The Complainant is Mou Limited of London, United Kingdom, represented by SILKA Law AB, Sweden.
The Respondents are Yu Tao of Fuyang, China; and Katie Abranam of Sullivan’s Island, South Carolina, United States of America (“United States”). 2. The Domain Names and Registrars
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. The disputed domain name is registered with NameSilo, LLC. Alibaba Cloud Computing (Beijing) Co., Ltd. and NameSilo, LLC are referred to below jointly and separately as the “Registrar”. 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2019. On March 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 5, 2019 and March 6, 2019, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 12, 2019.
On March 7, 2019, the Center sent 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 March 11, 2019. The Respondents did not 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”). On March 18, 2019, the Center sent an email in English and Chinese to the Parties noting that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request.
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 March 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 9, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 26, 2019. 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 a supplier of footwear and accessories for men, women and children that was founded in 2002. Its products are distributed in stores in more than 40 countries, including China, and online. The Complainant owns multiple trademark registrations in multiple jurisdictions, including International trademark registration number 1001663 for a figurative trademark (the “MOU logo”), registered on April 8, 2009, designating multiple jurisdictions, including China, and specifying goods in classes 3 and 25, including clothing and footwear; and United States trademark registration number 3663689 for MOU, registered on August 4, 2009, specifying goods in classes 18 and 25, including handbags and footwear. Those trademark registrations remain current. The Complainant has also registered multiple domain names that begin with the letters “mou”, including , which is used by its authorized licensee in connection with the official website that sells the Complainant’s range of products.
The Respondent Yu Tao is listed in the Registrar’s WhoIs database as the registrant of the disputed domain name and is ostensibly an individual resident in China. The Respondent Katie Abranam is listed in the Registrar’s WhoIs database as the registrant of the disputed domain name and is ostensibly an individual resident in the United States.
The disputed domain names were both registered on December 6, 2018. The disputed domain name resolves to an online store in English offering for sale what is alleged to be the Complainant’s footwear. Prices are quoted in EUROS. At the time of this proceeding, the disputed domain name does not resolve to any active website, rather, it is passively held. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s MOU trademark. The disputed domain names both contain that trademark as their distinctive and dominant element. The mere addition of descriptive terms to the MOU trademark does not eliminate the confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. In connection with the disputed domain name , the Respondent offers for sale products bearing the Complainant’s mark without any indication of its relationship to the Complainant. The Respondent is not, nor has ever been, a licensee of the Complainant. The Respondent’s websites have no affiliation with the Complainant. Such use cannot be considered a bona fide offering of goods under the Policy. The other disputed domain name resolves to a website that is currently inactive but can be re-activated at any time. This website had similar layout to the other website prior to drafting the Complaint but it has since been de-activated.
The disputed domain names were registered and are being used in bad faith. The Complainant’s trademark registrations pre-date the registrations of the disputed domain names. MOU is a known trademark in the fashion industry. It is clear that the Respondents were aware of the rights that the Complainant has in the trademark and the value of said trademark at the point of the registrations. Nowhere do the Respondents disclaim on their websites the non-existent relationship between themselves and the Complainant. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Procedural Issues A. Multiple Domain Name Registrants
The Complaint initiates cases in relation to two nominally different domain name registrants. The Respondent Yu Tao is named as the registrant of the disputed domain name while the Respondent Katie Abranam is named as the registrant of the disputed domain name . The Complainant requests consolidation of the cases against the disputed domain names registrants because the disputed domain names (i) were registered on the same date; (ii) are both registered via Chinese registrars; (iii) are used to share identical content; and (iv) target the same brand. The Respondents did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises many of the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that the disputed domain names were both registered on the same day, the disputed domain names are both in the form , and the registrants share the same email user ID (albeit with different email service providers). In these circumstances, the Panel is persuaded that the disputed domain name registrants are under common control or indeed the same person.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the cases regarding the two nominally different disputed domain name registrants (hereinafter “the Respondent”) in a single proceeding. B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese and the Registration Agreement for the disputed domain name is in English.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the content of the active websites is in English and the disputed domain names include Latin script words, all of which indicates that the Respondent is familiar with the English language while the proceeding would be put through unnecessary trouble and delay if Chinese were made the language of the proceeding. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English but the Registration Agreement for the disputed domain name is in Chinese. However, the Panel notes that the website to which that disputed domain name resolves is in English, which indicates that the Respondent is familiar with that language. This finding is confirmed by the fact that the Registration Agreement for the other disputed domain name is in English, as the Panel is persuaded that the disputed domain name registrants are under common control or indeed the same person (see Section 6.1.A above). Moreover, the Respondent has not indicated any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MOU trademark.
Each disputed domain name wholly incorporates the Complainant’s MOU trademark as its initial element. The Complainant’s MOU trademark is clearly recognizable within the disputed domain names.
The disputed domain names include the additional element “outlet-boots” or “sale-boots”. Neither of these elements renders confusion with the Complainant’s trademark unlikely. These are mere dictionary words separated by a hyphen. Dictionary words do not normally have the capacity to distinguish a domain name from a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The Complainant’s MOU trademark remains clearly recognizable within the disputed domain names.
Each disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following 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.
The Panel has already found that the disputed domain names are confusingly similar to the Complainant’s MOU trademarks. The Complainant informs the Panel that the Respondent is not, and never has been, a licensee of the Complainant and that the Respondent’s website has no affiliation with the Complainant.
As regards the first circumstance above, the disputed domain name is being used with a website that purports to offer for sale the Complainant’s products. Regardless of whether the products are genuine or counterfeit, nowhere does the website indicate the lack of any relationship between it and the Complainant. On the contrary, the website gives the impression that it is owned by, or affiliated with, the Complainant. This indicates that the Respondent’s use of this disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The disputed domain name does not resolve to any active website. Accordingly, the Panel does not find that the Respondent’s uses of the disputed domain names falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is shown in the Registrar’s WhoIs database as “Yu Tao” or “Katie Abranam”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for sale. The disputed domain name does not resolve to any active website. These are not legitimate noncommercial or fair uses of the disputed domain names covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
With respect to registration, the Respondent registered both disputed domain names on the same day in 2018, several years after the Complainant obtained its trademark registrations. Each disputed domain name incorporates the Complainant’s MOU trademark in its entirety as its initial element and each includes the additional element “boots”, which indicates an awareness of the Complainant’s products. The website with which one of the disputed domain names is used displays the Complainant’s MOU logo and purports to offer for sale the Complainant’s boots. This all indicates to the Panel that the Respondent was aware of the Complainant and its MOU trademark at the time that the Respondent registered the disputed domain names and deliberately chose to register the MOU trademark as part of them in bad faith.
With respect to use, the Respondent uses the disputed domain name , which is confusingly similar to the Complainant’s MOU trademark, in connection with a website that offers for sale what are purported to be the Complainant’s products. Given the findings set out in Section 6.2.B above, the Panel considers that this use of this disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website within the terms of paragraph 4(b)(iv) of the Policy.
The Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has a considerable reputation in its MOU trademark in the fashion industry due to its use of that trademark in connection with its footwear and accessories, including through its official website. The Panel has already found that the Respondent is using the other disputed domain name, which incorporates the same trademark and is otherwise similar, in bad faith. The Respondent gives no explanation of any proposed use of either of the disputed domain names. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is also being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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.
Matthew Kennedy
Sole Panelist
Date: May 2, 2019
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