The Complainant is Miniso Life Style Pvt. Ltd., India, represented by ConceptLegal, India.
The Respondent is Anson Shawn, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 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 amended Complaint on October 11, 2019. 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 the Respondent of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019. The Center received two communication from the Respondent on November 11, 2019, containing arguments on the merits of the case. The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 12, 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 company incorporated under the laws of India. It is a subsidiary and a trademark licensee of Guangdong Saiman Investment Co., Ltd., its Group Company in China which is holding the trademark rights over the mark MINISO. In fact, Guangdong Saiman Investment Co., Ltd. is the owner of registered trademarks consisting of or containing the term MINISO, e.g. registered Indian trademark No. 3551984, registered on May 18, 2017, for goods in classes 3, 8, 9, 10, 11, 14, 16, 18, 21, 25, 26, 28, 29, 30, and 32. The disputed domain name was registered on October 1, 2018. The website which is connected to the disputed domain name shows a commercial web shop for women’s bags, beauty and home decor products in English. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered marks MINISO. The trademark MINISO is wholly incorporated in the disputed domain name, which is sufficient to establish identity or confusing similarity for purposes of the Policy. It is natural for an Internet user, who wishes to reach the Complainant’s website to type MINISO and then “.com” or “online.com”. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent has no connection with the Complainant or any company licensed by the Complainant; the Respondent is not commonly known by the disputed domain name or the trademark; the Respondent was not and is not authorized by the Complainant to register, hold or use the disputed domain name. Finally, the Complainant considers the MINISO trademark as being distinctive, that the Respondent must have been aware of those rights at the time of registration of the disputed domain name. Finally, the Respondent is not, either as an individual, business or other organization, commonly known by the name “miniso”. Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant’s undisputed allegations, the Respondent must have had knowledge of the Complainant’s trademarks at the time of the disputed domain name’s registration, since the MINISO trademark is widely well known. It is obvious to the Complainant that the Respondent registered the disputed domain name to mislead consumers into believing that the disputed domain name is associated with the Complainant. According the Complainant, the Respondent’s intention is to cash-in on the reputation of the said mark. Moreover, a basic Internet search of the term “miniso” would have alerted the Respondent of the trademark MINISO. B. Respondent The Respondent did not submit a formal Response. However, on November 11, 2019, the Respondent sent two email to the Center pointing out that the disputed domain name consists of four words “mini”, “so”, “on”, “line” and the website available under the disputed domain name does not sell any MINISO products and does not use any MINISO graphic trademarks. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to said mark. The Complaint is based on the registered Indian trademark No. 3551984 MINISO, registered on May 18, 2017, for goods in classes 3, 8, 9, 10, 11, 14, 16, 18, 21, 25, 26, 28, 29, 30, and 32. This trademark is registered in the name of Guangdong Saiman Investment Co., Ltd. Despite the fact that the Complainant failed to provide any license contract or other authorization document from the trademark owner, the Panel is prepared to infer the existence of such an authorization to file a UDRP case based on the facts and circumstances described in the Complaint, following which the Complainant is – undisputedly – a subsidiary and a Trademark Licensee of the registered trademark holder and acts under a company name including that trademark, i.e. Miniso Life Style Pvt. Ltd. (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4). The disputed domain name entirely incorporates the MINISO trademark, followed by the term “online” under the generic Top-Level Domain (“gTLD”) “.com”. As noted in the WIPO Overview 3.0, section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. The Panel finds the MINISO mark to be readily recognizable in the disputed domain name and rejects the Respondent’s view, following which the disputed domain name does not consists of the trademark but of four terms “mini”, “so”, “on”, “line” for the reasons described under the second and third elements below. Furthermore, the addition of a dictionary term “online” to the trademark in a domain name is insufficient in to avoid a finding of confusing similarity under the first element of the UDRP (cf. WIPO Overview 3.0, section 1.8). The Panel finds the incorporated trademark to constitute the dominant or principal component of the disputed domain name, while the mere addition of the descriptive term will rather be understood as indicating an online shop (see Novartis AG v. Tech Inc, Tech Inc,WIPO Case No. D2019-1835). The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement (see WIPO Overview 3.0, section 1.11.1). Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the trademark MINISO pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a commercial web shop for women bags, beauty and home decor products in English language. Such use cannot – in this Panel’s view – be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use capitalizes on the goodwill of the MINISO mark under which the same product categories are sold in many countries worldwide, and are therefore likely to mislead Internet users. In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the fact that under the disputed domain name products are sold, which compete with the Complainant’s products and substitute them, underlines the lack of a bona fide offering. Finally, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the MINISO trademarks for registering the disputed domain name comprising said trademark entirely. Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In fact, the disputed domain name does not reflect the Respondent’s name. Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a 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 pursuant to paragraph 4(c)(iii) of the Policy. This becomes particularly evident considering the actual use of the disputed domain name for commercial content. In addition, the Panel is satisfied that the registered trademark MINISO is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this term. It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand: According to the Complainant’s documented allegations – which remained uncontested – the disputed domain name resolves to a website on which goods competing with the Complainant’s goods are sold. This website therefore benefits from the confusion arising from the similarities between the disputed domain name and the MINISO trademark and products offered by the Complainant. Therefore, it is highly likely that the Respondent received revenue from Internet users who came across the Respondent’s website by means of confusion with the MINISO trademark (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812) and who purchased products from the Complainant’s competitor. In view of the distinctive quality of the MINISO trademark, the Respondent’s registration of the disputed domain name containing that mark combined with a descriptive element is a clear indication of the Respondent’s bad faith. This finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following: (i) the Panel notes that the disputed domain name is the combination of the trademark MINISO and the descriptive term “online”. On the website, to which the disputed domain name leads, the two terms appear separated either by a space or by a capital letter (e.g. on the bottom of the printouts submitted by the Complainant: MINISO Online or MinisoOnline.com). Furthermore, the website available under the disputed domain names offers the same product categories as on the original MINISO webshop. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the MINISO trademark when it registered the disputed domain name; (ii) the Respondent’s failure to submit any evidence of actual or contemplated good faith use; (iii) the implausibility of any good faith use to which the disputed domain name may be put; and (iv) the lack of the Respondent’s own rights to or legitimate interests in the disputed domain name. In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 name Tobias Malte Müller
Sole Panelist
Date: December 2, 2019
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