The Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Luong Quang Ninh, Viet Nam.
The disputed domain name <urbanoutfitters.top> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2020, 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 January 17, 2020 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 January 20, 2020.
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 January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020.
The Center appointed Geert Glas as the sole panelist in this matter on February 20, 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 Rules, paragraph 7.
The Complainant, Urban Outfitters Inc., is a company founded in 1970 in the United States and which currently has over 200 stores worldwide where it sells clothing, furniture and media products. In the framework of these services, the Complainant has also launched an online store “www.urbanoutfitters.com” to allow online users to browse and purchase clothing, lifestyle and beauty products.
According to the Complainant’s 2018 annual accounts, its revenue reached USD 3.9 billion in that financial year.
The Complainant owns a substantial portfolio of trademarks which consist of the words URBAN OUTFITTERS. This portfolio includes the following trademarks:
|
Trademark |
Country |
Registration number |
Registration date |
Classes covered |
|
URBAN OUTFITTERS |
United States |
1323901 |
March 5, 1985 |
42 |
|
URBAN OUTFITTERS |
Switzerland |
2P-423691 |
April 4, 1996 |
42 |
|
URBAN OUTFITTERS |
European Union |
010182061 |
January 10, 2012 |
35 |
The Registrar’s WhoIs database shows that the disputed domain name <urbanoutfitters.top> (the “Domain Name”) was first registered on October 27, 2019. The Registrar’s WhoIs database does not indicate the identity of the Respondent, hiding behind the shield of a privacy service. Upon request of the Center, the Registrar identified the Respondent as being Luong Quang Ninh.
Prior to filing the Complaint, the Complainant sent on November 19, 2019 a cease and desist letter to the Respondent, which according to the Complainant remained unanswered.
The Domain Name redirects online users to the website of the Complainant at “www.urbanoutfitters.com”.
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
The Complainant contends that the Domain Name is identical to the Complainant’s URBAN OUTFITTERS mark. More specifically, the Complainant contends that the Domain Name captures in its entirety its URBAN OUTFITTERS trademark.
The Complainant states that “urbanoutfitters” is the dominant feature of the Domain Name and that the only difference between the Domain Name and the Complainant’s URBAN OUTFITTERS trademark is the addition of the applicable generic Top Level Domain (“gTLD”) “.top”. The Complainant contends that the mere addition of a gTLD in a domain name is viewed as a standard registration requirement and does not negate the confusing similarity between the Domain Name and the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since the Respondent (a) is not commonly known by the Domain Name; (b) has not been authorized by the Complainant to use the URBAN OUTFITTERS trademark; (c) has no affiliation or connection with the Complainant; and (d) is not using the Domain Name in connection with a bona fide offering of goods and services. The Complainant contends that this last element is supported by the fact that the Respondent is using the Domain Name to deliberately create confusion with the Complainant’s business.
The Complainant holds that its trademark has gained substantial goodwill and that it is therefore unconceivable that the Respondent was not aware of the Complainant’s trademark. In addition, the Complainant states that it was the Respondent’s responsibility to conduct a prior availability search before the registration of the Domain Name.
The Complainant also contends that the Respondent’s bad faith is further evidenced by the fact that the Respondent did not reply to a cease and desist letter sent prior to commencing the proceedings.
The Complainant furthermore contends that the Respondent deliberately chose to redirect traffic from the Domain Name to the Complainant’s website “www.urbanoutfitters.com” which shows the Respondent’s intention to take advantage of the well-known URBAN OUTFITTERS trademark’s goodwill and reputation.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the following three requirements need to be complied with in order for the Domain Name to be transferred to the Complainant:
(1) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name was registered and is being used in bad faith.
The Complainant owns numerous trademarks consisting of the words URBAN OUTFITTERS.
The Domain Name contains the Complainant’s URBAN OUTFITTERS trademark in its entirety, without alterations or additions.
Moreover, the applicable gTLD of the Domain Name (“.top”) is viewed as a standard registration requirement and as such may be disregarded in this assessment.
In view of the above, the Panel finds that the Domain Name is identical to the URBAN OUTFITTERS mark of the Complainant. Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704; and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent (i) has made a legitimate noncommercial use of the Domain Name; (ii) has used the Domain Name in relation with a bona fide offering of goods and services; (iii) has been authorized by the Complainant to use the URBAN OUTFITTERS trademark; or (iv) has been commonly known by the Domain Name.
It should be noted that the fact that the Domain Name redirects online users to the website of the Complainant at “www.urbanoutfitters.com” which does not constitute such bona fide use in these circumstances.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the Domain Name.
The Panel therefore finds that the Complainant has satisfied its burden of proof under this element of the Policy. Accordingly, the Panel finds that the second element under paragraph 4(a) of the Policy has been established.
The third element of paragraph 4(a) of the Policy requires that the Complainant demonstrates that the Respondent has registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel is of the opinion that the Domain Name was indeed registered in bad faith. The Panel observes that the Respondent registered the Domain Name approximately 34 years after the Complainant began using its distinctive URBAN OUTFITTERS trademark, and well after the Complainant, through its more than 200 stores and website, had established substantial goodwill in its mark. The fact that the Respondent chose to register a domain name which is identical to a well-known trademark and opted not to offer any explanation in response to the cease and desist letter sent by the Complainant and to the Complaint affirms this assessment that the decision to register the Domain Name was made in bad faith.
As to the use which the Respondent is making of the Domain Name, this use consists of redirecting online users to the Complainant’s website at “www.urbanoutfitters.com”.
As indicated in the WIPO Overview 3.0, section 3.1.4, panels have found that redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. This Panel is of the opinion that this is the case in this matter. Moreover, this act of redirecting creates a risk of confusion as it gives the impression to Internet users that the Domain Name is associated with the Complainant.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, the Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <urbanoutfitters.top> be transferred to the Complainant.
Geert Glas
Sole Panelist
Date: March 5, 2020