The Complainant is Fashion Nova, Inc., United States of America (the “United States”), represented by Ferdinand IP, LLC, United States.
The Respondent is WhoisGuard, Inc., Panama / Antor Hasan, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2019, 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 November 4, 2019 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 November 4, 2019. 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on December 2, 2019. 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, Fashion Nova, Inc., owns and operates a highly successful fashion e-commerce website at “www.fashionnova.com” on which its offers many goods and services since 2006. The Complainant is the owner of the trademark containing or comprising FASHION NOVA across various jurisdictions and possesses a numerous trademark registrations. These registrations include: - United States trademark with registration No. 4785854, registered on August 4, 2015, in International class 25; The Complainant asserts that the FASHION NOVA trademark is extensively displayed on social media sites, on promotional and point of sale materials. The Complainant further states that the FASHION NOVA trademark is well-known through use, extensive promotion and advertising. Additionally, the Complainant is also the registrant of the domain name The disputed domain name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant maintains that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. It represents that the disputed domain name reproduces the term “Fashion Nova” in its entirety, except in respect of the Top-Level domain (“TLD”) “.me”. The Complainant also points to the clear similarity of the FASHION NOVA trademark in its entirety as to appearance, sound, connotation and commercial impression. (b) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is commonly known under the name of the disputed domain name. Additionally, the disputed domain name was registered many years after the Complainant’s first use of the FASHION NOVA trademark on January 22, 2006. The Complainant has also never given any authorization to the Respondent to use the FASHION NOVA trademark in connection with the sale or promotion of any goods or services. Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. Nor are they any indications of demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services, or for noncommercial purpose. In fact, the disputed domain name used to resolve to a website that was a virtual identical copy of the Complainant’s website in a clearly bad-faith effort to mislead the public into the false belief that the website accessible at the disputed domain name is in fact operated by the Complainant. Additionally, the disputed domain has been used to redirect users to a print-on-demand website for t-shirts to be located in Asia. The Respondent’s conduct amounts to passing off. As such it cannot amount to the bona fide offering of goods and services. (c) The disputed domain name was registered and is being used in bad faith. Upon the Complainant’s information and belief, the Respondent is using the disputed domain name to pass himself off as the Complainant to free ride on the market reputation and goodwill of the Complainant’s trademark and to benefit from it. The Complainant further states that the Respondent’s bad faith registration should be based on the appearance of the disputed domain name which is virtually identical to the Complainant’s e-commerce website, as evidenced in Annexes 4, 10, and 11 of the Complaint. When viewing the website of the Respondent, it becomes clear that the Respondent has voluntary attempted to attract and/or divert Internet users to the disputed domain name for commercial purposes by suggesting that he is linked to the Complainant. To this end, there is no question that the disputed domain name is an exercise in passing off. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s). First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in FASHION NOVA. Secondly, it is clear that the Complainant’s trademark is reproduced in its entirety. This Panel further finds, similarly to other UDRP panels, that the addition of the TLD “.me” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded. It does not prevent a finding of confusing similarity. On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is identical or confusingly similar to the Complainant’s FASHION NOVA trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you 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 (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 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.” This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338). In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors: - there is no evidence that the Respondent has been commonly known by the disputed domain name; - there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant; - there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place. In addition, the Panel notes that the disputed domain name reproduces the Complainant’s trademark in its entirety which carries a risk of implied affiliation. For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads: “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”. With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the FASHION NOVA trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained most of its trademark registrations for the FASHION NOVA trademark. The Complainant’s extensive presence on the Internet and social media sites makes it disingenuous for the Respondent to claim that it was unaware of the Complainant’s trademark rights. As to the use of the disputed domain name, the Complainant submits that the disputed domain name may have been registered primarily for commercial purposes which constitute bad faith registration. The evidence shows that the disputed domain name resolved to a page purporting to be offering services in the exact same field of endeavor as the Complainant, i.e. fashion, seeking commercial gain, copying content and layout of the Complainant. This may confuse Internet users and attract them to the Respondent’s website, thus disrupting the Complainant’s business, which supports a finding that the Respondent uses the disputed domain name is bad faith under Policy, paragraph 4(b) (iii) and (iv). According to the Complainant, the Respondent was also using the disputed domain name to direct consumers to a print-on-demand website for t-shirts. The suggestion that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content is a reasonable one” (see Altavista Company v. Brunosousa, aka Bruno Sousa,WIPO Case No. D2002-0109). At the time of the Decision the disputed domain name does not resolve to an active website. However, non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered whether, in the circumstances of this particular case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. Relying on Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel concludes that the Complainant has proven bad faith under the passive holding doctrine. In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith 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 Benoit Van Asbroeck
- United States trademark with registration No. 5656374, registered on January 15, 2019, in International class 25;
- United States trademark with registration No. 5421675, registered on March 13, 2018, in International class 25;
- United States trademark with registration No. 5328984, registered on November 7, 2017, in International class 25;
- United States trademark with registration No. 5577210, registered on October 2, 2018, in International class 25;
- United States trademark with registration No. 5869081, registered on September 24, 2019, in International class 25;
- United States trademark with registration No. 5892024, registered on October 22, 2019, in International class 25;
- United States trademark with registration No. 5891994, registered on October 22, 2019, in International class 35;
- United States trademark with registration No. 5887124, registered on October 15, 2019, in International class 25;
- United States trademark with registration No. 5887115, registered on October 15, 2019, in International class 25;
- United States figurative trademark with registration No. 5886070, registered on October 15, 2019, in International class 35.
Sole Panelist
Date: December 16, 2019
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