.
3) The Respondents are using the domain names for commercial gain and misleadingly diverting customers whilst at the same time tarnishing the trademark at issue. By offering for sale counterfeit goods to genuine customers of the Complainant, the Respondents are seeking to mislead customers, and by offering counterfeit goods will inevitably tarnish the Complainant’s MOU trademark at issue.
4) The Complainant has demonstrated its rights in its trademarks and asserts that the Respondents are not, nor have ever been, licensees of the Complainant and confirms that the Respondents’ websites have no affiliation with the Complainant.
(iii) The domain names were registered and are being used in bad faith.
a) Masked registration
The Respondents use a privacy shield service, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. It also suggests that a motive for using a domain privacy service in this instance has been to increase the difficulty for the Complainant of identifying the Respondents, which does not reflect good faith.
b) The domain names were registered and are being used in bad faith
MOU is a well-known trademark in the fashion industry and the Complainant’s rights in the mark predate the registration of the Disputed Domain Names. It is clear that the Respondents were aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registrations. The Respondents could have easily performed a search before registering the Disputed Domain Names and would have quickly learnt that the trademark MOU is owned by the Complainant and that the Complainant has been using its trademark for numerous of years.
For the Disputed Domain Name , which does not resolve to any active website, passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark constitutes use in bad faith. For the Disputed Domain Names , , and , which are related with a website offering products bearing the Complainant’s mark for sale without any indication of their relationship to the Complainant, it is clear that the Respondent's purpose is to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking MOU branded products to the Respondent’s websites for financial gain.
Thus, the domain names were registered and are being used in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues
6.1 Language of the Proceeding
The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondents of the Complaint in both Chinese and English, giving the Respondents opportunity to comment on the language of the proceeding. The Respondents did not reply to the Center’s request for comment on the Language of Proceedings. The Disputed Domain Names resolve to websites in English and links that redirect Internet users to other websites that contain English words. Lastly, if the Complainant were required to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would incur substantial expenses. Thus, the Panel concludes that the language of proceedings should be English.
6.2 Consolidation of Respondents
The Panel notes that the present Complaint has been filed against multiple Respondents and the Complainant has submitted a request for consolidation. On this subject, section 4.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ( “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 Complainant asks the Panel to consolidate the Respondents in the current proceeding in order to process an efficient and timely dispute. The Panel notes that the Complainant asserts that:
- All four Disputed Domain Names (except one – ) were linked to each other at the time of the submission of the Complaint.
- All four Disputed Domain Names were registered with Chinese registrars.
- All four Disputed Domain Names were initially registered via a masked registration.
- redirected to and had links to in the blog text at the time of the submission of the Complaint. and were registered by the same entity. The common domain name to which all domain names except for were linked was at the time of the submission of the Complaint.
- The “proposed” owner of does not seem to exist. As seen from other UDRP cases, the Complainant has provided evidence that shows the email “davidJenkinsyv@” is not valid and the emails bounce when contacting this email.
- All four Disputed Domain Names target the same trademark MOU.
The Panel finds that the Disputed Domain Names and redirect to a domain name instead of alleged by the Complainant. However, in addition to the assertion made in the Complaint, the Panel finds that:
- All four Disputed Domain Names are registered by Chinese individuals.
- The first listed Respondent for the Disputed Domain Name , Luo Yuandong was the Respondent in Mou Limited v. Xinnet Whois Privacy Pro Service / Domain Admin, Privacy Protect, LLC (PrivacyP) / Cai Jimmy (蔡少鹏) / Luo Yuandong, Lao Yuandong (劳远东)/ Samantha Rampin,WIPO Case No. D2017-1945; and did not at that time object to the consolidation.
- Three of the four Disputed Domain Names, besides one domain name which is inactive, have changed to redirect or link to the exact same page of following communications regarding the Disputed Domain Names. The Panel notes that the Disputed Domain Name , which was inactive, was registered by the same nominal Respondent (Song Li Hong) as another Disputed Domain Name.
- All four Disputed Domain Names are registered in close proximity.
- All four 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 the Complainant has provided sufficient evidence to establish that the Disputed Domain Names or corresponding websites are subject to common control. Moreover, none of the Respondents has indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. The Respondents have not otherwise contested the request for consolidation. In consideration of these circumstances, the Panel considers that it is procedurally efficient to allow the Complainant to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has rights in the MOU trademark. The MOU marks have been registered in the United Kingdom since 2007 and internationally (with international registration covering China) since 2009. Use and registration of the MOU mark by the Complainant precedes the Respondents’ registration of the Disputed Domain Names for numerous years. Previous cases have found that the Complainant’s mark is internationally well-known (Mou Limited v. Xinnet Whois Privacy Pro Service / Domain Admin, Privacy Protect, LLC (PrivacyP) / Cai Jimmy (蔡少鹏) / Luo Yuandong, Lao Yuandong (劳远东)/ Samantha Rampin,WIPO Case No. D2017-1945; Mou Limited v. Sun Yanqi,WIPO Case No. D2018-0989).
All Disputed Domain Names , , , and comprise the MOU mark in its entirety. The Disputed Domain Names only differ from the Complainant’s trademarks by the suffix “boots”, “stivali”, “outlet”, “sale”, “online”, and “-” or their combinations respectively, and the Top-Level Domain (“TLD”) suffix “.com” to the MOU marks. This does not eliminate the identity or at least the confusing similarity between the Complainant’s registered trademarks and the Disputed Domain Names. In relation to the TLD 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 therefore finds that the Disputed Domain Names are confusingly similar to the Complainant’s MOU trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Complainant has established that it is the owner of the MOU trademark and confirmed that it has no connection or affiliation with the Respondents. The Respondents are not authorized dealers of MOU-branded products or services but are rather offering competing products for sale on the websites. It appears that the Disputed Domain Names are unrelated to the Respondents’ names and there is no evidence in the record that the Disputed Domain Names have any connection with the Respondents’ names or the Respondents are otherwise commonly known by the Disputed Domain Names. The Panel finds that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names. The burden of production thus shifts to the Respondents to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondents did not submit any evidence or allegation to show that they have rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Names. Therefore, the Respondents have not claimed that they have rights or legitimate interests in the Disputed Domain Names.
Based on the following reasons the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names:
1) There has been no evidence adduced to show that the Respondents are using the Disputed Domain Names in connection with a bona fide offering of goods or services. The 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 the Complainant has licensed or otherwise permitted the Respondents to use the MOU marks or to apply for or use any domain name incorporating the MOU mark and the Respondents have, through the use of a confusingly similar domain names and their webpages contents (particularly the websites resolved by , and ), created a likelihood of confusion with the MOU marks. The Disputed Domain Name is currently inactive. Apparently the websites resolved by , and imply that they are the official websites of the Complainant, potential partners and end users are led to believe that the websites at the Disputed Domain Names are either the Complainant’s sites or the sites of an official authorized partner of the Complainant, which they are not;
2) There has been no evidence adduced to show that the Respondents have been commonly known by the Disputed Domain Names. There has been no evidence adduced to show that the Respondents have any registered trademark rights with respect to the Disputed Domain Names.
3) There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names. By contrast, according to the information provided by the Complainant, the Respondents were in actuality advertising, offering and selling purported MOU products at the websites resolved by , and without any indication of their relationship to the Complainant.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Panel finds that the Complainant has a widespread reputation in the MOU marks with regard to its products and services and MOU is a known trademark in the fashion industry. The Complainant has rights in the MOU marks since 2007 in the United Kingdom and 2009 internationally. It is not conceivable that the Respondents would not have been aware of the Complainant’s trademark rights at the time of the registration of the Disputed Domain Names (in 2017) particularly given that the Respondents have used the Complainant’s marks on the websites to which the Disputed Domain Names resolve. In addition, nowhere do the Respondents disclaim on its website the non-existing relationship between themselves and the Complainant.
Thus, the Panel concludes that the Disputed Domain Names were registered in bad faith.
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 the Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites. In other words, the Respondents have, through the use of a confusingly similar domain names and webpage contents, created a likelihood of confusion with the MOU marks.
The Disputed Domain Names incorporate the entirety of the Complainant’s trademark MOU plus the descriptive terms “boots” and “stivali” which refer to goods that the Complainant sells. This immediately creates an impression of affiliation with the Complainant. Furthermore, prior to notice of the dispute, on the evidence before the Panel, the Disputed Domain Names resolved or redirected to a website depicting the Complainant’s mark in conjunction with what appears to be an online shopping page with the tabs “women”, “eskimo boots”, “children” and “new products”. The words “shop now” and “up to 50% off” also appear. The overall effect is that of an official MOU website. By creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, the Respondents intended to divert customers of the Complainant to its website for commercial gain. Potential partners and end users are led to believe that the websites at the Disputed Domain Names are either the Complainant’s site or sites of official authorized partner(s) of the Complainant, which they are not.
The Complainant has provided evidence to show that by using the confusingly similar Disputed Domain Names, the Respondents have “intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other online location”. The Panel therefore concludes that the Disputed Domain Names are being used by the Respondents in bad faith.
The Disputed Domain Name is inactive. In terms of inactive domain name, “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, the Complainant’s MOU marks are widely known. Taking into account all the circumstances of this case, the Panel concludes that inactive use of the Disputed Domain Name by the Respondent is in bad faith also.
Furthermore, the Respondents have previously been involved in UDRP cases respectively where they registered domain names incorporating the Complainant’s trademark (Mou Limited v. Xinnet Whois Privacy Pro Service / Domain Admin, Privacy Protect, LLC (PrivacyP) / Cai Jimmy (蔡少鹏) / Luo Yuandong, Lao Yuandong (劳远东)/ Samantha Rampin,WIPO Case No. D2017-1945; Mou Limited v. Song Lihong,WIPO Case No. D2018-0988; Mou Limited v. Sun Yanqi,WIPO Case No. D2018-0989). The previous panels held that the Respondents made multiple registrations in bad faith.
In summary, the Respondents, by choosing to register and use domain names which are confusingly similar to the Complainant’s trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondents, the choice of the Disputed Domain Names and the conduct of the Respondents 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, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: October 18, 2018
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