The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland represented by Winston & Strawn LLP, United States of America.
The Respondent is Zhichao Yang of Hefei of Anhui, China.
The disputed domain name <wwwnet-a-porter.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2013. On October 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2013.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 19, 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 paragraph 7 of the Rules.
The Complainant’s NET-A-PORTER business was launched in June 2000. It is a world’s premier luxury fashion e-retailer and online couture shopping website which sells a wide range of high quality luxury apparel, including dresses, coats, trousers, maternity, swimwear, jeans, bags, shoes and accessories in general (jewelry, scarves, belts etc.). Famous international brands sold on the Complainant’s Website include Burberry, Mulberry, Chloé, Jimmy Choo, Calvin Klein and Moschino.
The Complainant owns a large number of trademark registrations worldwide for NET-A-PORTER.
In addition to the domain name <net-a-porter.com> (registered on July 26, 1999), the Complainant owns more than 80 other domain names which include the NET-A-PORTER marks or variations thereof. These include top level domains such as <netaporter.com> and country code domain names such as <net-a-porter.us> (both of which resolve to the Complainant’s website).
The Respondent registered the disputed domain names on May 30, 2011.
The Complainant asserts that the disputed domain name <wwwnet-a-porter.com> is confusingly similar to NET-A-PORTER because it fully incorporates the mark, adds only the “.com” to the top-level domain name, and the prefix “www” gives the appearance of a typographical error. Such minor alteration does not render the disputed domain name any less confusing under the Policy.
The Complainant’s asserts that the Respondent lacks rights or legitimate interest in the disputed domain name since the Respondent has never been commonly known by NET-A-PORTER or any variations thereof. Furthermore, the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations confusingly similar to the NET-A-PORTER marks.
The Complainant further asserts that the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name since it is using such website as a pay-per-click website containing links to third-party websites offering for sale products that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products.
The Complainant finally considers that the Respondent registered the disputed domain name simply to trade off of the substantial reputation and goodwill of the Complainant’s NET-A-PORTER marks.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(A) 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
(B) the Respondent has no rights or legitimate interests in respect of the domain names in question; and
(C) the domain name has been registered and is being used in bad faith.
This first element requires the Complainant to demonstrate that (1) it has trademark rights; and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the exclusive owner of the registered trademarks NET-A-PORTER based on the evidence provided by the Complainant.
2. The disputed domain name consists of the expression “NET-A-PORTER” preceded by the acronym “www”. The Panel considers that the addition of the acronym “www”, especially when added to a famous trademark is not sufficient to grant distinctiveness or to avoid confusion. Furthermore, the addition of the acronym “www” does not grant the domain name distinctiveness; it merely gives the impression of a typo mistake, which simply amounts to further confusion to the public consumer.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants trademark.
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy, it is clear that the overall burden of proof is on the Complainant; however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to a Complaint. If the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden of production shifts to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name NET-A-PORTER. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark NET-A-PORTER. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the disputed domain name.
In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name.
This third element requires the Complainant to demonstrate that (1) the disputed domain name has been registered in bad faith; and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of the words, “net”, “a”, and “porter”. It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate inquiries to ensure that the registration of the domain name does not infringe or violate third-party rights.
Therefore, in this particular case, one could presume that the Respondent registered the disputed domain name with apparent disregard to whether the domain name corresponded to a trademark holder.
However, is the Panel finds it difficult to believe that the Respondent came up with the same particular union of words as the Complainant. This fact on its own may be sufficient to conclude bad faith registration; however, the trademark is used to sell luxury apparel, such as dresses, coats, trousers, shoes and other accessories online. This coincides with the same type of advertisement and links offered on the Respondent’s “wwwnet-a-porter” website, all referring to woman’s apparel.
Therefore, the disputed domain name as a whole can only create a likelihood of confusion with the Complainant’s trademarks.
The Panel further considers that the Respondent’s objective for registering the disputed domain name <wwwnet-a-porter.com> was precisely to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Consequently, the Panel considers that by registering a domain name corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet users to its webpage particularly to generate revenue, since the Panel when observing the Respondents website can conclude that it is a pay-per-click site. This behavior may constitute bad faith use and tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <wwwnet-a-porter.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Date: November 28, 2013