Complainant is Fashion Nova, LLC, United States of America (“United States”), represented by Ferdinand IP, LLC, United States.
Respondent is Blue Face, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 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 November 11, 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 November 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 7, 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, Fashion Nova, LLC, is a California based company, 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 numerous trademark registrations in the United States and around the world for the FASHION NOVA mark, including:
- United States Trademark Registration No. 4,785,854 registered on August 4, 2015; and
- International Trademark Registration No. 1460415 registered on March 7, 2019.
It also owns and operates the website at the domain name
Respondent registered the Domain Name on November 10, 2020. The Domain Name is being used to set up a website that purports to offer goods similar to those of Complainant, using hundreds of photographs owned by Complainant and displayed on Complainant’s website.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the FASHION NOVA marks and owns and operates a domain name incorporating the FASHION NOVA marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known Fashion Nova products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the FASHION NOVA mark, as noted above. Complainant has also submitted evidence, which supports that the FASHION NOVA mark is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the FASHION NOVA mark.
With Complainant’s rights in the FASHION NOVA mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s FASHION NOVA mark. This mark is entirely duplicated and recognizable in the Domain Name. The incorporation of the FASHION NOVA mark with the addition of the term “style”, in the Domain Name
Thus, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the FASHION NOVA mark, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the FASHION NOVA trademark or to seek registration of any domain name incorporating the trademark. Respondent is also not known to be associated with or commonly known by the FASHION NOVA mark.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is offering for sale similar goods on a website that attempts to pass itself off as Complainant, such as prominently displaying Complainant’s FASHION NOVA mark on Respondent’s website, using a layout/design that is similar to Complainant’s official website, including the use of hundreds of photographs that are displayed on Complainant’s website, all without any authorization or approval by Complainant. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name.
Moreover, the nature of the Domain Name carries a risk of implied affiliation with Complainant. See WIPO Overview 3.0, section 2.5.1.
Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the FASHION NOVA mark predates the registration of the Domain Name, more specifically, the FASHION NOVA mark, has been registered since at least as early as 2015, well before the registration of the Domain Name on November 10, 2020. Complainant is also well established and known. Indeed, the record shows that Complainant’s FASHION NOVA mark and related services are widely known and recognized, including in the United States where Respondent operates. Therefore, Respondent knew or should have known of Complainant and its FASHION NOVA mark at the time of registration of the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007. See also, Golden Goose S.P.A. v. Whoisguard Inc. / Wei Zhang,WIPO Case No. D2017-2444.
Further, Complainant has provided evidence indicating that Respondent is using the Domain Name to divert consumers to a website that offers for sale goods similar to those of Complainant and attempts to pass itself off as Complainant, such as prominently displaying Complainant’s FASHION NOVA mark, using a layout/design that is similar to Complainant’s official website, including the use of hundreds of photographs that are displayed on Complainant’s website, all without any authorization or approval by Complainant.
Therefore, Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s FASHION NOVA mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Such use of the Domain Name may also result in tarnishing Complainant’s reputation and affecting its business activities.
Here, the present circumstances, including the distinctiveness and reputation of the FASHION NOVA marks, the unauthorized and deceptive use of Domain Name to divert consumers looking for Complainant’s goods and services to Respondent’s website, the failure of Respondent to submit a response, support a finding of bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
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 Name,
Kimberley Chen Nobles
Sole Panelist
Date: December 13, 2021