The Complainant is Yoox Net-a-porter Group, Italy, represented by SILKA Law AB, Sweden.
The Respondent is Josef Huber, France. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2020. On February 24, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 25, 2020, the Registry 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 March 4, 2020, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 4, 2020. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for the Response was April 23, 2020. The Respondent did not submit any response. Accordingly, the Center noted the Respondent’s default on April 24, 2020. The Center appointed Petra Pecar as the sole panelist in this matter on May 5, 2020. 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 ADR Rules, Paragraph B(5). 4. Factual Background The Complainant was founded in October 2015 following the merger of YOOX Group and THE NET-A-PORTER GROUP, and the Complainant is the owner of four multi-brand online stores (NET-A-PORTER, MR PORTER, YOOX and THE OUTNET) and numerous online flagship stores. Through this 2015 merger, the Complainant gained control over THE NET-A-PORTER GROUP which holds the registration of the NETAPORTER mark, including several European Union trademarks (EUTM), such as EUTM No. 010961217 registered on November 9, 2012, and EUTM No. 010961241 registered on November 5, 2012. The Respondent is an individual based in France. The disputed domain name was registered on April 23, 2019. Currently, it does not resolve to any active webpage, but based on the evidence provided by the Complainant, the disputed domain name used to resolve to a web shop that offered products for sale at a discounted price. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the disputed domain name induces consumers into visiting the related website under the misapprehension that the website was endorsed by the Complainant where the Complainant offers products for sale at a discounted price. At the bottom of the site to which the disputed domain name had resolved, a note was added “Copyright © 2020 www.netaportershop.eu. Powered by www.netaportershop.eu”, which creates the impression that Respondent has rights in the name NETAPORTER. It was further added that the potential customer can also create an account on this website, which can lead to the sharing of sensitive information and that such a request for sensitive information on a site which the Complainant does not control is not only a security threat but can also cause bad will if the information obtained is used in a manner which does not conform to the Complainant’s security measures. In accordance with the above, the Complainant contends that an attempt to collect Internet users’ personal information by using a confusingly similar domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use activity. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, is not in any manner authorized to make use of the NETAPORTER mark, and is not commonly known by the term NETAPORTER, which in combination with the term “shop” does not have any standalone meaning that would not be related to the Complainant. The Complainant also adds that the fact that the registration date of the disputed domain name is predated by the date of registration of the Complainant’s trademarks further demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name. Further, the Complainant adds that it has never granted permission or a license to the Respondent to use its NETAPORTER trademark and that the Respondent deliberately opted to choose the disputed domain name which fully incorporates the Complainant’s trademark in combination with the closely related term “shop”. The Complainant concludes that the absence of an identifiable connection between the Respondent and the disputed domain name that consists of the trademark NETAPORTER and the word “shop” indicates a complete lack of any rights or legitimate interests in the disputed domain name. The Complainant also argues that the disputed domain name has been registered and used in bad faith. In particular, the Complainant contends that the addition of the generic term “shop” gives the impression that the Respondent’s website is run or at least approved by the Complainant as an online store where Internet users can purchase goods from the Complainant. In addition, the Complainant argues that the Respondent’s website is used for fraudulent purposes, i.e., to gather personal data of Internet users who mistakenly believe they are shopping for the Complainant’s goods. A quick search on the Internet for the word NETAPORTER and NETAPORTER SHOP would have alerted the Respondent of the rights related to the Complainant. According to the Complainant, this represents a strong indication of the Respondent’s bad faith when registering the disputed domain name. The Complainant has also indicated and presented evidence of its attempts to contact the owner and the webhost to close down the website on numerous occasions, advising about the unauthorized sale and use of the disputed domain name, but no response was ever received. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that: (i) the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either (ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or (iii) the domain name has been registered or is being used in bad faith. In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (i), (ii) and (iii) above). The Panel notes that the Regulation and ADR Rules list the issues under points (ii) and (iii) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding. A. Identical or Confusingly Similar to a Name in Respect of Which a Right or Rights Are Recognized or Established by National Law of a Member State and/or European Union Law Article 21(1) of the Regulation states that “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law, such as the rights mentioned in Article 10(1)”. Article 10(1) of the Regulation refers to, inter alia, registered national trademarks and EUTMs. Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”. The Panel notes that the owner of the European Union Trademarks for NETAPORTER (in particular EUTM 010961217 and EUTM 010961241) is the company Net-a-Porter Group Limited, United Kingdom, i.e. a different legal entity from the Complainant. Although the Complainant has failed to present any evidence on the nature of its entitlement to use and enforce the trademarks on which the Complaint is based, it has provided information about the 2015 merger between YOOX Group and THE NET-A-PORTER GROUP through which the Complainant is formed. The additional investigation performed by the Panel in accordance with the powers granted under Paragraph B (7)(a) of the ADR Rules, has confirmed that the Complainant controls the company Net-a-Porter Group Limited which is the owner of the NETAPORTER trademarks. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in Section 1.4.1 stipulates that “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”. In that sense, it should be considered that if the subsidiary of a parent or holding company has a right in a trademark owned by a parent company or by a holding company, then a parent company or holding company should also have a right in a trademark owned by its subsidiary. The same conclusion has also been drawn by former ADR panels (see in particular Microsoft Corporation and Microsoft Limited v. Greenlight Tech Services Limited,WIPO Case No. DEU2018-0026). Bearing in mind the above, the Panel considers that the Complainant has the right to the NETAPORTER trademark within the meaning of Article 21(1) of the Regulation. For the sake of consistency, NETAPORTER trademarks shall be referred to as “Complainant’s trademarks”. The disputed domain name Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark NETAPORTER, in respect of which a right of the Complainant is established under the European Union law. The condition set forth in Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules is therefore fulfilled. B. Rights or Legitimate Interests Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules provide a non-exhaustive list of circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for the purposes of Paragraph B(11)(d)(1)(ii) of the ADR Rules. These circumstances include, inter alia, that prior to any notice of the dispute, the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so, that the Respondent has been commonly known by the disputed domain name and that the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law. Based on the arguments provided by the Complainant and the lack of any evidence to the contrary, the Respondent does not appear to be connected or associated with the Complainant in any way. The Complainant has not granted any license or permission for the Respondent to use its trademark or to apply for or use any domain name incorporating such trademark. Also, the Respondent does not appear to be commonly known by the disputed domain name. The Respondent’s name is Josef Huber, with no clear connection with the name NETAPORTER. Based on the evidence provided from the Complainant, the disputed domain name used to resolve to a website with an online store that has clearly impersonated the Complainant’s trademarks and overall appearance. Such use of the domain name cannot be observed as a legitimate and noncommercial or fair use of the disputed domain name, as the same is apparently intended to mislead consumers to believe that they are visiting a website of the Complainant or which is connected with or endorsed by the Complainant. As the Respondent has failed to submit any response to the Complaint and bearing in mind the evidence presented by the Complainant, the Panel concludes that sufficient evidence is presented in respect of the Respondent’s lack of any rights or legitimate interests related to the disputed domain name. Given all the circumstances determined above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the condition under Article 21(1)(a) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules is satisfied. C. Registered or Used in Bad Faith Although the Panel has determined that the Complainant has sufficiently met the criteria for the second condition under Article 21(1)(a) of the Regulation, and it is therefore unnecessary for the Complainant to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented. Further, the third ADR condition is posed alternatively, meaning that it is sufficient for the Complainant to prove that the disputed domain name is either registered or used in bad faith. As the Complainant has provided arguments in support of both registration and use in bad faith, the Panel will examine both grounds for the sake of completeness. The Complainant registered its NETAPORTER trademarks and operated its businesses thereunder long before the registration of the disputed domain name. Therefore, it seems unlikely that the Respondent was unaware of the Complainant and its businesses at the time of the registration. Quite the opposite, taking all other circumstances of the case at hand into account, the Panel finds that the Respondent had Complainant and its businesses in mind when registering the disputed domain name. The results of even a brief Internet search would indicate that all first-page results are related to the Complainant, making it unlikely that the Respondent was unaware of the Complainant and its businesses performed under the NETAPORTER trademarks at the time of the registration of the disputed domain name. The disputed domain name has been used for an online store that impersonates Complainant and its trademarks which should be observed as a strong indicator of bad faith on the Respondent’s side. In addition, there are some plausible indications that the disputed domain name has been used to operate a phishing website which allowed the collection of personal data of Internet users who mistakenly believed they were shopping on the website connected to the Complainant. Such undertaking should be strongly associated with bad faith use of the disputed domain name. In the light of all facts presented by the Complainant and also in the light of the Respondent’s failure to respond to these facts, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and therefore, the third condition of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules is fulfilled as well. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name Petra Pecar 1 Given the substantial similarities between the ADR Rules and Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel will refer to UDRP jurisprudence, where appropriate.
Sole Panelist
Date: May 23, 2020
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