The Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 3, 2020, 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 November 3, 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 November 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on December 4, 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 The Complainant was founded by Richard Hayne in 1970 in Philadelphia, United States. The Urban Outfitters brand has become reputable for on-trend women’s and men’s clothes, including: dresses, shoes, hats and beauty products. Clothing sold through the Urban Outfitters brand is eclectic, with references to cultures around the world. Furthermore, the Urban Outfitter brand, through its “Home” collection, offers products such as bedding, rugs, shower curtains and furniture. The Complainant’s “Music + Tech” collection offers media products such as vinyl, record players and tech accessories. The Complainant has achieved considerable commercial success under the Urban Outfitters brand, with a revenue of USD 4 billion in 2018. The Complainant was listed on the Nasdaq stock exchange in 1993. In 2000, the Urban Outfitters brand launched an online store. The Complainant uses its official website “www.urbanoutfitters.com”, to allow online users to browse and purchase clothing, lifestyle, beauty and home products. It is estimated that the Complainant’s official website garners about 14 million visits per month. The Complainant also offers an Urban Outfitters application, which is available on Apple and Google application stores. To date, the Complainant holds several registered trademarks for the term, Urban Outfitters, which are exhibited below: Trademark Jurisdiction Registration Number Registration Date Classes Covered URBAN United States 1323901 March 5, 1985 42 URBAN Switzerland 2P-423691 April 4, 1996 42 URBAN European 010182061 January 10, 2012 35 The Complainant further utilizes the URBAN OUTFITTERS trademark as part of its brand logo. The Complainant has also established a social media presence and uses its trademark URBAN OUTFITTERS to promote its services under this name, in particular on: - Twitter: 1 million followers - “www.twitter.com/urbanoutfitters”; The disputed domain name was registered on March 12, 2018, and redirects to the Complainant’s official website, “www.urbanoutfitters.com”. 5. Parties’ Contentions A. Complainant The Complainant owns registered trademarks for URBAN OUTFITTERS from which it has obtained the goodwill and recognition that has been attained under the name Urban Outfitters, which is a distinctive identifier associated with the Complainant’s services. Collaborations with famous artists and brands have increased the exposure of the Urban Outfitters brand and increased sales. The Complainant has partnered with famous artists and brands such as Justin Bieber, Lady Gaga, Adidas and Calvin Klein, amongst others, for clothing lines which achieved significant success. The Complainant offers a customer rewards scheme, “UO Rewards”. Members earn exclusive discounts, offers and access to giveaways featured under the Urban Outfitters brand. Members gain points by doing certain actions, such as leaving a review or making a purchase. Becoming a member of UO Rewards is facilitated through the Complainant’s official website. The Complainant also operates a blog, entitled “UO Blog”, on its official website. The articles featured on the blog include interviews, music playlists and advice on style trends and new releases. The Complainant also provides its customers with an option to sign up for a newsletter. The Complainant’s brick-and-mortar stores are renowned for their uniqueness, and are constructed by a team of designers and artists. In 2014, the largest Urban Outfitters retail store in the world was opened in New York, United States. It expanded into the European market in 1998, opening a store in London. The Complainant now maintains 256 stores across the United States, Canada and Europe, which offer experiential retail environments and a curated mix of women’s and men’s clothing. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s URBAN OUTFITTERS trademark. The disputed domain name In respect of the gTLD “.com” featured in the disputed domain name, the Complainant requests that the Panel disregards it under the first element as it is a standard registration requirement and the Complainant requests that the Panel concurs and classifies the disputed domain name as confusingly similar to the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy. The Complainant also submits that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant argues that to the best of its knowledge, the Respondent does not have any trademark rights to the term “Urban Outfitters”. The Complainant argues that there is also no evidence that the Respondent retains unregistered trademark rights to the term “Urban Outfitters”. Neither has the Respondent received any license from the Complainant to use domain names featuring the URBAN OUTFITTERS trademark. Paragraph 4(c) of the Policy stipulates some circumstances where the Respondent can demonstrate a right or legitimate interest in the disputed domain name. The Complainant submits that none of the circumstances applies in this case. The Respondent uses the disputed domain name The Complainant indicated that it has found no evidence of any demonstrable preparations to use the disputed domain name in connection with bona fide offering of goods or services. The Complainant argues that to the best of its knowledge, the Respondent is not commonly known by the distinctive term “Urban Outfitters”, nor is offering any goods or services by the term “Urban Outfitters”. Therefore, there is no plausible reason for the registration and use of the disputed domain name, other than the motive of keeping it from the Complainant and to take advantage of the goodwill and valuable reputation attached to the Urban Outfitters brand. Clearly, the mere ownership of a domain name does not confer a right or legitimate interest on the Respondent. The Complainant argues that its trademark URBAN OUTFITTERS is a fanciful term used to represent the Complainant’s goods and services. There is no generic or common usage for the term “Urban Outfitters”, nor has any evidence come to light since the disputed domain name’s registration in March 2018 that the Respondent had intended to use the disputed domain name in a way other than to target the Complainant. The Respondent’s usage of the disputed domain name, to redirect the online user to the Complainant’s official website, is clear evidence of the Respondent’s awareness of the Complainant’s URBAN OUTFITTERS trademark. The Complainant indicates that redirection to its website is not a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant argues that the Respondent intentionally misleads consumers by insinuating an affiliation with the Complainant’s business. Online users, seeing the redirection to “www.urbanoutfitters.com”, would reasonably assume that the disputed domain name is owned by the Complainant. It is plausible that such deception could be used subsequently by the Respondent for nefarious purposes, such as phishing. Therefore, the Respondent cannot be said to use the disputed domain name in a legitimate noncommercial or fair manner. The Complainant submits that the Respondent both registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. The Complainant’s earliest trademark registration predates the creation date of the disputed domain name by 33 years. In addition, substantial goodwill has accrued since the Complainant’s establishment in 1970; the Urban Outfitters brand has become synonymous with clothing and home accessories. The home collection of the Complainant has become very popular, selling furniture and home accessories, including rugs, curtains, art and mirrors. On Instagram, over 255,000 people have already posted pictures with the hashtag #UOHome, highlighting the popularity of the home collection created by the Complainant. The Complainant asserts that the Respondent also used the disputed domain name in bad faith prior to notice of the dispute. Finally, the Complainant submits that the Respondent advertises the disputed domain name for sale on the platform “www.sedo.com” for a minimum price of USD 899. While the offer to sell has not been made directly to the Complainant, the circumstances surrounding the registration and use is an indication of bad faith and suggests the Respondent was aware of the value of the disputed domain name as a trademark, as the term “Urban Outfitters” has no inherent meaning beyond its status as an already established brand. The Complainant submits that, in light of the evidence and principles outlined above, the disputed domain name has been registered and used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s mark. Mere addition of the word “home” does not prevent a finding of confusing similarity with the Complainant’s mark. The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used to redirect to the Complainant’s official website “www.urbanoutfitters.com” misleading consumers by insinuating an affiliation with the Complainant’s business, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (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 its 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 its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark URBAN OUTFITTERS is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Further, the Panel notes that the addition of “home” in the disputed domain name may refer to the Complainant’s area of business because through its “Home” collection, the Complainant offers products such as bedding, rugs, shower curtains and furniture. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the fact that the disputed domain name redirects to the Complainant’s official website. As such, the Panel is satisfied that by using the disputed domain name, the 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. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Thus, the Panel concludes that the disputed domain name was 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 Daniel Peña
OUTFITTERS
OUTFITTERS
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Union
- Instagram: 9.3 million followers - “www.instagram.com/urbanoutfitters”;
- Pinterest: 1.28 million followers - “www.pinterest.com/urbanoutfitters”.
Sole Panelist
Date: December 15, 2020
Full & Egal Universal Law Academy