Complainant is Fashion Nova, Inc., United States of America (“United States” or “U.S.”), represented by Ferdinand IP Law Group, United States.
Respondent is Contact Privacy Inc. Customer 1243650584, Canada / Name Redacted1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 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 Complainant on October 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 28, 2020. The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. Although email messages from Respondent’s email address were received by the Center on October 3, 2020 and November 2, 2020, Respondent did not submit a formal response to the Complaint. Accordingly, on December 3, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 20, 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 Complainant is an apparel and e-commerce company dealing in body-conscious clothing for men and women of all sizes. Since as early as 2006, Complainant has been using the FASHION NOVA mark (the “Mark”) in connection with its apparel and e-commerce services. Complainant is the owner of the domain name The Disputed Domain Name was registered on December 25, 2018. At the time of filing the Complaint, the Disputed Domain Name resolved to a website that imitates Complainant’s website, including copies of Complainant’s photographs depicting Complainant’s models wearing Complainant’s clothing. 5. Parties’ Contentions A. Complainant Complainant alleges that Respondent fraudulently registered the Disputed Domain Name in the name of a person affiliated with Complainant. Complainant alleges that the person named as Respondent did not in fact register the Disputed Domain Name, and, in addition, that the physical address given for the purported Respondent is false. At the time of the UDRP filing, the Disputed Domain Name resolved to a website representing a wholesale copy and appropriation of Complainant’s “www.fashionnova.com” website. Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s Mark. According to Complainant, the minor change to Complainant’s mark – namely, the addition of the descriptive term “models” – in the Disputed Domain Name does not reduce the confusing similarity. Complainant further contends that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. To Complainant’s knowledge, Respondent is not known or identified by the Disputed Domain Name and lacks trademark rights in the same. Complainant asserts that it has not licensed or authorized Respondent’s use of the Mark in the Disputed Domain Name. Complainant also asserts that there is no evidence Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. Indeed, Complainant asserts that Respondent is using the Disputed Domain Name for fraudulent commercial purposes, as the Disputed Domain Name leads to a website that appears to be no more than a reproduction of Complainant’s legitimate e-commerce website. As to Respondent’s bad faith, Complainant contends that Respondent fraudulently registered the Disputed Domain Name in the name of one of Complainant’s employees, without the individual’s knowledge or permission. Complainant also alleges that the physical address given for Respondent is fake and that “there is no [such location]. It is a fake address.” Moreover, Complainant alleges that Respondent registered and is using the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and website. For example, Respondent’s website asks “Wanna be a Nova Babe?,” which is a phrase Complainant uses and has registered as a trademark for assorted apparel items. U.S. Registration No. 5577210 (NOVA BABE). According to Complainant, the fact that Respondent has copied Complainant’s website and used Complainant’s photographs demonstrates that Respondent registered the Disputed Domain Name to attract Internet users to their website for commercial gain by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, and/or endorsement of the website accessible at the Disputed Domain Name. B. Respondent Respondent did not file a formal Response2 to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainant has established its rights in the FASHION NOVA mark by way of its United States trademark registrations. The Disputed Domain Name is confusingly similar to the Mark. The addition of the term “models” does not dispel the confusing similarity, as the Mark is nonetheless recognizable within the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, which Respondent has failed to rebut. Respondent is attempting to use the Disputed Domain Name to pass itself off as Complainant, as evident from the impersonation of a person affiliated with Complainant as Respondent, use of Complainant’s original website scheme, and use of Complainant’s photographs and coined term Nova Babe. Impersonation of a complainant cannot confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent registered the Disputed Domain Name in bad faith. Respondent’s knowledge of Complainant is manifest given the undenied allegation that Respondent fraudulently used the name of a person affiliated with Complainant when registering the Disputed Domain Name. The physical address given for the purported Respondent is also fake. These misrepresentations are, of course, obvious evidence of bad faith registration. WIPO Overview 3.0, section 3.6 (“Panels additionally view the provision of false contact information . . . underlying a privacy or proxy service as an indication of bad faith.”). The Panel also finds that Respondent is using the Disputed Domain Name in bad faith. There is no benign explanation for Respondent’s copying of Complainant’s website. The Panel finds that Respondent is impersonating Complainant in order to confuse Internet users for commercial gain. Respondent’s website is “copycat version of the Complainant’s website.” WIPO Overview 3.0, section 3.4. This impersonation is egregious. Respondent’s website asks “[w]anna be a Nova Babe?,” which is a name Complainant uses and has registered in the United States as a trademark for assorted apparel items. Respondent’s page then instructs Internet users to “[s]end us an email with links to your social media handles and front + side photos.” The Panel is unable to conceive of a legitimate purpose for this solicitation and Respondent offers no response to Complainant’s allegations of a nefarious intent. Complainant has satisfied 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 Disputed Domain Name, Lawrence K. Nodine 1 Respondent has fraudulently used a name of a person affiliated with Complainant’s employees when registering the Disputed Domain Name. No purpose will be served by including the name of Respondent in this decision, and the Panel has therefore redacted Respondent’s name from the caption and body of this decision. The Panel attaches as Annex 1 to this decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See The Hearst Foundations, Inc. and Hearst Communications, Inc v. Name Redacted,WIPO Case No. D2016-2479. 2 The Center did receive two emails from Respondent’s email address. The first email asked “What exactly does this mean?” The second declared, “We absolutely will dispute this process. A legal notice will be sent shortly.”
Sole Panelist
Date: January 3, 2021
Full & Egal Universal Law Academy