The Complainant is Urban Outfitters Inc. of Philadelphia, Pennsylvania, United States of America ("United States"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Xinnet Whois Privacy Pro Service of Beijing, China / Cai Jimmy of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and a request for the Registrar to confirm within two business days that the disputed domain name had been locked by the Registrar. The Center sent several reminders to the Registrar, and it was not until October 25, 2017 that the Center received from the Registrar its verification response.
The Registrar's verification response disclosed registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center accordingly sent an email communication to the Complainant on October 25, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 27, 2017.
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 proceeding commenced on November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 22, 2017.
On November 24, 2017, the Center sent an email communication to the Registrar, noting that the publicly‑available WhoIs information for the disputed domain name seemed to have changed; requesting the Registrar to explain the circumstances of the change; requesting the Registrar to restore the registrant and contact details for the disputed domain name to those the Registrar had previously confirmed; and requesting the Registrar to confirm that the disputed domain name was locked and would remain so until the Registrar's receipt of a Notification of Administrative Panel Decision from the Center.
The Center sent reminders to the Registrar on November 29, 2017 and on December 4, 2017. On December 5, 2017, the Registrar informed the Center that the registrant and contact details for the disputed domain name had been restored to those the Registrar had previously confirmed.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 7, 2017. 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 A. Complainant
The Complainant is a company incorporated in the United States, and is a designer, manufacturer and retailer of clothing, shoes and accessories, marketed and sold under the trade mark FREE PEOPLE (the "Trade Mark") since 1984.
The Complainant is the owner of numerous registrations in jurisdictions around the world for the Trade Mark, including United States registration No. 1827547, registered since March 22, 1994. B. Respondent
The Respondent is apparently a resident of China. C. The Disputed Domain Name
The disputed domain name was registered on June 2, 2017. D. Use of the Disputed Domain Name
The disputed domain name is resolved to an English language website which offers for sale discounted clothing under the Trade Mark and copies images of the Complainant's clothing products taken from the Complainant's official website (the "Website"). 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English for several reasons, including the fact the Website is an English language website.
The Respondent, having received notice of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding and did not file a response.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers that the English language Website indicates that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Cyberflight
Upon being notified of this proceeding (and after several reminders had been sent by the Center), the Registrar notified the Center, in its email communication of October 25, 2017, that the Registrar had placed a lock on the disputed domain name. However, prior to Panel appointment, the Center noticed that cyberflight had occurred and contacted the Registrar to clarify the matter.
Paragraph 8(a) of the Policy expressly prohibits domain name registrants from transferring disputed domain names to another holder during a pending administrative proceeding.
The Respondent Cai Jimmy purportedly transferred the disputed domain name to "LI XIN JUN" after the date of notification of the proceeding.
The Panel therefore concludes the Respondent has engaged in cyberflight in order to delay or frustrate the proceeding, in direct contravention of paragraph 8(a) of the Policy. 6.3. Registrar Misconduct
The Panel has serious concerns about the conduct of the Registrar in respect of this proceeding. A. Delay in Responding to Verification Request and in Confirming Registrar Lock
Paragraph 4(b) of the Rules provides as follows:
"Within two (2) business days of receiving the Provider's verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining Pendency of the UDRP proceeding. Any updates to the Respondent's data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision."
In the present proceeding, in accordance with paragraph 4(c) of the Supplemental Rules, the Complainant's representatives provided the Registrar with a copy of the Complaint at the same time the Complaint was submitted to the Center, on October 5, 2017.
On the same date, October 5, 2017, the Center sent its verification request to the Registrar, beginning with the following wording:
"IN ACCORDANCE WITH PARAGRAPH 4(B) OF THE RULES FOR UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (THE RULES), YOU ARE REQUESTED TO PROVIDE US WITH THE BELOW REQUESTED INFORMATION AND CONFIRM THAT A "LOCK" OF THE DOMAIN NAME(S) HAS BEEN APPLIED WITHIN TWO (2) BUSINESS DAYS OF RECEIVING THIS EMAIL … "
The Center did not receive any response from the Registrar within the stipulated two day period, and sent reminders to the Registrar on October 9, 2017 and on October 11, 2017. Having still received no response, the Center sent a further verification request to the Registrar on October 17, 2017, under cover of an email which stated as follows:
"We note that we have not received a reply from you to our attached Request for Registrar Verification of October 5, 2017 (see attached).
In accordance with paragraph 4(b) of the UDRP Rules, you are required to provide us with confirmation that a "Lock" has been applied to the disputed domain name(s) and to provide the information requested in the attached WIPO Center's Request for Registrar Verification within two (2) business days of our request.
Further to your RAA obligations as an ICANN-accredited Registrar, we would greatly appreciate your response as a matter of urgency and appreciate your cooperation in ensuring the continued effective administration of the UDRP…"
On October 19, 2017, the Registrar sent to the Center the WhoIs information for the disputed domain name, but did not send any response to eight of the nine requests in the Center's verification request (including the request for Registrar lock of the disputed domain name).
On the same day, October 19, 2017, the Center sent an email communication to the Registrar, noting that the Registrar had only answered one of the requests in the Center's verification request, and requesting the Registrar to reply to all of the nine requests in the verification request.
On October 23, 2017, the Center sent a further reminder to the Registrar. Having still received no response, on October 25, 2017, the Center sent yet another verification request translated into Chinese to the Registrar.
It was not until October 25, 2017, no less than 20 days after the Registrar received (i) the Complaint from the Complainant's representatives; and (ii) the Center's verification request, that the Registrar provided its response to the verification request, and confirmed that the disputed domain name would remain under Registrar lock throughout the pendency of the proceeding. B. Facilitating Cyberflight
On November 24, 2017, the Center sent an email communication to the Registrar, noting with concern that the publicly-available WhoIs information for the disputed domain name seemed to have changed, and stating as follows:
"We note that under the UDRP paragraph 8, during a pending UDRP proceeding, a registrant may not transfer the domain name registration to another domain name holder (registrant) or registrar for a period of fifteen (15) business days (as observed in the location of the registrar's principal place of business) after such proceeding is concluded.
The Center confirms for its part that it has not issued any suspension of this matter, and further that no Decision has been issued by an administrative Panel. Therefore, would you please explain the circumstances of the change in the registrant information for the domain name from "Cai Jimmy" to "LI XIN JUN".
For purposes of the instant case, would you please confirm the current registrant and contact details for the domain name have been restored to those you have previously confirmed, and that the domain name is LOCKED and will remain so until your receipt of a Notification of Administrative Panel Decision from the WIPO Arbitration and Mediation Center… "
On November 27, 2017, the Registrar simply sent the following response to the Center:
"Hello, domain name information provided for October 25th, the domain name transfer in October 26th, did not start the administrative process, it did not lock, in November 1st we received notification of complaint and commencement of administrative proceeding lock."
On the same date, November 27, 2017, the Center sent the following further email communication to the Registrar:
"Dear Registrar, Thank you for your reply email of November 27, 2017.
Noting the receipt of the Complaint by the Center at October 5, 2017 in Geneva, Switzerland, and the confirmation from you that the disputed domain name was transferred to the current registrant at October 26, 2017, it appears that the transfer was in violation of paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy.
We note in particular that paragraph 4(b) of the UDRP Rules indicates that 'the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied.' You provided such confirmation to us prior to the time in which you state that the disputed domain name was apparently transferred to a different registrant. Accordingly, you are requested to clarify why such lock was not applied in accordance with the Rules.
You are furthermore requested to restore the WhoIs contact details to those shown in your WhoIs database at the time the case was filed in accordance with paragraph 7 of the UDRP and confirm same to us by return email. Alternatively, if such restoration is not possible, please provide a clarification as to why this is not possible.
If you have any questions, please do not hesitate to contact us."
On November 29, 2017, the Center sent a reminder to the Registrar. Having still received no response, on December 4, 2017, the Center sent yet another reminder to the Registrar, stating as follows:
"Dear Registrar,
We note with concern that you have not responded to our email, regarding the Respondent's apparent violation of paragraph 8(a) of the Policy, and the Registrar's apparent failure to lock the disputed domain name pursuant to paragraph 4(b) of the UDRP Rules and maintain the status quo of the domain name registration during the pending proceeding in accordance with paragraph 7 of the Policy.
Under the present circumstances, we will proceed to appoint the Administrative Panel in due course, who will have the discretion to take additional procedural steps as it deems necessary to address this situation."
On December 5, 2017, the Registrar sent an email to the Center simply containing details of the previous WhoIs information for the disputed domain name, and stating as follows:
"Hello, the domain name has been updated for arbitration locking information, please check. Thank you"
The Registrar has failed to provide any explanation at all as to why it apparently allowed the transfer of the disputed domain name to a different registrant no less than 21 days after notification of the Complaint, and after the Registrar had notified the Center that the disputed domain name was (apparently) under registrar lock. C. Referral to ICANN
The Panel considers that the conduct of the Registrar outlined above, in apparent breach of the Policy and of the Rules, and the Registrar's failure to provide any explanation at all as to why:
(i) Despite repeated reminders from the Center, the Registrar took no less than 20 days to provide a full response to the Center's verification request and to confirm registrar lock; and
(ii) Despite repeated reminders from the Center, the Registrar allowed the disputed domain name to be transferred to a different registrant during the pendency of this proceeding and following the Registrar's (eventual) notification to the Center of registrar lock, are of serious concern.
It is of fundamental importance to the continued efficient and cost-effective functioning of the UDRP that:
(i) Registrars respond promptly to verification requests and ensure strict compliance with prescribed deadlines, including in particular the requirement to implement and confirm registrar lock within 2 days of receipt of a verification request; and
(ii) Registrars take all necessary steps to prevent cyberflight, including refusing to entertain requests to transfer domain names during the pendency of UDRP proceedings, and ensuring that domain names remain under strict registrar lock in accordance with paragraph 8(a) of the Policy.
The Panel considers that, regrettably, the conduct of the Registrar in the present proceeding, as outlined above, suggests that the Registrar might have been complicit in the Respondent's act of cyberflight.
For the above reasons, the Panel recommends that this Decision be referred to ICANN in order for ICANN to conduct the necessary investigations into the conduct of the Registrar in this proceeding, and take whatever steps ICANN determines are necessary in order to ensure the Registrar does not engage in any further misconduct in future.
6.4. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7) together with the non-distinctive word "online".
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which offers for sale discounted clothing under the Trade Mark; copies copyright images of the Complainant's clothing, and the Complainant's logos, without authorisation; contains a website footer "© 2017 Powered by FREE PEOPLE™. All Rights Reserved."; and claims (in the "About us" section of the Website), falsely, to be "an official Free People online outlet store, authorized by Urban Outfitters, Inc." (the Complainant). In other words, the Website / the Respondent are masquerading as the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
According to the uncontested evidence filed with the amended Complaint, upon identifying the Respondent's infringing use of the Complainant's copyrighted images on the Website, the Complainant sent a notice to the Internet Service Provider ("ISP") for the Website under section 512(c) of the Digital Millennium Copyright Act ("DMCA"), on October 3, 2017. On the same date, the ISP removed the content of the Website. However, on October 4, 2017, the Respondent changed its ISP, and the Respondent re-posted the Website, displaying the same content as before. The Panel finds that such conduct amounts to further evidence of bad faith.
The Panel further finds that the Respondent's act in engaging in cyberflight after the commencement and notification of this proceeding provides further strong grounds in support of a finding of bad faith.
For the foregoing reasons, the Panel finds that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 21, 2017
Full & Egal Universal Law Academy