WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Urban Outfitters Inc. v. Ju Yu

Case No. D2014-1321

1. The Parties

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

The Respondent is Ju Yu of Meridian, Idaho, United States of America.

2. The Domain Name and Registrar

The disputed domain name <freepeopleclothingoutlet.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2014. On August 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2014, 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 August 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2014.

The Center appointed Angela Fox as the sole panelist in this matter on September 4, 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.

On September 15, 2014, after the Complaint had been submitted to the Panel for a decision, the Complainant filed an additional submission reading:

“Whilst we note that it is too late to add a domain name to these proceedings we would like to alert the Panel to the fact that the Respondent has now registered another domain name <freepeopleclothing.net> on 14th August 2014, after the commencement of these proceedings.”

The Panel does not, however, need to take this additional submission into account in order to reach a decision on the facts of this case.

4. Factual Background

The Complainant is a United States based clothing retailer whose business includes a chain of 75 stores branded Free People in the United States and Canada. The Free People brand is used not only in relation to the retail stores but also in relation to the line of women’s fashion clothing sold in those stores, and which is also offered for sale in some 1,500 boutiques and department stores around the world, including in North America, Europe and Asia. The Free People brand has been in use by the Complainant since 1984, and at the end of the first quarter of 2014 the brand had generated revenue so far that year of USD 108,671 million.

The Complainant has a large online presence, maintaining websites offering its Free People branded clothing for sale at “www.freepeople.com”, “www.freepeoplewholesale.com” and “www.freepeople.co.uk”. It also uses Free People on social media outlets to promote its clothing line.

The Complainant owns registered trademark protection for the FREE PEOPLE mark. In particular, attached to the Complaint were copies of the following trademark registrations (“the Complainant’s Marks”):

The Domain Name <freepeopleclothingoutlet.com> was registered on March 29, 2014. The Domain Name is in use for a website offering for sale what purport to be the Complainant’s Free People branded clothing.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to the Complainant’s Marks.

The Complainant submits, moreover, that the Respondent has no rights or legitimate interests in the Domain Name. In particular, the Complainant has not authorized, licensed, or permitted the Respondent to use the Complainant’s Marks. The Complainant also contends that the website linked to the Domain Name contains copyright material from the Complainant’s websites, including photographs of the Complainant’s products and the Complainant’s company history, which appears verbatim in the “About Us” section of the website linked to the Domain Name. The Complainant argues that these actions show that the Respondent intended to create confusion with the Complainant and to hold itself out as being the Complainant or associated with it, and that such conduct does not correspond to a bona fide offering of goods. The Complainant also submits that the goods offered through the website linked to the Domain Name may be counterfeit.

The Complainant further submits that the Respondent registered and has used the Domain Name in bad faith to attract Internet users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of its website by the Complainant. The Complainant argues that the Respondent’s use of the Complainant’s copyright materials is calculated to mislead Internet users into believing there is a connection between the Complainant and the website linked to the Domain Name.

The Complainant notes, moreover, that the Respondent has also registered other domain names incorporating the FREE PEOPLE mark in bad faith, and cites in particular the panel decision in Urban Outfitters Inc. v. Ju Yu, WIPO Case No. D2014-0029. In that case, the panel found that the Respondent had registered and used <cheapfreepeople.com>, <cheapfreepeople.net> and <cheapfreepeople.org> in bad faith and ordered the transfer of those domain names to the Complainant. The Complainant states that the content on the website linked to <cheapfreepeople.org> was in fact the same as that to which the Domain Name now links, and that the Domain Name was registered shortly after the panel in the prior case handed down its decision. The Complainant contends that this conduct, too, manifests bad faith.

The Complainant also submits that the Respondent has a history of registering domain names incorporating third-party trademarks and of using those domain names in order to sell counterfeit goods. The Complainant referred in particular to Juicy Couture, Inc. v. Ju Yu and Lei Chen, NAF Claim No. FA1009001347631, in which the panel was satisfied that the Respondent had been using the disputed domain name to sell counterfeit versions of the Complainant’s products. The Complainant notes that investigations have found that the Respondent’s domain portfolio includes domain names incorporating the trademarks JUICY COUTURE, ABERCROMBIE, GUCCI and RALPH LAUREN, which demonstrates its familiarity with famous brands in the clothing and footwear industry.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

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

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant provided evidence of numerous trademark registrations within its ownership for marks comprising and incorporating FREE PEOPLE.

The Domain Name incorporates the Complainant’s registered FREE PEOPLE trademarks in its entirety, and differs only in its inclusion of the additional descriptive words “clothing” and “outlet”, and the non-distinctive generic Top-Level Domain (gTLD) suffix “.com”. The descriptive words within the Domain Name directly describe the nature of the products offered by the Complainant under the FREE PEOPLE trademarks (i.e., clothing) and a commercial channel through which such goods can be purchased (i.e., an outlet). Consequently, these terms do nothing to distinguish the Domain Name from the Complainant’s Marks, and indeed, reinforce the impression that the Domain Name is that of the Complainant or is in some way related to it.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has made no effort to refute the allegation that it has no rights or legitimate interests in the Domain Name.

Although the Respondent has used the Domain Name to offer Free People branded clothing for sale, its activities are not in the Panel’s view use in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. The Panel does not accept the Complainant’s bald assertion that the goods offered through the website linked to the Domain Name are counterfeits, because the Complainant has provided no evidence of this. It would have been entirely within the Complainant’s power to order products from the Respondent’s website to check their authenticity, but there is no evidence that this was ever attempted, or that any other steps to determine the authenticity of the products offered for sale through the Respondent’s website were taken. The mere fact that the Respondent has been found to sell counterfeit products through another website incorporating a different trademark does not, without more, permit a finding that products sold through the website linked to the present Domain Name are also counterfeit. The Panel notes that the products on the Respondent’s website are offered at significantly cheaper prices than those on the Complainant’s website, but an allegation of counterfeiting is a serious one and the Panel considers that more could and should have been done to support the Complainant’s case on this point.

Nevertheless, what is clear is that the website maintained by the Respondent at the Domain Name has lifted substantial portions of content directly from the Complainant’s own website, to the extent even that its “About Us” section reads as though the Respondent is holding itself out as the Complainant. The Complainant has never authorised, licensed or permitted the Respondent to use that content or the Complainant’s Marks. In these circumstances, the Respondent’s use of a domain name that is confusingly similar to the Complainant’s Marks in order to attract Internet users looking for a website of or in some way authorised by the Complainant and then to portray itself falsely as being the Complainant or in some way related to the Complainant, in order to sell merchandise, is a “bait and switch” strategy that lacks bona fides and does not give rise to a right or a legitimate interest under the Policy.

As noted by the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, trading upon the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain cannot be considered to constitute a bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. In that case the panel held that:

“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”

Numerous panels have found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (see, for instance, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).

There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest in the Domain Name.

The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant has shown in evidence that its FREE PEOPLE marks are in use in relation to clothing, and the Respondent’s portfolio of domain names demonstrates an awareness of well-known clothing brands worldwide. These facts, together with the content of the website linked to the Domain Name, support the Complainant’s contention that the Respondent was aware of the Complainant’s Marks at the time it registered the Domain Name.

This knowledge is put beyond the shadow of a doubt, however, by the fact that the Respondent registered the Domain Name shortly after a decision ordering transfer was handed down in prior proceedings by the Complainant against the Respondent involving domain names incorporating FREE PEOPLE marks (Urban Outfitters Inc. v. Ju Yu, supra).

The Domain Name was deliberately chosen with the intention of attracting Internet users by creating a likelihood of confusion with the Complainant’s Marks, with the intent to gain commercially by means of the continued sale of products through a website poaching significant content from the Complainant’s own website. The Respondent registered it, moreover, only one day after a decision finding that the Respondent’s registration and use of three other Free People-composite domain names used or directing to the same website content was in bad faith.

By its conduct, the Respondent is free-riding on the goodwill of the Complainant’s Marks and disrupting the Complainant’s business by diverting and misleading consumers looking for a website of or associated with the Complainant. The Respondent is further disrupting the Complainant’s business by repeatedly registering domain names that incorporate the Complainant’s Marks for use in connection with a website that falsely holds itself out as a website of, or in some way associated with, the Complainant. Such activities are inherently damaging to the Complainant’s rights and legitimate business interests.

The Panel concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of 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 Domain Name <freepeopleclothingoutlet.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: September 22, 2014