The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented by its affiliate.
The Respondent is JOHN COPUS of Montecito, California, United States of America/ Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2015. On June 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 30, 2015 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 (including a clarification regarding annexes to the Complaint) on the same day.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. The Response was filed with the Center on July 21, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 28, 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 a luxury fashion e-tailer that launched in 2000 from the domain name . The Complainant sells a variety of apparel from its website to customers in over 170 different countries including dresses, coasts, trousers, maternity wear and other fashion accessories. The Complainant also has a social media presence from its Facebook and Twitter sites.
The Complainant is the owner of a number of trade marks consisting of the phrase NET-A-PORTER (the “NET-A-PORTER Mark”) first registered in the United States in 2000 and in the United Kingdom in 2001.
The Domain Name was registered on June 17, 2014. The Domain Name resolves to a website (the “Respondent’s Website”), which consists of a parking page maintained by the Registrar, that offers links to fashion websites and contains the statement “Would you like to buy this Domain? Learn More”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s NET-A-PORTER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the NET-A-PORTER Mark in the United States and the United Kingdom. The Domain Name consists of the NET-A-PORTER Mark with the replacement of the final “r” with an “e” and the addition of the “.com” generic Top-Level Domain (“gTLD”). Such minor alterations do not render the Domain Name dissimilar to the NET-A-PORTER Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the NET-A-PORTER Mark, nor does the Respondent appear to be commonly known by the Domain Name. The Respondent has made no active use of the Domain Name. The Respondent has never operated a legitimate business under the Domain Name, nor is making a noncommercial or fair use of the Domain Name. Rather the Domain Name is used for a pay-per-click website containing links to third-party websites offering products for sale. Such use is insufficient to ground rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s well-known NET-A-PORTER Mark and the fact that it significantly pre-dated the registration of the Domain Name. It is inconceivable that the Respondent would not have been aware of the NET-A-PORTER Mark at the time of registration, nor is there any obvious reason for the Respondent to have registered the Domain Name other than to trade off the substantial goodwill of the Complainant’s NET-A-PORTER Mark. B. Respondent
The Respondent is a new start-up company that plans to start a business at the Domain Name that would sell T-shirts online. The Respondent’s Website is a standard website issued to all customers of the Registrar and therefore has nothing to do with bad faith registration or use.
The Respondent does not agree to transfer its Domain Name to the Complainant as the Respondent’s reason for registering the Domain Name was to establish its own business and to develop his own intellectual property in the NET-A-PORTEE Brand, not to trade off the Complainant’s reputation.
The Respondent has indicated that he is prepared to consider alternative outcomes to the dispute including an agreement for the Respondent to continue to hold the Domain Name but not to use it for a website. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the NET-A-PORTER Mark, having registrations in the United States and elsewhere.
The Domain Name consists of the NET-A-PORTER Mark, with the replacement of the final letter “r” with the letter “e”, which is the letter commonly placed next to “r” on a standard QWERTY keyboard. The replacement of a single letter in a Domain Name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity, especially in a case where it is possible that a person, intending to reach the Complainant’s website, would reach the Respondent’s Website by a slip of a finger.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s NET-A-PORTER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the NET-A-PORTER Mark or a mark similar to the NET-A-PORTER Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name for a legitimate noncommercial use. Rather the Respondent’s evidence is that he proposes to use the Domain Name to operate a website for the sale of T-shirts.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Response contains no evidence, as opposed to assertions, that show any demonstrable preparations to use the Domain Name for the Respondent’s asserted purpose. The Domain Name has been registered for over one year and yet the Response contains no evidence in the form of website design, business information or business plans to support the assertion that the Respondent intends to use the Domain Name as part of a T-shirt selling business. Furthermore, even if the Domain Name was used for its asserted use, there is no explanation provided in the Response for why the Respondent would choose to sell clothing under the NET-A-PORTEE name other than to take advantage of any confusion with the NET-A-PORTER Mark. As such, the Respondent has not shown 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.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 his 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 the Respondent’s Website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the NET-A-PORTER Mark at the time the Domain Name was registered. The Response indicates that the Domain Name was registered with the purpose of selling clothing online, an industry where the Complainant, also an online seller, has a considerable reputation. This conclusion is strengthened by the absence of any explanation or obvious reason why the Respondent registered the Domain Name other than by reason of its similarity with the NET-A-PORTER Mark. The registration of the Domain Name in awareness of the NET-A-PORTER Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Complainant’s contention is that the Domain Name is presently used for a pay-per-click site, to take advantage of the similarity between the Domain Name and the NET-A-PORTER Mark. The Respondent’s contention is that the Domain Name is to be used for a website selling T-shirts under the NET-A-PORTEE name. In either case, the Respondent is using and/or intends to use the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the NET-A-PORTER Mark as to the source, sponsorship, affiliation or endorsement of his website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, , be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: July 31, 2015
Full & Egal Universal Law Academy