Westmore · UDRP DecisionMou-bootssale.com, Mouboots-sale.com, Mousale.net
The Panel ordered the transfer of all three disputed domain names. It found them confusingly similar to the Complainant’s registered MOU mark because each incorporated MOU with descriptive terms relating to boots or sales. The Respondent lacked rights or legitimate interests because the domains resolved to a commercial website that used the MOU mark, copied material from the Complainant’s website, claimed to be an official MOU store, and offered the same type of goods without authorization. The same conduct established that the Respondent knew of the mark and intentionally sought commercial gain through confusion. The Panel also exercised its discretion to add <mou-bootssale.com> after commencement of the proceeding, giving the Respondent an additional opportunity to participate.
The timeline behind mou-bootssale.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind mou-bootssale.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The decision illustrates how a coordinated set of domains combining a trademark with product and discount terminology can satisfy all three UDRP elements when the associated retail website copies the trademark owner’s content and represents itself as official. It also provides a procedural example of a panel permitting an additional domain to be added after commencement where the domains shared the same holder, registration date, and destination website, while giving the respondent an additional opportunity to participate.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mou Limited v. Debra Nelis Case No. D2016-2031 1. The Parties The Complainant is Mou Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stanmore IP Limited, United Kingdom. The Respondent is Debra Nelis of Amsterdam, the Netherlands. 2. The Domain Names and Registrar The disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint in relation to <mousale.net> and <mouboots-sale.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with <mousale.net> and <mouboots-sale.com>. On October 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceeding commenced on October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. On October 15, 2016, the Complainant submitted an amended Complaint requesting the addition of the domain name <mou-bootssale.com> to the present proceeding. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2016. The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 7, 2016. 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. The Panel has accepted the addition of the domain name <mou-bootssale.com> for reasons outlined below. Consequently, on November 16, 2016 the Respondent was granted until November 21, 2016, to indicate if it wished to take part in the proceeding. Again, the Respondent did not submit any response. 4. Factual Background The Complainant is active in the fashion industry and provides footwear and accessories. It has submitted evidence that it is the owner of numerous trademark registrations for MOU. Examples of such trademark registrations are: MOU, European Union trademark with registration No. 8164204 and registration date December 11, 2009 for class 3, 18 and 25; MOU, European Union trademark with registration No. 8575607 and registration date February 22, 2010 for class 3, 18 and 25. According to the Registrar, the disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> were registered on March 16, 2016. 5. Parties’ Contentions A. Complainant The Complainant is a well-known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. The Complainant was founded in 2002 and has grown significantly in size since then. The Complainant is stocked in boutiques and department stores worldwide and has online presence and sales via the Complainant’s website “www.moulondon.com” and the website “www.mou-online.com” operated by the Complainant’s authorized licensee. The Complainant also sells products via selected boutiques and high profile department stores as well as wholesale sales in a number of countries. The Complainant operates various social media accounts such as Facebook, Instagram, Twitter and Pinterest. The Complainant’s brand is well-regarded in the fashion industry and has many celebrity customers including Cameron Diaz and Gwyneth Paltrow. The disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> are similar to the Complainant’s trademark because they contain the trademark MOU as the distinctive and dominant element. The disputed domain names incorporate the trademark in its entirety and as a result, the disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names use the Complainant’s trademark alongside the descriptive words “boots” and “sale”. The Complainant uses the word “boot” and/or “boots” in its own domain name registrations alongside the trademark MOU. The addition of “boots sale” is not sufficient to distinguish or differentiate the disputed domain names from the Complainant’s trademark MOU as “boots” is descriptive of the product and “sale” is a commonly used term to indicate a discount on a product. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not using the disputed domain names for a bona fide offering of goods or services. The disputed domain names resolve to a website where unauthorized products are offered. The Complainant confirms that the website is unauthorized and that the Complainant has not licensed or permitted the Respondent to use the Complainant’s trademark or to register the disputed domain names. The Complainant denies that the Respondent has been commonly known by the disputed domain names and submits that, due to the similarity between the disputed domain names and the trademark, the disputed domain names were selected with the purpose of diverting customers from the Complainant’s genuine website. The Respondent is not making a fair use of the disputed domain names. The Respondent is using the disputed domain names to mislead and divert customers for commercial gain. By offering for sale, unauthorized and suspected counterfeit goods, the Respondent is tarnishing the Complainant’s trademark. The Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names were registered to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source of the products on the Respondent’s website. The Respondent is using the disputed domain names to sell products which the Complainant believes to be counterfeit. The Respondent has copied the entire section of “live simply. love nature” from the Complainant’s genuine website and reproduced it on the Respondent’s website. The Respondent claims to be “the official Mou Boots SALE online store” and to have “solid business relationships with manufacturers and Mou Inc.”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. 6.1. Addition of a Domain Name to the Proceeding The consensus view in paragraph 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”) states that provided a complainant has relevant trademark rights and all relevant domain names are registered by the same domain name holder, additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding. However, if the request if received after the commencement of the proceeding, it would be at the panel’s discretion, typically allowing a proper response opportunity in relation to the added domain name where the complainant’s request was granted. Considering that the three disputed domain names were registered on the same date to the same holder and resolve to the same website, the Panel grants the Complainant’s request and allows the domain name <mou-bootssale.com> to be added to the present proceeding. As indicated above, the Respondent was granted additional time to indicate whether it wished to partake in the proceeding, but has failed to reply. A. Identical or Confusingly Similar The Complainant is, according to the submitted evidence, the owner of the registered trademark MOU. The disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> incorporate the Complainant’s trademark MOU in its entirety with the addition of the generic and descriptive terms “sale”, “boots-sale” and “bootssale”. The mere addition of the descriptive terms to the MOU trademark do not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain names, especially when considering that the MOU trademark has been used by the Complainant in conjunction with subsequent terms as “boots” and “sale”. Furthermore, the Complainant’s trademark is registered for boots and the Complainant sells boots. In these circumstances, it is likely that Internet users would perceive the combination of MOU and “sale”, “boots-sale” or “bootssale” in the disputed domain names as referring to the Complainant or to a product by the Complainant. Having the above in mind, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy: (a) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or (b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or (c) that it is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Complainant’s trademark registration for MOU predates the Respondent’s registration of the disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net>. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark MOU in connection with the disputed domain names that are confusingly similar to the Complainant’s trademark. From the evidence in the case, it is clear that the Respondent’s commercial website, to which all of the disputed domain names resolve, contains direct references to the Complainant’s MOU trademark and products. Not only does the Respondent’s website contain material that has been copied from the Complainant’s website but the Respondent also claims to be an official MOU boots online store. The Respondent offers goods for sale that are identical to those offered by the Complainant and the Complainant believes that the goods offered by the Respondent are counterfeit. Accordingly, there is no evidence in the case indicating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names. The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. There is no evidence in the case file that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or (ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or (iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location. The Complainant has submitted evidence demonstrating that the Respondent is offering boots for sale via the Respondent’s website, to which the disputed domain names resolve. According to the Complainant, the products offered for sale by the Respondent appear to be counterfeit. Furthermore, the evidence in the case demonstrates that the Respondent is not only using the Complainant’s trademark but the Respondent is also reproducing material that has been copied from the Complainant’s website. By using the disputed domain names in combination with the Complainant’s trademark and marketing material, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain name and website belongs to or is in some way associated with the Complainant. Considering that the Respondent is reproducing the Complainant’s trademark and advertising material without permission and that the disputed domain names are used for the same type of products for which the trademark is registered, the Panel finds that the Respondent knew of the Complainant’s trademark at the time the Respondent registered the disputed domain names and sought to take advantage of the goodwill associated with the Complainant’s mark. Thus, the evidence in the case before the Panel indicates that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website. There is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> have been registered and are being used in bad faith. 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 <mouboots-sale.com>, <mou-bootssale.com> and <mousale.net> shall be transferred to the Complainant. Johan Sjöbeck Sole Panelist Date: November 22, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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