UDRP complainant successfully asserts common law trademark rights

International

In two decisions (Milanoo.com Limited v Hosle (Case DCC2013-0003) and Milanoo.com Limited v Hosle (Case DME2013-0013)) issued by the same single-member panel from the World Intellectual Property Organisation (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP), Milanoo.com Limited, a company based in China which operates an online marketplace for a wide range of products including women’s fashion apparel, fashion accessories, bridal apparel, swim apparel, jewellery and beauty products, has obtained the transfer of the domain names ‘milanoo.cc’ and ‘milanoo.me’. In both cases, the respondent was an individual based in Cyprus.

The complainant started operating the website ‘www.milanoo.com’ in July 2008. The complainant did not hold any registered trademark rights. One of the domain names, ‘milanoo.cc’, was being used to resolve to an online marketplace for women’s fashion apparel while the other, ‘milanoo.me’, was inactive.

The complainant filed two distinct UDRP complaints with WIPO on August 28 and September 4 2013, respectively, although in actual fact both domain names could have been included in the same complaint since the ‘.me’ and ‘.cc’ registries (the country-code top-level domains for Montenegro and the Cocos Islands, respectively) have both adopted the UDRP and the two domain names were registered to the same entity.

To be successful in a complaint under the UDRP, a complainant must show all of the following:  

  1. The 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 domain name; and
  3. The domain name has been registered and is being used in bad faith.

As for the first limb of the UDRP, the complainant claimed common law rights in the mark MILANOO. For this purpose, it stated that it had hosted its online marketplace since July 2008 and that this website had become familiar to internet shoppers worldwide. It also stated that its English website had received over 40 million visits since 2008, its French website over 14 million and its German website over 9 million. According to the complainant, it had sold tens of millions of dollars' worth of fashion goods via its MILANOO-branded marketplace and its global sales volume had increased every year since its launch. The complainant further maintained that, as a result of its extensive marketing efforts and the success of its MILANOO-branded offerings, the MILANOO mark had been distinctive in the relevant marketplace prior to the registration of the domain names in 2011 and represented valuable goodwill owned by the complainant.

The respondent argued that the domain names were registered several months before the complainant filed trademark applications in respect of the MILANOO mark with the US Patent and Trademark Office and with the Office for Harmonisation in the Internal Market. The respondent also argued that the complainant’s trademark was MILANOO.COM, while the domain names were ‘milanoo.me’ and ‘milanoo.cc’, and drew the conclusion that this “doesn’t violate the regulation of disclaimer and description of mark”. In addition, the respondent explained that the success of the complainant's website was not as great as the complainant claimed prior to the registration of the domain names in 2011 and was not the result of the sale of MILANOO-branded products, but of products bearing the trademarks of well-known US and European brands. 

The panel held that the complainant had rights in the name Milanoo, given the sales activity carried on through the complainant's website and the related promotion since 2008, and considered that the domain names were identical to the complainant's unregistered trademark. Thus, the complainant satisfied the first element of the three-prong test.

Turning to the second requirement, a complainant must establish that a respondent does not have rights or legitimate interests in the disputed domain name and, once a complainant makes a prima facie showing in this regard, the burden shifts to the respondent. The complainant essentially alleged that, in addition to the identity or confusing similarity between its mark and the domain names, the respondent had no rights or legitimate interests in the domain names.

The panel noted that the respondent did not explain in her response what rights or legitimate interests she may have had in the domain names and that she gave no account of how she came to adopt the Milanoo name, which the panel accepted was a neologism adopted by the complainant with no normal meaning. Concerning the domain name ‘milanoo.cc’, the panel further noted that there was no suggestion that the respondent was known by that name and it was particularly striking that the respondent chose ‘milanoo.cc’ for a domain name and a website carrying on the same activity as the complainant. The panel concluded that, even though the respondent appeared to be carrying on a legitimate business from the website at ‘milanoo.cc’, the use of another’s name in these circumstances could not give rise to rights or legitimate interests in that name for the purposes of Paragraph 4(a)(ii) of the UDRP.   

Regarding registration and use in bad faith, the complainant pointed to the fact that the respondent registered the domain names some years after the complainant had started to use the name Milanoo for an online fashion apparel website and had then used ‘milanoo.cc’ for the same purpose. In those circumstances, particularly given that the complainant claimed that Milanoo was a name made up by the complainant, the complainant argued that the respondent almost certainly knew of the complainant's website and the business carried on by the complainant at this website at the time she registered the domain names.

Finally, the complainant claimed that the respondent used the domain name ‘milanoo.cc’ to lure internet users to her own fashion marketplace that was confusingly similar to the complainant's marketplace. Internet users who were directed to this website, either via search results or by directly typing the URL into a web browser, were likely to believe that they had successfully accessed a website related to the complainant's business. Regarding ‘milanoo.me’, the complainant stated that it feared that the respondent would use this domain name for the same purpose as ‘milanoo.cc’. 

The respondent claimed in turn that there was “no character or picture related to Milanoo or milanoo.com and no misleading behaviour to customers or damage to milanoo.com in the milanoo.cc website”.  The respondent also asserted that there had been no attempt to sell the domain name ‘milanoo.cc’ "and no speculative behaviour but simply an online business providing high-quality service to customers".

The panel noted that the domain names comprised the Milanoo name and the respective ‘.cc’ and ‘.me’ suffixes. In view of the nature of the Milanoo name, a neologism with no ordinary meaning, the panel considered it overwhelmingly likely that the respondent had the complainant in mind when she registered the domain names, particularly in view of the use to which ‘milanoo.cc’ had been put, namely an online marketplace selling exactly the same sort of goods as were sold from the complainant’s website. 

The panel also noted that the respondent had offered no explanation for her choice of the domain name ‘milanoo.cc’ for a website offering the same products as the complainant.

Regarding ‘milanoo.me’, the panel relied on numerous UDRP decisions holding that passive use of a domain name can amount to bad-faith use for the purposes of the UDRP. In the current case, the panel also considered that the complainant had justifiable concerns that the respondent may put the domain name ‘milanoo.me’ to similar use to that of ‘milanoo.cc’.

These two decisions are interesting as the complainant successfully asserted common law or unregistered trademark rights. In this respect, consensus panel opinion states in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at Paragraph 1.7, that a complainant must show that the name in question has become a distinctive identifier associated with the complainant or its goods or services and that evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. 

It should be noted in this respect that UDRP panels tend to find it more difficult to accept assertions of common law or unregistered trademarks when the mark in question is generic or descriptive or when an individual tries to argue that his or her name has become a common law trademark. In this situation, the complainant's case was much easier to prove because its chosen trademark was very distinctive. As the WIPO Overview states:

"the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence."

David Taylor and Sarah Taieb, Hogan Lovells LLP, Paris

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