The Complainant is PUNTO FA, S.L. of Barcelona, Spain, represented by UBILIBET, Spain (“Complainant”).
The disputed domain names <mangofashionoutlet.com> and <shopmangouk.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. On September 13, 2018 and September 14, 2018, the Center received two email communications from a third party.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 16, 2018. 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.
Complainant contends that the while the names of the registrants of the disputed domain names are different, the historical database for the disputed domain names reveals facts which would make it proper to consolidate the ownership of the disputed domain names to a single entity. In this regard, Complainant points to the following facts:
a. The content hosted on both disputed domain names is identical (Complaint, Annex 3).
b. The accredited Registrar is the same as to both disputed domain names, i.e. GoDaddy.com, LLC (Complaint, Annex 1).
c. Both disputed domain names use the same Internet Service Provider (ISP), Istanbul Data Sender (Complaint, Annex 4).
d. Both disputed domain names are hosted on the same IP address, 22.214.171.124 (Complaint, Annex 4).
e. The email addresses that appear in the WhoIs data of each of the disputed domain names correspond to a Chinese Internet service provider, “www.163.com”, whose web portal is available only in the Chinese language.
f. Each of the email addresses associated with the disputed domain names consist of a combination of letters and numbers having no apparent meaning followed by “@163.com”.
Complainant, founded in Spain in 1984, is the owner of subsidiary companies that are charged with owning and controlling the various MANGO trademarks which it has caused to be registered and which have been registered by Complainant’s subsidiary companies. Complaint, Annexes 7, 8 and 9. Complainant and its wholly owned subsidiary companies have registered hundreds of MANGO trademarks that are used for various goods, including clothing. Complaint, Annexes 8, 9 and 10.
The earliest of the trademark registrations by Complainant of the MANGO mark date back to the 1990s and currently include, for example, Swedish trademark registration no. 357369 for MANGO, registered August 23, 2008. Complainant is currently a company with worldwide operations, having more than 16,000 employees, more than 315 stores in Spain, and more than 1,850 stores worldwide.
Respondent registered the disputed domain name <mangofashionloutlet.com> on February 5, 2018, and the disputed domain name <shopmangouk.com> on February 21, 2018. Respondent uses the disputed domain names to resolve to websites at which counterfeit clothing mimicking Complainant’s trademarked clothing are offered for sale. These web sites use photographs which appear identical to those on Complainant’s web sites at which Complainant’s clothing is for sale. Complaint, Annexes 2 and 3.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s MANGO mark in that both incorporate Complainant’s MANGO trademark to which additional English words have been appended. Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names, in that Complainant has never authorized Respondent to use its MANGO trademark. Finally, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith, in that Respondent is using the disputed domain names to resolve to web sites at which counterfeit clothing identical to the trademarked clothing of Complainant is offered for sale and on which photographs displayed on Complainant’s web site have been copied and used.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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 directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is 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 respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.”
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, it sets out the situation where a complaint filed against multiple respondents is sought to be consolidated, “panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
As to the second of the two considerations, in the present case Complainant made a clear request in the Complaint that the domain names and respondents be consolidated and treated as one, and Complainant set out in detail the factors which Complainant believed showed a common control and why it would be fair and equitable to consolidate the disputed domain names and respondents.
Respondent failed to respond to the facts and allegations made by Complainant. Accordingly, the Panel finds that, should the facts as alleged by Complainant support the conclusion that “the domain names or corresponding websites are subject to common control,” the Panel finds that consolidation would be fair and equitable to all parties.
As to the first prong, Complainant has alleged and provided supporting facts that the content hosted on both disputed domain names is identical, that both domain names use the same accredited registrar, that both domain names use the same ISP, both names are hosted on the same IP address, and the email addresses that appear in the WhoIs of the disputed domain names are similar in important respects. All of these factors are identical or similar to the factors addressed in the WIPO Overview 3.0, section 4.11.2, and in the exhaustive and extremely helpful summary contained in the panel decision of Peedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 (sections 6.A through C). Accordingly, the Panel finds that the disputed domain names and corresponding web sites are subject to common control.
The Panel, having regard to all relevant circumstances, concludes that the consolidation of the two domain name disputes asserted by Complainant and the consolidation of respondents is consistent with the Policy and Rules and is fair and equitable to all Parties.
The disputed domain names each contain Complainant’s registered trademark MANGO. One of the disputed domain names incorporates the English words “fashion” and “outlet.” The second of the disputed domain names adds the English word “shop” before the trademark MANGO and the letters “uk” following the trademark. The letters “uk” when read individually are universally understood to refer to the United Kingdom.
As UDRP panels have long determined, the addition of common words or recognizable terms to a trademark in a registered domain name do not protect a disputed domain name from a finding of confusing similarity to the trademark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s registered trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
The disputed domain names resolve either to one web site which is identical to a web site maintained by Complainant or to two web sites which are identical to the web site maintained by Complainant. The web site or sites to which the disputed domain name resolves offers for sale counterfeit clothing identical to the trademarked clothing offered by Complainant on its web site. Moreover, the web site or sites to which the disputed domain names resolve feature pictures that were obviously taken directly from Complainant’s web site. Accordingly, the Panel has no hesitation in finding that the disputed domain names have been registered and used in bad faith.
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 <mangofashionoutlet.com> and <shopmangouk.com> be transferred to Complainant.
M. Scott Donahey
Date: November 7, 2018
1 The Panel has decided to redact the name of one of the named Respondents, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").
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