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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Urban Outfitters Inc. v. Ju Yu

Case No. D2014-0029

1. The Parties

The Complainant is Urban Outfitters Inc. of Philadelphia, Pennsylvania, United States of America (“US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).

The Respondent is Ju Yu of Meridian, Idaho, US.

2. The Domain Names and Registrar

The disputed domain names <cheapfreepeople.com>, <cheapfreepeople.net> and <cheapfreepeople.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2014. On January 10, 2014, the Center transmitted a request for registrar verification in connection with the Domain Names by email to the Registrar. On January 10, 2014, the Registrar transmitted its verification response by email to the Center confirming that the Respondent is listed as the registrant and providing the contact details. On January 15, 2014, the Center transmitted a request to amend the Complaint based on a misspelling of one of the Domain Names in the Complaint by email to the Complainant. On the same day, the Complainant filed an amendment correcting this error in the Complaint to the Center by email.

The Center verified that the Complaint together with the amendment to 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 January 21, 2014. The Center sent the notification of the Complaint to the Respondent via email and courier addressed to the contact information listed in the registration information as verified by the Registrar. However, all of the communications sent by the Center to the Respondent were undeliverable. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on February 11, 2014.

The Center appointed Marylee Jenkins as the sole panelist in this matter on February 19, 2014. 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 bases the Complaint on its trademark registrations in the US, European Union, and Australia for the mark FREE PEOPLE and its trademark registrations in the US and European Union for the mark INTIMATELY FREE PEOPLE (individually and collectively the “Complainant’s Marks”). The Complainant is a company that operates retail clothing stores in the US, Canada, and the European Union under the name “Free People”. The Complainant also has a line of clothing by the name “Free People” that is sold in boutiques and a selection of department stores. The Complainant operates websites at the domain names <freepeople.com>, <freepeoplewholesale.com> and <freepeople.co.uk> and has a social media presence using the name “Free People”.

The Domain Name <cheapfreepeople.com> was registered on July 29, 2013 and is set to expire on July 29, 2014. The Domain Name <cheapfreepeople.net> was registered on September 13, 2013 and is set to expire on September 13, 2014. The Domain Name <cheapfreepeople.org> was registered on November 20, 2013 and is set to expire on November 20, 2014. The Domain Name <cheapfreepeople.com> currently does not link to an accessible web site. The Domain Name <cheapfreepeople.net> redirects users to a website at “www.cheapfreepeople.org”.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Names are identical or confusingly similar to the Complainant’s Marks.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant alleges that the Respondent is using the Complainant’s photos of the Complainant’s products on its web site as well as the Complainant’s Marks and that the Respondent plagiarized the historical story of the Complainant’s Marks from the Complainant’s official web site for use in the “About Us” section of the Respondent’s website. The Complainant argues that this is evidence that the Respondent intended to create confusion with the Complainant for the purposes of taking advantage of the Complainant’s Marks in order to sell goods which are possibly counterfeit.

The Complainant also alleges that the Respondent is offering for sale goods purporting to be the Complainant’s clothing at prices that are much cheaper than the Complainant’s recommended retail price. The Complainant argues that these cheap prices in combination with the use by the Respondent of the Complainant’s Marks and the Domain Names, without any disclaimer of association with the Complainant, is evidence that the Respondent is defrauding customers into believing that the goods being sold on the Respondent’s web site are authentic by creating a strong impression of affiliation with the Complainant and does not fall within the scope of paragraph 4(c) of the Policy.

The Complainant argues that it has prior rights in the Complainant’s Marks since its trademark was registered some 20 years prior to the registration of the Domain Names and that Complainant has not authorized, licensed, or permitted the Respondent to use the Complainant’s Marks.

The Complainant alleges that the Respondent is not making a bona fide offering of goods under paragraph (4)(c)(i). In support of this contention, the Complainant cites Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and argues that the Respondent is using the Domain Names to advertise and offer for sale goods purported to be the Complainant’s goods, without authorization, and which the Complainant alleges may be counterfeit goods. The Complainant also alleges that the Respondent holds itself out as being associated with the Complainant in the “About Us” section of the Respondent’s web site.

The Complainant also alleges that the Respondent registered and is using the Domain Names in bad faith by registering and using the Domain Names to attract Internet users for commercial gain by creating a confusion of endorsement of its web site by the Complainant as described in paragraph 4(b)(iv) of the Policy. In support of this allegation, the Complainant cites Pandora Jewelry LLC v. Whois Privacy Protection Service, Inc. / - Cook Song, WIPO Case No. D2010-1176 and argues that the Domain Name <cheapfreepeople.org> is being used to sell goods which carry the Complainant’s Marks. Additionally, the site has the mark as a title at the top, includes the Complainant’s copyrighted images as well as a version of the Complainant’s brand story. Combined with the repeated use of the Complainant’s Marks on the Respondent’s web site, such use is likely to lead Internet users to be deceived and mistakenly form the impression that the Complainant has approved of the Respondent’s site. Citing Guccio Gucci S.p.A. v. Bo Zhou, WIPO Case No. D2013-1624, the Complainant argues that the purpose of the Respondent’s incorporation of the Complainant’s Marks in the Domain Names is to capitalize on the reputation of the Complainant’s Marks by diverting Internet users to its site.

The Complainant also referenced Juicy Couture, Inc. v. Ju Yu and Lei Chen, NAF Claim Number FA1009001347631 and Abercrombie & Fitch Trading Co., v. Wang Zhming, et al., Case No. 11-62370-CIV-Williams (S.D.Fl. 2011) to allege that the Respondent has a history of registering domain names incorporating trademarks of others for the purpose of selling counterfeit goods. The Complainant alleges that the Respondent has no regard for the intellectual property rights of others since, as the Complainant alleges, that the Respondent currently has registered domain names incorporating the trademarks for which the previous decisions referenced by the Complainant found that the Respondent had infringed.

The Complainant alleges that the Respondent acted in bad faith since the Respondent’s registration of the Domain Names was some 30 years after the Complainant first began trading and 20 years after the Complainant’s earliest trademark registration. The Complainant argues that this length of time in combination with the Respondent’s offering of goods bearing the Complainant’s Marks via the Domain Names and the possibility of the goods being offered on the Respondent’s web site being counterfeit is evidence that the Respondent registered and used the Domain Names in bad faith.

The Complainant, citing DKH Retail Limited t/a Laundry Athletics v. wangzhenhua, WIPO Case No. D2012-1032, Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019, and Goyard St-Honoré v. Yard Baker, WIPO Case No. D2012-1167), argues that the Respondent’s alleged sale of counterfeit goods on its website arising from the confusion created by the use of the Complainant’s Marks and copyrighted images is bad faith, especially since it is obvious that the Respondent was aware of the Complainant’s rights.

B. Respondent

The Respondent did not file a response with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.

A. Identical or Confusingly Similar

Under Paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in the Complainant’s Marks (i.e., FREE PEOPLE and INTIMATELY FREE PEOPLE).

A review of the second-level domain of the Domain Names shows that each consists of the Complainant’s mark FREE PEOPLE in combination with the descriptive word “cheap.” The combination of a descriptive word with the Complainant’s mark FREE PEOPLE in its entirety does not obviate a likelihood of confusion with the Complainant’s mark. The word “cheap” is a descriptive term used in the context of the Domain Names as the undisputed evidence shows that the Respondent is offering goods on its web site purporting to be the Complainant’s goods, but at substantially lower prices than the Complainant’s recommended retail prices. In view of the above the evidence presented, the combination of the word “cheap” with the Complainant’s mark FREE PEOPLE in the Domain Names accordingly does not in any way result in differentiating or distinguishing the Domain Names from the Complainant’s mark FREE PEOPLE. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Names being confusingly similar to the Complainant’s mark FREE PEOPLE.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Names. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Names. The uncontested evidence shows that the Complainant had well established rights to the Complainant’s Marks at the time of the Respondent’s registration of the Domain Names and that the Respondent nevertheless registered the Domain Names. The Domain Name <cheapfreepeople.org> redirects to the Respondent’s web site at the Domain Name <cheapfreepeople.net> through which the Respondent is apparently selling counterfeit goods of the Complainant. The Respondent has not presented any evidence or arguments to refute this allegation. The use of two of the Domain Names directing and redirecting Internet users to the Respondent’s web site is clearly an attempt by the Respondent to misleadingly divert possible consumers. The Complainant also alleges that the Domain Name <cheapfreepeople.com> does not link to any accessible web site. The Respondent has not presented any evidence or arguments to refute this or to show that the Respondent was using or was making demonstrable preparations to use this domain name in connection with any type of bona fide offering of goods or services. Based on the above and the submitted evidence, the Panel concludes that the Respondent has no rights or legitimate interests in any of the Domain Names and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the website or location or of a product or service on the holder’s website or location.

Based on the uncontested evidence submitted by the Complainant, the Respondent has engaged in a pattern of conduct of registering multiple domain names incorporating the trademarks of others. When viewed with the evidence of the Complainant’s Marks having been registered for many years and arguably well-known along with the number of Domain Names registered by the Respondent in this proceeding that are confusingly similar to the Complainant’s mark FREE PEOPLE, it is apparent that the Respondent had actual knowledge of the Complainant’s Marks and its rights therein at the time of registering the Domain Names. When viewed with the evidence that the Respondent has failed to provide accurate and updated contact information in the registrations for the Domain Names, such actions confirm bad faith registration and use of the Domain Names by the Respondent.

The Complainant further alleges, and it has not been disputed by the Respondent, that the Respondent’s web site prominently displays and uses the Complainant’s Marks in addition to the copyrighted images of the Complainant’s products together with a version of the Complainant’s history of its brand. The Complainant has also submitted evidence that the Respondent is offering what appears to be counterfeit goods for sale on this site. The Respondent’s uses of two of the Domain Names (<cheapfreepeople.net> and <cheapfreepeople.org>) and the Complainant’s intellectual property in this fashion are clearly bad faith attempts by the Respondent to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. The Panel also finds that the Respondent has registered and is using two of the Domain Names in bad faith for the purpose of creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the site to which the Domain Names direct and redirect Internet users and of the products offered on this site.

With respect to the Domain Name <cheapfreepeople.com>, the Panel finds that the Respondent’s passive holding of this Domain Name coupled with the Respondent’s pattern of conduct and false contact details discussed above also supports a finding of bad faith registration and use of this Domain Name as well.

Considering all of the foregoing, the Panel accordingly concludes that the Respondent has registered and is using all three of the Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <cheapfreepeople.com>, <cheapfreepeople.net> and <cheapfreepeople.org> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: March 14, 2014

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