The Complainant is The Net-a-Porter Group Limited, United Kingdom, represented by SILKA AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Domain Admin, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2021, 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 April 19, 2021 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 amendment to the Complaint on April 20, 2021. The Center verified that the Complaint together with the amendment to the 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 26, 2021. 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, The Net-a-Porter Group Limited, is an e-commerce business which sells a wide range of designer apparel, featuring collections from hundreds of designers shipped to customers all over the world. MR PORTER was launched in February 2011 by the Complainant and offers menswear and luxury brands, including categories that range from luxury watches and lifestyle through to own labels Mr P. and Kingsman. The Complainant owns several trademark registrations for MR PORTER. These registrations include, inter alia: - European Union trademark MR PORTER with registration No. 009447772, registered on March 25, 2011, in International class 35; - European Union trademark MR PORTER with registration No. 012129144, registered on February 3, 2014, in International classes 9, 16 and 41; - European Union trademark MR PORTER with registration No. 017947271 registered on August 20, 2020, in International classes 3, 9, 16, 21, 35, 38, 39, 42, 43. The Complainant has also a pending United Kingdom trademark registration for MR PORTER FUTURES, with application No. UK00003607715, in International classes 35 and 41, applied on March 10, 2021. The Complainant operates its main website connected to its domain name The disputed domain name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that the disputed domain name is identical and confusingly similar to the Complainant’s MR PORTER trademarks. It represents that the disputed domain name reproduces the MR PORTER trademark in its entirety with the addition of the generic word “futures”. According to the Complainant, the word “futures” is closely connected to the Complainant since the Complainant has a pending trademark application for MR PORTER FUTURES. The Complainant further contends that the generic Top-Level Domain (“gTLD”) “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the fact that the Respondent registered and sought to sell the disputed domain name on the same day as the Complainant applied for its United Kingdom trademark corresponding to the disputed domain name suggest a scheme to derive unfair advantage of the Complainant. Moreover, the Complainant states that the Respondent is not making a fair use of the disputed domain name, as the Respondent has used the disputed domain name only to direct users to a parked website offering the disputed domain name for sale. (c) the disputed domain name was registered and is being used in bad faith. The Complainant asserts that, at the time of registration of the disputed domain name, the Respondent knew the existence of the Complainant’s trademark since the disputed domain name was registered after the Complainant’s rights in the name MR PORTER, and on the same date as the Complainant applied for its MR PORTER FUTURES trademark in the United Kingdom. By relying on section 3.1 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Complainant maintains that the Respondent was aware of the Complainant’s trademark applications MR PORTER FUTURES and that the disputed domain name was registered in anticipation of such application maturing into registrations and viable trademark rights and as such constitutes both a registration and use of the disputed domain name in bad faith. The Complainant further contends that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent trademark rights in MR PORTER FUTURES. The Complainant also makes note of the fact that the Respondent’s use of a privacy shield constitutes in the circumstances of this case a factor indicating bad faith. Lastly, the Complainant states that the fact that the Respondent is offering the disputed domain name for sale strongly suggests that the Respondent acted with the intention to commercially profit from the Complainant’s anticipated nascent trademark rights. Under these circumstances, the registration and the use of the disputed domain name in anticipation of the Complainant’s accruing trademark rights in the term MR PORTER FUTURES justifies the finding of an acting of the Respondent in bad faith within the meaning of the third element under the UDRP. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s). First, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in MR PORTER. Secondly, the disputed domain name fully incorporates the Complainant’s MR PORTER trademark in which the Complainant has rights. Thirdly, the Panel finds that the addition of the term “futures” does not make the disputed domain name distinctive from the Complainant’s MR PORTER trademark since the Respondent includes in the disputed domain name the entirety of the Complainant’s MR PORTER trademark (see Milipol v. Herbert Szekely,WIPO Case No. D2013-1752,). When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy (see WIPO Overview 3.0, section 1.8 and the relevant decisions cited therein). Lastly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed a standard registration requirement and as such is disregarded in this case. On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads: “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 a 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.” This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is a well-established view of the UDRP Panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338). In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors: - there is no evidence that the Complainant has granted any license or permission to the Respondent to use the disputed domain name; In fact, the evidence shows that the Respondent puts the disputed domain name for sale at the domain name market place “dan.com”. Finally, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previously rendered UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S. p. A. v. Yoon-Min Yang,WIPO Case No. D2005-0090). For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads: “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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”. With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the MR PORTER trademarks prior to registering the disputed domain name. Such is true in the present where the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the MR PORTER trademarks in 2011, 2014 and 2020 respectively. The Complainant’s reputation and its presence on the Internet makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights. This conclusion is enhanced by the fact that the Respondent’s registration of the disputed domain name was made on the same date the as the Complainant’s application for registration of the MR PORTER FUTURES trademark within the United Kingdom Intellectual Property Office. This demonstrates the Respondent’s knowledge of and familiarity with the Complainant’s brands and business and reveals the Respondent’s intent to unfairly capitalize on the Complainant’s nascent trademark rights. Furthermore, it is the Panel’s conviction that the word “futures” strengthens the association as it corresponds to the Complainant’s pending trademark application MR PORTER FUTURES. Moreover, the Respondent’s engagement in pattern of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith. There is ample authority in previously decided cases that a pattern of abusive behaviour following registration is by itself indicative of bad faith (see Citigroup, Inc v. Party Night Inc. aka Peter Carrington,WIPO Case No. D2003-0480 and Match.com, L.P. v. Amjad Kausar,WIPO Case No. D2003-0510). The Panel also finds that the Respondent’s registration through a privacy shield and its deliberate attempt to conceal its true identity is evidence of its bad faith use and registration. As for the use of the disputed domain name, the Complainant has shown that the disputed domain name resolves to a web page indicating that the disputed domain name is for sale for a sum presumably in excess of the registration costs. In the terms of the Policy paragraph 4(b)(i), the Respondent registered the disputed domain name primarily for the purpose of selling, or otherwise transferring their registrations to the owner of the trademarks for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. This is a circumstance of registration and use in bad faith of the disputed domain name (see Teva Pharmaceutical Industries Ltd v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2019-2835). Moreover, this Panel finds that the Respondent’s failure to respond to the Complainant’s notice letters and emails and its failure to submit a Response is an additional circumstance demonstrating the Respondent’s bad faith. In light of the foregoing, this Panel finds that the disputed domain name was registered in bad faith and is being used by the Respondent in bad faith under 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 Benoit Van Asbroeck
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place, as the disputed domain name currently resolves to a web page offering the disputed domain name for sale.
Sole Panelist
Date: June 9, 2021
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