The Complainant is Fashion Nova, LLC, United States of America (“United States”), represented by Ferdinand IP, LLC, United States.
The Respondent is Blue Face, United States. 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 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 16, 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 amended Complaint on June 16, 2021. 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2021. The Center appointed Evan D. Brown as the sole panelist in this matter on July 22, 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 is in the brick-and-mortar and e-commerce fashion business and has used the mark FASHION NOVA since at least as early as 2006. It owns a number of registrations around the world for the FASHION NOVA mark, including United States Reg. No. 4,785,854 registered on August 4, 2015. The disputed domain name was registered on December 2, 2020. The Respondent has used the disputed domain name to set up a website that purports to offer goods similar to those of the Complainant, using hundreds of photos owned by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being 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. A. Identical or Confusingly Similar This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant owns registrations for the FASHION NOVA mark. The disputed domain name incorporates the FASHION NOVA mark in its entirety – this is sufficient here to establish confusing similarity. The presence of the additional dictionary words “top” and “shop” does not prevent a finding of confusing similarity. The Panel finds that the Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts that: - The Respondent cannot claim that it is commonly known by the disputed domain name. - The Respondent’s use of the disputed domain name is not a fair use. - The Complainant has not authorized the Respondent to use the FASHION NOVA mark in connection with the sale or promotion of any goods or services. - The Respondent’s use of the disputed domain name is an attempt to pass itself off as the Complainant. - The design of the Respondent’s website is a bad-faith effort to mislead the public that the website is operated by the Complainant. The use of the disputed domain name in connection with the Respondent’s website is not a bona fide use. These facts establish the Complainant’s prima facie showing. The Response does not introduce evidence or argument to rebut this prima facie showing. The Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location”. The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to mislead visitors in the manner in which the Respondent has done, using the disputed domain name that incorporates the Complainant’s mark, is a clear example of bad faith registration and use under the Policy. See, Golden Goose S.P.A. v. Whoisguard Inc. / Wei Zhang,WIPO Case No. D2017-2444. The Panel finds that the Complainant has established the third element 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 Evan D. Brown
Sole Panelist
Date: August 5, 2021
Full & Egal Universal Law Academy