The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Winston & Strawn LLP, United States of America.
The Respondent is James Burrows of the company high50 Ltd in London, United Kingdom.
The disputed domain names <net-a-porter50.com> and <netaporter50.com> (the “Domain Names”) are registered with Webfusion Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013.
On April 12 and 15, 2013, the Center received the two email communications from the Respondent indicating its willingness to settle the dispute with the Complainant. On April 12 and 16, 2013, the Center invited the Complainant to comment if it was willing to explore the settlement between the parties. However, the Center did not hear from the Complainant on this matter by the specified Response due date. Accordingly, the Center informed the parties by email that it would proceed with the panel appointment on May 2, 2013. On the same day, the Respondent reiterated its willingness to transfer the Domain Names to the Complainant.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 14, 2013. 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.
The Complainant to these proceedings has simultaneously made another Complaint against a third party in regard to another disputed domain name. The Center has requested that Charters Macdonald-Brown be Panelist for both proceedings in order to consolidate the Complaints.
The Complainant is the owner of the Net-a-Porter business, which operates via a website using domain name <net-a-porter.com> (the “Website”). Through the Website, the Complainant retails luxury fashion and couture clothing items. Designer brands sold on the Website include Burberry, Mulberry, and Jimmy Choo, among many others. The Complainant’s business, operated from the Website, has won numerous awards since its formation, and the Website was included in Time Magazine’s 2008 list of “50 Best Websites”. The Website also gains significant public attention through advertisement on social media sites such as Facebook (“www.facebook.com/netaporter”) and Twitter (“www.twitter.com/netaporter”). The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. (It is noted in relation to the registered trademarks and domain names mentioned below that until July 28, 2011, the Complainant was known as Net-a-Porter Ltd).
The Complainant submitted in its Complaint that it “owns a large number of trademark registrations worldwide for NET-A-PORTER (the NET-A-PORTER MARKS) ”. The Complainant then went on to provide at Annex 6 to its Complaint a printout of United States trademark registration 2661220 NET-A-PORTER from the United States Patent and Trademark Office (USPTO) register; a printout of United Kingdom trademark 2261318 NET-A-PORTER from the United Kingdom Intellectual and Property Office (UKIPO) register; and a trademark search conducted through a tool called “Corsearch” which shows one United Kingdom registered trademark for NET-A-PORTER (registration no. 2261318, as specified above).
The Panel may undertake limited factual research into matters of public record in the process of making its Decision (Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679). In this case, the Panel has carried out a number of preliminary trademark searches to gain a fuller picture of the Complainant’s trademark rights in NET-A-PORTER, and has found a number of CTMs incorporating the NET-A-PORTER mark, as well as national rights not referred to in the Complaint.
The Panel has the discretion to take the results of this research into account, and in any case can conclude that the Complainant owns a number of registered trademark rights in the mark NET-A-PORTER worldwide.
The Complainant also owns more than 70 domain names which include NET-A-PORTER mark or variations thereof, including top-level domains and country code top-level domains. It registered its Website domain name (<net-a-porter.com>) on July 26, 1999, and the business trading from the Website commenced in June 2000. It therefore follows that since at least June 2000, the domain name has been associated with the Complainant’s business.
Upon receiving notification from the Center about the Complaint made against it, the Respondent contacted the Center on April 12, 2013, indicating that it would have “no issue cancelling [the Domain Names] and transferring them.” On April 12, 2013 the Center contacted the Complainant by email to communicate this offer to cancel/transfer the Domain Names, and suggested a suspension of the proceedings to explore a possible settlement. The Complainant did not respond to this communication, nor did it respond to a further email from the Center on April 16, 2013, asking whether the Complainant would consider a suspension of the proceedings. In the meantime, on April 15, 2013, the Respondent had again requested a suspension of proceedings.
On May 2, 2013, the Center confirmed that it had not received any formal Response from the Respondent, or a suspension request from the Complainant, and, as such, the matter would proceed to a Panel appointment.
The Complainant submits that:
(i) the Domain Names are confusingly similar to NET-A-PORTER, in which it has registered trademark rights;
(ii) that the Respondent lacks rights or legitimate interests in the Domain Names; and,
(iii) that the Respondent registered and is using the Domain Names in bad faith.
Pursuant to paragraph 4(a) of the Policy, in order to succeed in these proceedings, the Complainant must show that each of these three elements is present.
The Respondent did not submit a formal Response to the Complaint, which it claims it did not realise was necessary while the Complainant was being contacted by the Center about a potential suspension of proceedings.
The Complainant contends that the Domain Names are confusingly similar to the trademarks in which the Complainant has rights, pursuant to paragraph 3(b)(ix)(1) of the Rules and paragraph 4(a)(i) of the Policy.
It is accepted by the Panel, in light of the trademark registrations discussed above, that the Complainant does have trademark rights in NET-A-PORTER, so this low hurdle is satisfied.
The Complainant contends, in particular, that the Domain Names are confusingly similar to its trademarks because the Domain Names fully incorporate the NET-A-PORTER marks, in the case of Domain Name <net-a-porter50.com> adding the number “50” to the NET-A-PORTER mark; and in the case of Domain Name <netaporter50.com> adding the number “50” and removing the hyphens between the words, both of which it submits are of no consequence in finding confusing similarity.
For the purposes of assessing confusing similarity in accordance with the Policy, the Panel is permitted to disregard the suffix “.com”, as it is generic and a technical requirement of registration, which does not itself form part of the trademark in question (Cox Holdings, Inc. v. Gary Lam, WIPO Case. No. D2004-0931). Therefore, it is only the additional element of the “50” in each Domain Name respectively, and the omission of the hyphens in the Domain Name <netaporter50.com>, that need be considered.
The number “50” in this context is a non-distinctive, generic, term, which, when taken as part of each of the respective Domain Names overall, does not detract from the distinctiveness and dominance of the NET-A-PORTER mark. In this respect, the Panel finds that the Domain Name <net-a-porter50.com> is confusingly similar to the NET-A-PORTER marks. In regard to the other Domain Name, <netaporter50.com>, the Panel finds that the removal of the hyphens does not alter the fact that the Domain Name <netaporter50.com> is confusingly similar to the Complainant’s NET-A-PORTER mark, (Renault Trucks v. Cho, Yoongoo, WIPO Case. No. D2005-0693). The addition of “50” does not make the NET-A-PORTER mark less distinctive in the Domain Name, and again, this generic term can be disregarded when assessing the confusing similarity between the Domain Name and the NET-A-PORTER marks.
The Panel finds that the Complainant has proved the first element of paragraph 4(a) of the Policy.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Domain Names due to the Respondent using the email address “[…]@high50.com”, and being identified on the DomainTools’ WhoIs database as “James Burrows”, therefore not being commonly known by the NET-A-PORTER marks or variations thereof. Furthermore, the Complainant submits that the Respondent has never used any trademark or service similar to the Domain Names by which it may have come to be known, apart from the alleged infringing use which is the subject of the Complaint.
The Complainant does not note in its argument that, although “James Burrows” is listed as the registrant of the Domain Names, a registrant company (“high50 Ltd”) is also provided for in the WhoIs database, thus indicating that James Burrows represents a registrant company, and was probably not acting in his personal capacity. The Panel believes this to be accurate from the correspondence seen as part of the case file, which shows emails between Mr. Burrows of high50 Ltd and the Center. High50 Ltd appears to be an online-based company, which features various lifestyle articles aimed at people aged 50 and older, from its website at “www.high50.com”. The Panel notes that this website features numerous fashion articles which particularly reference the Net-A-Porter business.
Nevertheless, the Panel agrees with the Complainant’s submission that neither the registrant James Burrows, nor high50 Ltd, are commonly known by the NET-A-PORTER marks, nor any variations thereof, and that neither is known by a trademark nor service similar to the NET-A-PORTER marks.
Furthermore, the Panel accepts the Complainant’s contention that the Respondent has never operated any bona fide or legitimate business under the Domain Names, nor is it making a protected non-commercial or fair use of the Domain Names, as screenshots of the Domain Names taken on April 3, 2013 show that they redirected to pages on a “parking” website, “www.dsparking.com”, which featured the same content for each Domain Name respectively: a series of “sponsored listings” for services unrelated to the Complainant’s business, and a list of “related searches”, also, apparently, unlinked with the Complainant’s services (and, in both respects, apparently unconnected with the Respondent or registrant company’s services). Those PPC links are based on trademark value and such practices are considered generally as unfair use resulting in misleading diversion. Such use cannot be considered bona fide, commercial, or fair use on the part of the Respondent (Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787). (The Panel notes that the Domain Names now both point to a general page of the “www.123-reg.co.uk” website, a domain name registration website, rather than the parking pages mentioned above).
Given the above assessment of the Respondent’s legitimate interests, the fact that the Respondent has not evidenced any rights or legitimate interests in the Domain Names, and the fact that no authorisation or licence has been granted in respect of the Respondent’s use of the NET-A-PORTER marks, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.
The Complainants contend that the Respondent registered the Domain Names with either actual or constructive knowledge of the Complainant’s rights in the NET-A-PORTER marks, due to the Respondent being resident in the United Kingdom where the Complainant has registered trademark rights in NET-A-PORTER, and because the “Respondent’s websites” are targeted at the United States, where the Complainant also has registered trademark rights for NET-A-PORTER. Although the Panel is reluctant to find that a respondent will always have constructive knowledge of a complainant’s trademark rights if they are registered in a place to which the respondent is connected, in this case, the Panel finds that the Respondent knew of the Net-A-Porter business, due to the advertisements and articles relating to Net-A-Porter on the “www.high50.com” website; furthermore, the Respondent comments in his email of April 12, 2013 that the Domain Names were registered “with the intention of creating a commercial partnership with NAP,” indicating that the registrations were made with deliberate reference to the Complainant. However, the Complainant has established in its Complaint that no authorisation or licence to use the NET-A-PORTER marks has ever been granted to the Respondent. It is likely that the Respondent was aware that registration of Domain Names using the NET-A-PORTER mark was potentially infringing.
The Panel is not convinced by the Complainant’s submission that the advertisements for services on the websites to which the Domain Names pointed “may or may not” compete with the Complainant’s products and services, or else be disruptive to the Complainant’s business, hence proving bad faith. The sponsored ads shown in the website screenshots exhibited by the Complainant appear not to be connected to the business activities of the Complainant. However, the fact that the Domain Names pointed to parking pages on websites that advertised arbitrary commercial services unconnected to the Complainant, whilst using the Complainant’s trademark in the Domain Names, in the circumstances of this case is evidence of bad faith.
The Panel considers that there is no reason that the Respondent would have registered the Domain Names other than to trade off the reputation and goodwill of the Complainant and, particularly, the NET-A-PORTER marks. In this case, the Domain Names themselves are evidence of bad faith on the part of the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <net-a-porter50.com> and <netaporter50.com> be transferred to the Complainant.
Charters Macdonald-Brown
Sole Panelist
Date: May 24, 2013