WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thierry Mugler v. Lihongpeng
Case No. D2014-2072
1. The Parties
The Complainant is Thierry Mugler of Paris, France, represented by Tmark Conseils, France.
The Respondent is Lihongpeng of Tangshan, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <mulger.com> is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2014, 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. On December 2, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 3, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2015. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on January 5, 2015. Email communications were received from the Respondent on January 6 and 7, 2015, claiming that he is now the owner of the disputed domain name.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 16, 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
The Complainant is the owner of the MUGLER and THIERRY MUGLER trademarks ("MUGLER mark") in relation to perfume and clothing in many countries such as France, European countries, Canada, the United States of America ("US"), Australia and including China, where the Respondent seems to be established. The Complainant's registrations of the MUGLER marks all predate the registration of the disputed domain name.
In addition, the Complainant is also the owner of the domain name <mugler.com> and has been using this domain name since February 16, 2000 to promote its goods and services on the Internet.
The disputed domain name was registered by the Respondent on April 8, 2011.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. The Complainant has rights in the MUGLER mark by virtue of registration in many countries in the world including China.
2. The only difference between the MUGLER mark and the word "mulger" contained in the disputed domain name is that the third and fourth letters of "Mugler" are inversed.
3. This is not sufficient to avoid the strong visual and aural similarities between the signs, bearing in mind the well-known character of the MUGLER trademark. This type of inversion is obviously a "typosquatting" case, and there are many previous cases where the disputed domain name has been found confusingly similar to a trademark further such reversion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent is not affiliated in any manner to the Complainant and has never been authorized to use or register in any way a name identical or similar to "mugler", including as a domain name.
2. The Respondent is not making a noncommercial or a fair use of the disputed domain name, since it is not used in relation with a real proper website. In fact the Respondent only uses it to provide Internet users to browse through sponsored links.
3. Some of these sponsored links are related to the Complainant's direct competitors' goods. By doing so, the Respondent misleads consumers and diverts them from the real and official Complainant's website "www.mugler.com". Such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights or legitimate interests the Respondent might have in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The disputed domain name was created on April 8, 2011. The Complainant was already extensively using its trademarks MUGLER and THIERRY MUGLER well before that date.
2. The Complainant's trademark has a well-known character worldwide, and the Complainant has a long-standing worldwide operating website under the <mugler.com> domain name.
3. The disputed domain name is confusingly similar to the domain name <mugler.com> operated by the Complainant. The latter website was active before the disputed domain name had been registered.
4. The webpage that is associated with the disputed domain name displays sponsored links to commercial websites offering goods identical to those covered by the Complainant's trademarks, and more particularly, links to the Complainant's direct competitors' goods.
5. The Respondent is exploiting the Complainant's trademark, in order to gain "click through" commissions from the diversion of Internet users, which is a common example of registration and use in bad faith.
6. The filing of the disputed domain name was not a mere coincidence, and by using the disputed domain name in such unacceptable way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his webpage.
B. Respondent
The Respondent did not formally reply to the Complainant's contentions. The Center received three email communications from the Respondent, who claimed that he is not the owner of the disputed domain name since he stopped renewing the disputed domain name two years ago.
6. Discussion and Findings
6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. 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. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11(a) of the Rules provides:
"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."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in ASCII-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name pointed was in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant's allegations. Considering these circumstances, 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.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the MUGLER mark in connection with perfumes and clothing in many countries in the world, including China. The Panel finds that the Complainant's MUGLER mark is a widely-known mark for perfumes and clothing.
In assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.
Comparing the disputed domain name <mulger.com> and the Complainant's MUGLER mark, the Panel concludes that the disputed domain name is comprised of (a) misspelling of the word "Mugler" and (b) the generic Top-Level Domain ("gTLD") ".com". The misspelling of a distinctive mark like MUGLER does not serve to distinguish the disputed domain name from the Complainant's mark and will render the disputed domain name confusingly similar to the Complainant's mark. It is also clear that the addition of a gTLD such as ".com" is typically insufficient as a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's MUGLER mark as a result of its fame and notoriety and (b) the distinctive character of the Complainant's MUGLER mark, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the MUGLER mark in which the Complainant has rights.
The Panel finds for the Complainant on the first element of the Policy.
B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term "mulger" in its business operations;
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the MUGLER mark;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) the Complainant and its MUGLER mark enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with perfumes and clothing and is a registered trademark in many countries all over the world, including China. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the MUGLER mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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 the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a formal Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second element 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 a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before a panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its MUGLER mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Furthermore, it has been established that the Complainant has a substantial presence on the Internet via its offering of its products on its official website "www.mugler.com". A simple search on the Internet would reveal the presence of the Complainant's trademark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in registering the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a domain name that is identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Further, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of a bona fide offering of goods or services over the Internet. On the contrary, there is evidence which shows that the Respondent is using the disputed domain name to direct traffic to commercial websites offering goods that are in competition with the Complainant with the view of obtaining commercial gain through affiliate and/or referral fees. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of why his use of the disputed domain name is not use in bad faith.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name which ultimately points to commercial websites offering goods that are in competition with the Complainant under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's MUGLER mark and a lack of plausible explanation for the choice of incorporating a "typo" of the Complainant's famous trademark in the disputed domain name, the use of the disputed domain name to direct traffic to commercial websites offering goods that are in competition with the Complainant with the view of obtaining commercial gain through affiliate and/or referral fees is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third element 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<mulger.com> be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: January 30, 2015
