Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
Respondent is Carmen Risio, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 10, 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 September 15, 2021.
On September 15, 2021, the Respondent sent an informal email communication.
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 September 22, 2021. On September 22, 2021, the Respondent sent another informal email communication.
In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. Respondent did not submit any formal response. Accordingly, the Center notified the Parties on Commencement of Panel Appointment Process on October 13, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 19, 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 BackgroundComplainant describes itself as “a multinational lifestyle retail corporation” which owns a portfolio of clothing and retail brands including, but not limited to, URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE. Complainant’s global net sales in fiscal year 2021 were USD 3.45 billion.
Since 1992, Complainant’s subsidiary Anthropologie, Inc. has offered “a unique and eclectic product assortment which includes women’s casual apparel, accessories, intimates, shoes, home furnishings, gifts, decorative items, as well as beauty and wellness products”. This subsidiary (hereinafter referred to as “Complainant”) operates more than 200 retail stores, and since 1998, has offered its ANTHROPOLOGIE products at the website “www.anthropologie.com”.
Complainant has also used the mark ANTHRO to refer to its goods, as is reflected in various materials annexed to the Complaint.
Complainant holds registered trademarks including ANTHROPOLOGIE, registered on December 28, 1993 with the United States Patent and Trademark Office (“USPTO”), Reg. No. 1,814,261, and ANTHRO, registered on February 17, 2015, USPTO Reg. No. 4,687,759.
In February 2020, Complainant launched a new brand, ANTHROLIVING, to advertise its “Anthropologie Home” sector. The new brand ANTHROLIVING was extensively marketed in February 2020, including in Complainant’s Facebook and Instagram accounts, and in emails to Complainant’s subscribers. In addition, the launch of the ANTHROLIVING brand received media attention, as is reflected in various materials annexed to the Complaint.
The Domain Names
On June 17, 2021 and June 25, 2021, Complainant’s counsel sent cease-and-desist messages to Respondent via the “Contact Us” feature on Respondent’s site. Complainant’s counsel asserted Complainant’s ANTHROPOLOGIE trademark rights, and then asserted:
It has come to our attention that you have registered the Infringing Domain Names without any prima facie rights to, or legitimate interest in said names and without any express written authorisation from our client. The domain name anthroliving.com currently resolves to a site which purports to provide articles under categories such as “Beauty”, “Fitness” and “Home & Co.”. The domain name anthropologyliving.com currently redirects Internet users to “anthroliving.com”.
Respondent did not reply to Complainant’s cease-and-desist missives. The Complaint in this proceeding followed.
On September 15 and 22, 2021, Respondent sent an email (the same) to the Center to explain his conduct vis-à-vis the Domain Names. The entire substance of that email is set forth below:
“The first time I learned about the complaintWIPO Case No. D2021-2938 on Sep. 8, 2021, was via a forwarded email from UDRPdisputes GoDaddy in email correspondence to Mr. Powders, whose client is Urban Outfitters Inc.
I was very confused about what this email was about. So I emailed GoDaddy and Mr. Powders asking about the matter of the dispute but was assuming it was regarding some content I posted on my blog.
Although all the content on my anthroliving.com blog has been purchased via a website named ‘https://www.constant-content.com’ or written by myself. And the images were bought from Adobe stock. Both sources allow redistributing of text and images if paid for.
I prematurely on Sep. 8, 2021, without yet hearing back from GoDaddy or Mr. Powders deleted my blog thinking this will solve the complaint. I already had in mind to regroup my anthroliving.com blog as it was still a work in progress. The WordPress template (my blog) was downloaded as a demo template meaning the blog was not completed yet. So some of the links were not fully functioning and some wording was thought of as placeholders. So I did not mind deleting the anthroliving.com WordPress site for the time being.
After learning on Sep. 9, 2021, by email from Mr. Powders what the complaint is about, I realized I have deleted my blog prematurely. I should have kept the blog to prove that nothing on my blog has to do with Mr. Powders client’s brands and I have no ill intention towards the business. I am not able to reinstate the blog at this time because the domain names are locked by GoDaddy. There is also only a 14-day window (blog deleted on Sep. 8, 2021) where I can reinstate the blog if needed for this case.
When I picked the blog name anthroliving.com I chose the domain name because it’s a combination of two common and generic words and they sounded well for what I was looking for in a blog name and the purpose of the content of my blog. Adding anthropologyliving.com was just an addition because it’s the proper spelling and Anthro is only the shortcut for Anthropology. I believe the words Anthro, Living, and Anthropology are very common and generic words used by so many different websites, businesses, and organizations.
In regards to anthroliving.com, the main domain of my blog: I purchased the domain and used the name on my blog before its USPTO filing date on May 25, 2021. I have no ill intentions by using anthroliving.com or anthropologyliving.com in regards to infringing on the business trademarks or brand of Mr. Powders client.
I received two different emails on Sep. 9, 2021. One from GoDaddy and one from Mr. Powders. GoDaddy explained that the domains are locked for now during the process with the caseWIPO Case No. D2021‑2938 pending. And Mr. Powders explaining what the complaint was about.
Mr. Powders also attached a settlement form to the email asking me to sign over the ownership of the two domains. Saying the legal proceeding will then end, and his client will consider this to be the end of the matter. I decided not to sign the settlement that was sent to me by Mr. Powders.
I feel strongly that I am not harming or infringing on the business trademarks or brand by using a combination of three very generic and common words (between both domains). Words that are used by so many business owners, blog owners, and organizations. Also, I was using the domain anthroliving.com in the form of a blog with no ill intentions of harming Urban Outfitters Inc. prior to receiving this dispute and prior to the USPTO filing for Anthro Living by Urban Outfitters Inc.”
Respondent’s September 15, 2021 email nor Respondent’s September 22, 2021 email make no reference to Complainant’s prior cease-and-desist letters.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Names.
B. RespondentRespondent did not formally reply to Complainant’s contentions. The entirety of Respondent’s substantive response is quoted above.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the trademarks ANTHROPOLOGIE and ANTHRO through registration and use demonstrated in the record. The Panel also concludes that there is sufficient record evidence to conclude that Complainant has acquired common law rights in the mark ANTHROLIVING.
The Panel concludes that the Domain Names are confusingly similar to the ANTHRO and ANTHROPOLOGIE marks, as those marks are clearly recognizable in the Domain Names. The Panel also finds that the Domain Name
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsFor each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent’s explanation that he registered the Domain Names because they are a mere combination of two common words that, taken together, are a good fit for his purported blog is not convincing. First, the Domain Name
Second, there is considerable overlap between the subject matter of Respondent’s website content and the products offered by Complainant under its trademarks, including home furnishings, health and beauty, and the like.
Third, Respondent’s credibility in this proceeding is open to question. In his email to the Center, Respondent stated that he had not received any notice of this dispute until he received the Complaint in this proceeding. This assertion flies in the face of the two cease-and-desist letters sent to Respondent in June 2021, which letters Respondent does not even address in his email to the Center. If Respondent had never received these missives, one would expect Respondent to have said so. In addition, Respondent does not dispute Complainant’s allegation that he was advertising kitchen products at his website when the site was up and running. Finally, if Respondent had never heard of the ANTHRO, ANTHRPOLOGIE, and ANTHROLIVING marks, one would have expected him to say so. He did not.
For the foregoing reasons, the Panel concludes, based on the record presented and on the unsupported and implausible assertions in Respondent’s account, that Respondent more likely than not registered the Domain Names with awareness of Complainant’s marks, and that his aim was to derive commercial gain from those marks via consumer confusion.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithFor each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. On that basis, the Panel concludes, on this record and on a balance of probabilities, that Respondent targeted Complainant’s marks and used the Domain Names in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names
Robert A. Badgley
Sole Panelist
Date: November 2, 2021