The Complainant is Fashion Nova, Inc., United States of America (“United States”), represented by Ferdinand IP, LLC, United States.
The Respondent is Harry Trans, Shopdealgirl, Malaysia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2020, 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 June 26, 2020, notifying the Complainant that the Complaint was administratively deficient, 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 June 26, 2020. 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 June 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2020. The Center received an email communication from the Respondent on July 3, 2020. On July 20, 2020, the Center informed the Parties that it would proceed to panel appointment, pursuant to paragraph 6 of the Rules. The Center appointed Antony Gold as the sole panelist in this matter on July 24, 2020. 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 Since 2006, the Complainant has owned and operated an e-commerce website at “www.fashionnova.com”. The Complainant’s website sells a broad range of fashion-related goods, including clothing, footwear, and accessories. The Complainant’s goods are sold under the mark FASHION NOVA and this brand is widely promoted on social media channels, including Instagram and Facebook, as well as in print media, billboards, and elsewhere. A number of well-known influencers, such as Kylie Jenner and Amber Rose, have posted photographs and videos of themselves wearing the Complainant’s apparel. The Complainant has registered a number of trade marks to protect its trading style. These include, by way of example only, United States trade mark registration number 4,785,854 for FASHION NOVA in class 25, registered on August 4, 2015 The disputed domain name was registered on October 2, 2019. It resolves to a website branded as “www.efashionova.com” which advertises for sale a similar range of fashion-related products to that of the Complainant. On July 3, 2020, in response to the notification to it by the Center of the Complaint, the Respondent sent an email apologizing for its use of the Complainant’s copyright material and offering “to pull our entire project from circulation”. 5. Parties’ Contentions A. Complainant The Complainant draws attention to its portfolio of trade marks for FASHION NOVA, full details of one of these marks having been set out above, and says it has rights in those marks. The disputed domain name is identical or confusingly similar to its marks because it is identical in appearance and sound, save that a letter “e” has been added at the beginning of the word and a letter “n” has been removed from the middle of it. The practice of registering a slight misspelling of a registered trade mark, commonly known as “typosquatting, has consistently been held in previous decisions under the Policy as creating a domain name confusingly similar to a complainant’s registered mark; see, by way of example Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent cannot claim that it is commonly known by the disputed domain name and therefore cannot assert a defence based on fair use of it. Neither the Complainant nor anyone acting on its behalf has ever authorized the Respondent to use its FASHION NOVA mark in connection with the sale or promotion of any goods or services. Moreover, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to it, in connection with a bona fide offering of goods and services or for a noncommercial purpose. Instead, the Respondent has used the disputed domain name to resolve to a website almost identical to that of the Complainant in a bad faith effort to mislead the public into thinking that its website is, in fact, operated by the Complainant. Such bad faith use cannot constitute a bona fide offering of goods and services. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. In particular, it is being used by the Respondent to pass itself off as the Complainant, or a licensee of it, and thus to free-ride and profit off the market reputation and goodwill of the Complainant’s FASHION NOVA trade mark. The Respondent’s website is a complete copy of the Complainant’s website, including use of the term “NOVA” as a coupon code, just as the Complainant has done. The Respondent has also appropriated the Complainant’s property by using its photographs, which depict the Complainant’s models wearing the Complainant’s clothing. Accordingly, the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s FASHION NOVA mark as to the source, sponsorship, affiliation or endorsement of its website. In addition, the Respondent’s website is diverting customers away from the Complainant’s website. Finally, the practice of typosquatting in and of itself constitutes bad faith registration; see Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043. B. Respondent Save for the Respondent’s email communication to the Center on July 3, 2020, summarized above, the Respondent did not provide a formal response to the Complaint. 6.Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in 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 The Complainant has provided details of its registered United States trade marks for FASHION NOVA. These establish its rights in this mark. As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when making the comparison between a complainant’s mark and the disputed domain name. The only difference between the Complainant’s FASHION NOVA trade mark and the disputed domain name is therefore the addition of an “e” at the beginning of the disputed domain name and the removal of a letter “n” in the central portion of it. Neither of these differences points prevents the disputed domain name from being confusingly similar to the Complainant’s mark. As explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Notwithstanding the differences described above, the Complainant’s mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name. Whether the Respondent’s website should be considered a bona fide offering of goods and services depends primarily on the Respondent’s motive in establishing it. The Respondent’s website will not be considered a genuine offering of goods and services if the evidence suggests that its intention has been to confuse Internet users into thinking that its website is either the Complainant’s website or a website authorized or operated by it. The Panel considers, first, the form of the Respondent’s website as set out in screen prints of it provided by the Complainant. The layout and content of the parties’ websites is not identical. Moreover, the Complainant’s website is prominently branded with a stylised form of its FASHION NOVA mark, which is presented in black upper case, font. The Respondent’s website is branded, in orange, lower case, font, as “www.efashionova.com”. However, there are important similarities between the websites. Both make prominent use of models on their home pages and both feature a large and distinctive black box at the centre of the home page which contains, in large type, an offer of a substantial discount on the parties’ product ranges. In addition, the style and range of the apparel offered on the Respondent’s website appears to follow closely that of the Complainant. Furthermore, as the Respondent has admitted, its website features a number of the Complainant’s copyright images. Finally, the difference in the parties’ brand names is relatively small, particularly having regard to the inherent distinctiveness of the Complainant’s FASHION NOVA mark. In particular, the absence of the second ‘”n” in the disputed domain name is unlikely to be noticed by many Internet users and the letter “e” is not of especial significance in that it often features as a prefix to denote an electronic, digital or Internet version of an existing product or service. Accordingly, these small differences do not serve as differentiating factors between the Respondent’s goods and those of the Complainant. Overall, the Respondent’s website, as set out in the screen prints of it provided by the Complainant, gives the impression of having been calibrated to introduce at least notional differences between it and the Complainant’s website, whilst retaining sufficient similarities so as to lead many Internet users visiting it to conclude, mistakenly, that they have reached the Complainant’s website or a website operated with its authority. Having regard to the Respondent’s admission that it used the Complainant’s copyright images, and has therefore clearly been aware at all times of the Complainant’s website, the lack of any genuine differentiation is plainly intentional. The fact that the Respondent has apologised for having used the Complainant’s photographs does not have any bearing on its initial motivation. In the light of the above, the Panel does not consider this form of the Respondent’s website to have amounted to a bona fide offering of goods and services. Section 4.8 of WIPO Overview 3.0 explains that “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name.” The Panel has accordingly visited the website to which the disputed domain name now resolves and notes that the form of it is markedly different from that shown in the screen prints provided by the Complainant. Amongst other matters, the models who featured previously have been replaced and the prominent and distinctive black box, in which a discount had been advertised, has been removed. However, the fact that there are now greater differences between the parties’ websites does not change the Panel’s assessment. First, the fact that the Respondent has previously deliberately chosen to copy elements of the Complainant’s website creates a significant risk that it will do so again. Second, a brief tour around the Respondent’s new website suggests that it is a sham, intended to create the illusion of a live, transactional website but with no substance behind it. By way of example, clicking on the social media buttons which feature on the home page, and which, in a genuine website, would link to the site operator’s social media channels, simply return the Internet user to the Respondent’s website. And based on a number of random attempts, it is not, at present possible (perhaps fortunately) to order the products which are notionally available for sale. Accordingly, the latest iteration of the Respondent’s website plainly does not amount to a bona fide offering of goods and services. The second and third circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character. The Complainant has therefore made out a prima facie case under the second element and the burden of production shifts to the Respondent. In view of the failure of the Respondent to provide any substantive response to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Dealing first, with bad faith registration, the use to which the Respondent has put the disputed domain name points to an awareness by the Respondent of the Complainant as of the date of registration of the disputed domain name. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. See also section 3.1.4 of the WIPO Overview 3.0; “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within these circumstances in that the Respondent’s website, in its original form, was sufficiently similar in style and content to that of the Complainant that many Internet users will have believed it was operated by, or with the authorisation of, the Complainant. The belief of Internet users that they had found the Complainant’s website, or a website associated with it will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s FASHION NOVA trade mark. The more recent form of the Respondent’s website is equally problematic. The most likely reason for the creation of a fake website by the Respondent is likely to be a desire to put obstacles in the path of the Complainant’s attempts to recover the disputed domain name. Whilst the Respondent is evidently hoping to profit unfairly in some way from its registration of the disputed domain name and the creation of a dummy website, it is not necessary for the Panel to ascribe a precise motive to it. As explained at section 3.1.1 of the WIPO Overview 3.0; “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent”. The circumstances point clearly to bad faith intent on the part of the Respondent and the Panel therefore finds that the disputed domain name was both 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 Antony Gold
Sole Panelist
Date: August 7, 2020
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