Complainant is Mama Mio Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Dechert, United Kingdom.
Respondent is LIU SHENG, Mamamio Inc. of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2015. On July 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding registrant information, the Complainant filed an amendment to the Complaint on July 27, 2015.
On July 27, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant requested that English be the language of the proceeding. On July 30, 2015 and July 31, 2015, Respondent asserted that it was a Chinese company.
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(a) and 4(a), the Center formally notified Respondent of the Complaint in both Chinese and English, and the proceeding commenced on August 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2015. The Response in Chinese was filed with the Center on August 22, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on September 7, 2015. 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, Mama Mio Limited, is a company incorporated in London, United Kingdom. Complainant, founded in 2004, is a leading producer and distributor of skincare and beauty products for pregnant women. Its products are now in store in 14 countries. Complainant also sells its products directly from its website "/mama-mio.html" to more than 65 countries.
Complainant has exclusive rights in the MAMA MIO marks. It is the owner of various trademark registrations that comprise MAMA MIO in the European Union ("EU") since 2006 and in the United States of America since 2007 (Annexes C-D to the Complaint). B. Respondent
Respondent, LIU SHENG, Mamamio Inc. of Shenzhen, Guangdong, China, registered the disputed domain name with the Registrar on February 11, 2014. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its trademark MAMA MIO, the registration and use of which by Complainant precedes the registration of the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent contends that Respondent has exclusive rights in the MAMA MIO marks in China since 2012.
The products provided by Respondent are completely different from those of Complainant.
Respondent contends that Respondent and the public are not aware of the products of Complainant.
Respondent requests that the disputed domain name not be transferred to Complainant. 6. Discussion and Findings 6.1 Language of the Proceeding
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. According to information from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Respondent is familiar with the English language;
(b) The website at the disputed domain name is available in both Chinese and English (Annex H to the Complaint);
(c) The products advertised through the website at the disputed domain name are given English names;
(d) The website at the disputed domain name is purportedly operated by Mama Mio, Inc, with an address in the United States of America. The primary language of the United States of America is English.
Respondent has not explicitly objected to the use of English as the language of the proceeding. But it affirmed that it is a Chinese based company.
Paragraph 11(a) of the Rules 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 his or her 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, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has taken into consideration in this case 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 facts that the website at the disputed domain name includes the Latin characters "mama" and "mio" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
According to Respondent, Respondent is a Chinese company and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant: (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) the website at the disputed domain name resolves to a website in both Chinese and English; (c) the website at the disputed domain name has a dropdown box which allows the user to indicate its country from a list of Canada, United States of America, Germany, Italy, Australia, Switzerland, China and France; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese; and (f) Respondent filed a Response in 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 Discussion and Findings
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 name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of paragraphs 4(a), (b), (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The disputed domain name comprises the MAMA MIO mark in its entirety. The only difference from the MAMA MIO mark is the addition of the country code Top-Level Domain ("ccTLD") ".cc". UDRP panels have consistently held that "[t]he applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark" (see WIPO Overview 2.0, paragraph 1.2 and cases cited therein). The Panel finds that the ccTLD ".cc" does do not eliminate the confusing similarity between the Complainant's registered MAMA MIO mark and the disputed domain name .
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
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 the 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 2.0, paragraph 2.1 and the cases cited therein).
Complainant has rights in the MAMA MIO marks, including registration in the EU (since 2006), which precedes the Respondent's registration of the disputed domain name on February 11, 2014.
According to the Complaint, Complainant is a leading producer and distributor of skincare and beauty products for pregnant women. Its products under the MAMA MIO marks are now in store in 14 countries. Complainant also sells its MAMA MIO branded products directly from its website "/mama-mio.html" to more than 65 countries.
Moreover, Respondent is not an authorized dealer of MAMA MIO branded product or service. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent 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 Respondent has no rights or legitimate interests in the disputed domain name:
There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided persuasive evidence of a legitimate use of the disputed domain name or a persuasive reason to justify the choice of the words "mama mio" in its business operation or the use of the MAMA MIO marks and design on its website (without disclaimer or other clarifying details).
Although Respondent contends that Respondent has exclusive rights in the MAMA MIO marks in China since 2012, the Panel noted the trade dress used on its website, and the products purportedly on offer on its website, is virtually identical to the Complainant's trade dress. And Complainant has filed a cancelation action against the Respondent's registered Chinese trademarks on the basis that they were registered in bad faith in China.
There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MAMA MIO marks or to apply for or use any domain name incorporating the MAMA MIO marks.
There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. Respondent registered the disputed domain name in 2014, after Complainant's registrations of the MAMA MIO marks (in the EU since 2006). The disputed domain name is confusingly similar to Complainant's MAMA MIO marks.
There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent is in actuality using the website at the disputed domain name to purport to offer skincare and beauty products for pregnant women under Complainant's MAMA MIO marks.
The Panel finds that Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. 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 name in bad faith, namely:
(i) circumstances indicating that Respondent has 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) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product or service on Respondent's 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 Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the MAMA MIO marks with regard to its products and services. Complainant has registered its MAMA MIO marks in the EU since 2006. Moreover, the website at the disputed domain name has been used to provide the purported Complainant's products and services.
Respondent would likely not have provided the purported Complainant's products or use Complainant's trade dress on its website if it was unaware of Complainant's reputation. In the other words, it is not conceivable for this Panel that Respondent would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain name and MAMA MIO trademarks in China. The Panel therefore finds that the MAMA MIO mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with the Complainant's MAMA MIO branded products.
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites" by providing the web links of Complainant's competitors as per paragraph 4(b)(iv) of the Policy.
To establish an "intention for commercial gain" for the purpose of the Policy, evidence is required to indicate that it is "more likely than not" that intention existed (See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the MAMA MIO marks as well as the content on the website at the disputed domain name (Respondent having actually used the disputed domain name in conjunction with a copycat website through which it offered similar products), the Panel finds that the public is likely to be confused as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the MAMA MIO marks. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant's trademark, intended to free ride on the goodwill of the Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of sufficient evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name 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 name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: October 10, 2015
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