The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Winston & Strawn LLP, United States of America (“United States” or “US”).
The Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2015. On May 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2015.
The Center appointed James Bridgeman as the sole panelist in this matter on June 24, 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 carries on an online fashion retail business and is the owner of the NET-A-PORTER trademark which it has registered in a number of jurisdictions including the following particularly relevant registrations:
- Bermuda trademark registration NET-A-PORTER, registration number 51280, registered on November 23, 2011 for specified retail services in class 35.
- US trademark registration NET-A-PORTER, registration number 2,661,220 registered on December 17, 2002 for various goods and services in international classes 3, 14, 16, 18, 21, 24, 25 and 35.
- Canadian trademark registration NET-A-PORTER, registration number TMA634,312, registered on March 4, 2005, for a range of goods and services including “Computerized online retail services featuring clothing, shoes, handbags, fashion accessories and gifts; and mail order catalogue services featuring services featuring clothing, shoes, handbags, fashion accessories and gifts.”
The Respondent is the registrant of the disputed domain name which was created on November 24, 2014 and which was created on December 31, 2014. Both of the disputed domain names resolve to identical web pages which contain the word “VISTAPRINT” in stylised form together with the words: “Make an impression. Websites are FREE at /websites. Create Your Website in Minutes • Grow your business with an online presence • Coordinate your brand online and offline • No programming skills required”. 5. Parties’ Contentions A. Complainant
The Complainant relies on its rights in the above-referenced NET-A-PORTER trademark registrations and the goodwill that it has established at common law in the years since the Complainant first established its online retail sales business in June 2000. The Complainant submits that as of the date of the Complaint, the Complainant markets and advertises its goods and services throughout the world and ships products to 170 different countries. It has received numerous awards for its innovative business concepts and it effectively uses social media to support the advertising and promotion of its goods and services. It claims that its Facebook page has received over 1.3 million “likes” and it has more than 701,000 “followers” on Twitter.
The Complainant submits that due to the extensive use and registration of the trademark around the world, the NET-A-PORTER trademark has become famous under the laws of the United States, Bermuda and Canada therefore enjoys liberal protection under the Paris Convention.
The Complainant submits that the disputed domain names are confusingly similar to the NET-A-PORTER trademark because each of them fully incorporates the NET-A-PORTER mark, adding only the letter “r” or “t” to the NET-A-PORTER mark respectively together with the generic Top-Level Domain (“gTLD”) extension “.com”.
The Complainant submits that such minor alterations do not render the disputed domain names any less confusing for purposes of the confusingly similar analysis.
The Complainant furthermore submits that the Respondent has no rights or legitimate interests in the disputed domain names arguing that the Respondent, who currently uses the email address and currently refers to itself in the WHOIS database as “VistaPrint Technologies Ltd.” has never been commonly known by the NET-A-PORTER mark, nor any variations thereof, and has never made any bona fide use of any trademark or service mark similar to the disputed domain names by which it may have come to be known.
The Complainant further submits that the Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected noncommercial or fair use of the disputed domain names. Rather, the disputed domain names resolve to parking pages, copies of which have been adduced in evidence in an annex to the Complaint. The Complainant argues that the Respondent is therefore passively holding the disputed domain names and such a use does not constitute a bona fide or legitimate business use.
Finally in this regard, the Complainant submits that the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the Complainant’s NET-A-PORTER mark.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith arguing that the disputed domain names were registered with either actual or constructive knowledge of the Complainant’s rights in the NET-A-PORTER trademark by virtue of the Complainant’s prior registration of those marks with the trademark office of the Bermuda, where the Respondent is a resident and the United States, where Respondent’s administrative contact is located. The Complainant submits that registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy, paragraph 4(a)(iii).
The Complainant further submits that there is no reason for the Respondent to have registered the disputed domain names other than to trade off the substantial reputation and goodwill of the Complainant’s trademark.
Finally, the Complainant submits that even if the Respondent were to argue that it was somehow unaware of the Complainant’s rights in the NET-A-PORTER mark, had it conducted even a preliminary trademark search, it would have found the Complainant’s various trademark registrations for the NET-A-PORTER mark and the websites associated with the mark, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its marks in connection with the Complainant’s goods and services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In respect of each of the disputed domain names paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said disputed domain names; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its ownership of the NET-A-PORTER trademark through its above-listed trademark registrations and its use of the mark on its online business for which it has acquired a substantial goodwill and reputation.
This Panel accepts the Complainants submissions that the domain names and are confusingly similar to the Complainant’s NET-A-PORTER trademark. It is well established that for the purposes of comparison, in this case as in most cases the gTLD extension “.com” may be ignored.
In the disputed domain name the additional letter “r” does not serve to distinguish the disputed domain name from the Complainant’s mark in any significant way. Similarly the addition of the letter “t” does not serve to distinguish the disputed domain name from the Complainant’s mark.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names arguing that the Respondent is not known by the disputed domain names, nor has the Respondent made any bona fide commercial or noncommercial use or fair use of the disputed domain names such as to acquire any rights or legitimate interests; that the Respondent has no connection with the Complainant; that the Respondent could not acquire any rights or legitimate interests in the disputed domain names by the use to which the Respondent has put them; and that the Complainant has never given any permission or license to the Respondent to use the NET-A-PORTER mark.
In such circumstances the burden of production shifts to the Respondent. The Respondent has not however filed any response in this case.
The disputed domain name registration was created on November 24, 2014 and the registration was created on December 31, 2014 and therefore long after the Complainant first acquired its rights, goodwill and reputation in the NET-A-PORTER mark.
Both of the disputed domain names resolve to identical web pages which contain the word “VISTAPRINT” in stylized form together with the words: “Make an impression. Websites are FREE at /websites Create Your Website in Minutes • Grow your business with an online presence • Coordinate your brand online and offline • No programming skills required”.
The Complainant has argued that this is passive holding; however, this Panel finds that it goes beyond what is normally understood as passive holding. It would appear that the Respondent is in fact putting the disputed domain names to an active use to advertise what purports to be a website creation and hosting business at a website at its eponymous “www.” address. There is no evidence that any such business exists however.
It follows nonetheless that the Respondent is not known by the disputed domain names. There is no evidence to indicate that the Respondent is using the disputed domain names for any noncommercial purpose and the Respondent has not furnished any evidence of any bona fide use of the disputed domain names or explanation as to why domain names which are confusingly similar to the Complainant’s trademarks were chosen and registered.
In the circumstances and in the absence of any response this Panel finds that the Respondent has failed to discharge its burden of production of evidence that it has any rights or legitimate interests in the disputed domain names and the Complainant is entitled to succeed in the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant has furnished evidence that it has built a substantial reputation for its online retail services over the past 15 years during which time it has received a number of highly publicized awards and acquired a substantial following on social media.
Both of the disputed domain names are confusingly similar to the Complainant’s marks in particular NET-A-PORTER. This Panel finds that on the balance of probabilities that both of the disputed domain names were chosen and registered because of this similarity and in order to create the impression of an association between the disputed domain names and the Complainant, its goods, services and goodwill. It is difficult to conceive of any other reason as to why they might have been chosen and no explanation is forthcoming from the Respondent.
This Panel finds that the disputed domain names were registered in bad faith in order to take advantage of the Complainant’s goodwill. In reaching this conclusion this Panel is conscious that given the distinctive character of the Complainant’s NET-A-PORTER mark it is most improbable that the Respondent was unaware of the Complainant’s business and its reputation among Internet users when the disputed domain names were chosen and registered. Furthermore, in the circumstances, it appears that the Respondent was engaged in typosquatting by choosing and registering the disputed domain names with, in each case, only one repeated additional letter different from the Complainant’s trademark which could be used to divert Internet traffic intended for the Complainant.
As to the issue of how the disputed domain names are being used: both resolve to an identical website, as described above, which purport to advertise a website creation and hosting service. In the absence of any response or other explanation, this Panel finds that on the balance of probabilities the Complainant is engaged in typosquatting, using the confusingly similar disputed domain names as bait to catch and divert Internet users who are attempting to access the Complainant’s services to a website that purports to provide website services free of charge.
This Panel finds that in the circumstances of this case, both of the disputed domain names 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 and be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: June 30, 2015
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