Complainant is Fashion Nova, LLC, United States of America (“United States”), represented by Ferdinand IP, LLC, United States.
Respondent is NovaCopy Admin, NovaCopy, 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 29, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 5, 2021, 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 July 5, 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2021. The Center appointed Colin T. O'Brien as the sole panelist in this matter on August 20, 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 Complainant is an apparel company established in 2006. Complainant operates six retail stores as well as the website “www.fashionnova.com”. Complainant has a strong social media following with 20 million followers on Instagram, nearly 2.7 million followers on Facebook, 2.3 million followers on TikTok, and 161,000 followers on Twitter. In 2018 and 2019, Complainant was the No.1 most searched fashion label on Google. Complainant owns the following United States trademark registrations: FASHION NOVA, Registration No. 4,785,854, registered on August 4, 2015, in class 25; Complainant also owns trademark rights for FASHION NOVA in the following jurisdictions: Australia, European Union, Mexico, Canada, India, Republic of Korea, Japan, Norway, Singapore, Switzerland, Russian Federation, and United Kingdom. The Disputed Domain Name was registered on June 3, 2021. At the time of filing the Complaint, the Disputed domain Name resolved to a website identical to that of Complainant’s. 5. Parties’ Contentions A. Complainant The FASHION NOVA Mark is exclusively identified the quality goods and services emanating from Complainant. Complainant has acquired extensive goodwill and has developed a high degree of distinctiveness in the FASHION NOVA Mark throughout the world. The Disputed Domain Name is confusingly similar in appearance, sound, connotation, and commercial impression to Complainant’s FASHION NOVA Mark. The Disputed Domain Name is a near reproduction of the FASHION NOVA Mark. It is a slight variation with the letters “o” and “i” inverted and misspelled, and then the absence of a second letter “n”. Respondent has no rights or legitimate interests in or to the FASHION NOVA Mark. Respondent cannot claim it is commonly known by the Disputed Domain Name that includes a near reproduction of the FASHION NOVA trademark. The Disputed Domain Name was registered on June 3, 2021, many years after Complainant’s first use in commerce of the FASHION NOVA Mark on January 22, 2006. Neither Complainant, nor anyone acting on its behalf, has ever authorized Respondent to use the FASHION NOVA Mark in connection with the sale or promotion of any goods or services. The Disputed Domain Name is being used by Registrant in bad faith, namely, to pass itself off as Complainant or a partner or affiliated entity thereof, and thus to free-ride and profit off the market reputation and goodwill of the FASHION NOVA Mark. The Disputed Domain Name operates as an e-commerce website using the name “Fashion Nova” in a blatant attempt to lure Internet users to the website mistakenly believing that the website is the same as, or affiliated with, Complainant’s authorized website at “www.fashionnova.com”. Specifically, the website at the Disputed Domain Name has copied the home page of Complainant’s “www.fashionnova.com” official website in its entirety. The Disputed Domain Name’s e-commerce website is in fact a near identical working retail website, using photos taken from Complainant’s “www.fashionnova.com” website, that leads Internet users to a “Shopify” account at checkout presumably belonging to Respondent. Internet users are initially shown Complainant’s items, but ultimately at checkout, they are sold different items – a classic “bait and switch” situation. The construction of the e-commerce website operating at the Disputed Domain Name evidences Respondent’s bad faith intent to profit from Complainant’s legitimate website. Such bad faith use of the Disputed Domain Name, is a clear effort to divert Internet users from Complainant’s legitimate e-commerce website, and to sell the same type of goods to Internet users by using a website that features hundreds of Complainant’s photos cannot constitute a bona fide offering of goods and services. Additional, the copyright notice at the bottom of Respondent’s website operating at the Disputed Domain Name lists the copyright owner as Complainant, thus further drawing an intentionally false and misleading connection with Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated it owns registered trademark rights in the FASHION NOVA Mark and that FASHION NOVA has achieved a global level of fame. The Disputed Domain Name incorporates a misspelling of the FASHION NOVA Mark, with the letters “o” and “i” inverted and the omission of the letter “n” from either “fashion” or “nova”. The inversion of letters “o” and “i” and omission of the letter “n” do not prevent a finding of confusing similarity between the Mark and the Domain Name. See sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the Top Level Domain (“TLD”) “.shop” is viewed as a standard registration requirement and can be disregarded under the first element confusing similarity test. Accordingly, the Disputed Domain Name is confusingly similar to the Mark in which Complainant has rights. B. Rights or Legitimate Interests Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not at any time been commonly known by the Disputed Domain Name. The fact that Respondent registered the Disputed Domain Name, which is a misspelling of Complainant’s famous FASHION NOVA Mark combined with the TLD “.shop” that is descriptive of Complainant’s services, indicates that Respondent likely sought to use the Disputed Domain Name, and the implied affiliation caused thereby, to make money through creating a website which mirrors Complainant’s website in order to sell products that infringe on or compete with Complainant’s goods. See section 2.5.1 of the WIPO Overview 3.0. “After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name.” See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name; rather, the evidence suggests that the Disputed Domain Name was registered by Respondent to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. C. Registered and Used in Bad Faith The Panel finds that Complainant has satisfied its burden of proof in establishing Respondent’s bad faith in registration and use of the Disputed Domain Name. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain. Due to the worldwide renown of the FASHION NOVA Mark, it is inconceivable that Respondent registered the typosquatting Disputed Domain Name in the “.shop” TLD without knowledge of Complainant. The Disputed Domain Name is used for a website that appears to be selling FASHION NOVA products, but Complainant has established that Respondent's use is not authorized, and in fact Respondent’s website is a direct copy of Complainant’s website that, upon checkout, actually leads to an unrelated Shopify account, presumably held by Respondent, through which Internet users are sold goods that infringe on or compete with Complainant’s goods. The facts establish a deliberate effort by Respondent to cause confusion with Complainant for commercial gain. Under these circumstances, the Panel finds no plausible good faith reason for Respondent's conduct, and concludes that the Disputed Domain Name was registered and 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 Colin T. O'Brien
FASHION NOVA, Registration No. 5,328,984, registered on November 7, 2017, in class 25;
FASHION NOVA CURVE, Registration No. 5,421,675, registered on March 13, 2021, in class 25;
FASHIONNOVA, Registration No. 5,886,070, registered on October 15, 2019, in class 35;
FASHIONNOVA.COM, Registration No. 5,892,024, registered on October 22, 2019, in class 25;
FASHIONNOVA, Registration No. 5,869,081, registered on September 24, 2019, in class 25;
FASHIONNOVAMAN, Registration No. 5,887,124, registered on October 15, 2019, in class 25;
FASHIONNOVAMEN, Registration No. 5,887,125, registered on October 15, 2019, in class 25.
Sole Panelist
Date: September 2, 2021
Full & Egal Universal Law Academy