Mo Global Eyewear, S.L. v Domain Admin
WIPO Case No. D2025-0594
•11-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Mo Global Eyewear, S.L. v. Domain Admin
Case No. D2025-0594
1. The Parties
The Complainant is Mo Global Eyewear, S.L., Spain, represented by PONS IP, Spain.
The Respondent is Domain Admin, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <moglobaleyewear.com> is registered with Dynadot Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2025. On February 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 19, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 24, 2025.
The Center verified that the Complaint together with the amended 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 proceedings commenced on February 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2025.
The Center appointed Daniel Peña as the sole panelist in this matter on March 28, 2025. 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.
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4. Factual Background
The Complainant is a company formed by a group of opticians, under a cooperative model, seeking to offer visual health care services, as well as the commercialization of all types of glasses.
The Complainant has more than 300 members and collaborators, as well as a distribution network of more than 600 opticians’ shops and more than 2,000 professionals.
The Complainant is the owner of the following trademarks:
- European Union trademark No. 019060493 MO GLOBAL EYEWEAR (word mark), registered on
December 6, 2024.
- European Union trademark No. 007490923 MÓ (Logo) registered on July 29, 2009.
- European Union trademark No. 007491095 MÓ (Logo) registered on July 29, 2009.
- European Union trademark No. 011810595 MÓ (Logo) registered on October 7, 2013.
- European Union trademark No. 018065173 MO (Logo) registered on October 29, 2019.
- European Union trademark No. 018065180 MO (Logo) registered on October 29, 2019.
- European Union trademark No. 018065184 MO (Logo) registered on October 29, 2019.
- European Union trademark No. 018065191 MO (Logo) registered on October 29, 2019.
- European Union trademark No. 018398920 MO (Logo) registered on July 3, 2021.
- Spanish National trademark No. M2878433 MO (Logo) registered on November 3, 2009.
- Spanish National trademark No. M3066116 MO (Logo) registered on June 14, 2013.
The disputed domain name was registered on July 29, 2024.
The disputed domain name leads to a portal where it is possible to acquire it upon payment of the amount of
USD 2,850.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name was registered on the same day the European Union trademark MO GLOBAL EYEWEAR was applied for. This registration occurred approximately one month after the aforementioned name change and less than 15 days after the decision was published in the BOE on July 15, 2024.
The Complainant emphasizes the well-known status of the MO family of trademarks, recognized by various authorities such as the Spanish Patent and Trademark Office (SPTO) and the European Union Intellectual Property Office (EUIPO). This recognition necessitates a thorough comparative analysis between the
registered sign and the challenged sign due to the enhanced protection well-known trademarks enjoy. The Complainant’s reputation is further supported by multiple decisions and a report from the Association for the Defense of the Trademark (ANDEMA), which confirms the renowned nature of the MO trademark.
| trademark and the disputed domain name <moglobaleyewear.com>. Visually, phonetically, and | In the comparative analysis, the Complainant argues that the term MO is the dominant element in both the trademark by the Respondent infringes on the Complainant’s rights and misleads consumers about the origin of the products or services. |
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The Respondent lacks the necessary license or authorization to offer sales or services under the Complainant’s trademarks or to use or register the corporate/trade name as a domain name. All trademarks with the denomination MO and MO GLOBAL EYEWEAR are owned by the Complainant, making
it impossible for the Respondent to be unaware of their origin.
The Respondent has not established a website at the disputed domain name indicating no legitimate
interest. The primary purpose appears to be financial gain from selling the disputed domain name at a price
far exceeding its market value. Given the short time lapse between these events, it is implausible that the
registration was coincidental. The action was taken in bad faith, with the intention of obtaining economic
gain from the subsequent sale of the disputed domain name.
The Complainant contends that the Respondent has registered and is maintaining the disputed domain name in bad faith, to the detriment of the Complainant’s rights.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks MO GLOBAL EYEWEAR and MO on the basis of its multiple trademark registrations including its European Union trademark registration and Spanish trademarks registration.
A trademark registration prima facie satisfies that the rights in the trademark belong to the Complainant (see WIPO Overview 3.0, section 1.2.1). It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is
confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of the
WIPO Overview 3.0. The Panel finds the Complainant’s trademark is recognizable within the disputed
domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes
of the Policy. WIPO Overview 3.0, section 1.7. The Panel further notes that the generic Top-Level
Domain (“gTLD”) “.com” is required only for technical reasons and is generally ignored for the purposes of
comparison of the Complainant’s trademarks to the disputed domain name (WIPO Overview 3.0,
section 1.11.1).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the first element of paragraph 4(a) of the Policy is satisfied.
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B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the Complainant, previous 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
disputed domain name. If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
The Panel finds that the Complainant has made a prima facie case showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known under the disputed domain name.
The mere offering of the disputed domain name for sale does not constitute use in connection with a bona fide offer of goods or services under the circumstances of this case, because it is the disputed domain name itself that is being offered for sale and not any goods or services through the disputed domain name, and the composition of disputed domain name, which incorporates the Complainant’s trademarks MO GLOBAL EYEWEAR and MO in its entirety, carries a high risk of implied affiliation.
This Panel notes that the Respondent has not filed a Response and thus did not refute the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in
excess of documented out-of-pocket costs directly related to the domain name; (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; (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 its website or other online 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 on its website or location.
The Panel finds that the Respondent has registered the disputed domain name that contains the Complainant’s trademarks MO GLOBAL EYEWEAR and MO in bad faith. The Panel has considered a relevant fact as evidence of the Complainant’s bad faith: the disputed domain name was registered on the same day the European Union trademark MO GLOBAL EYEWEAR was applied for. This registration occurred approximately one month after the aforementioned name change and less than 15 days after the decision was published in the BOE on July 15, 2024. The Panel notes that the registration of the disputed domain name on the same date of the Complainant’s filing of a trademark application establishes that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent trademark rights, and the Panel finds that the Respondent has acted in bad faith. WIPO Overview 3.0, section 3.8.2.
In the Panel’s view, advertising the disputed domain name for sale for USD 2,850 is suggestive of an intent to sell the disputed domain name to the trademark owner or a competitor for a price in excess of
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out-of-pocket costs, as this combination of terms is unlikely to have such a value other than in reference to the Complainant’s trademarks. Absent any evidence to the contrary from the Respondent, this comports with the example of bad faith found in the Policy, paragraph 4(b)(i). Paragraph 4(b) of the Policy sets out a
list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad
faith, but other circumstances also may be relevant in assessing whether a respondent’s registration and use
of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
Having reviewed the available record, the Panel notes that the Complainant has provided evidence regarding the reputation of its trademark. The Respondent did not file a Response to the Complaint.
The Panel finds that the Complainant has established 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 <moglobaleyewear.com> be transferred to the Complainant.
/Daniel Peña/ Daniel Peña Sole Panelist Date: April 11, 2025
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