The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Richemont International Limited, United Kingdom.
The Respondent is net-a-porter-uk.com of Edelstal, Austria.
The disputed domain name <net-a-porter-uk.com> is registered with Shinjiru MSC Sdn Bhd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2015, 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 July 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2015.
The Center appointed Mladen Vukmir as the sole panelist in this matter on August 27, 2015. 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 Panel has determined the following non-contested facts:
(i) the disputed domain name was created on January 8, 2015 (Annex 1 to the Complaint).
(ii) the Respondent is the Registrant of the disputed domain name (Annex 1 to the Complaint and confirmed by the Registrar in verification response as of July 10, 2015).
(iii) the Complainant is the holder of a number of NET-A-PORTER trademark registrations in different classes, as listed and evidenced in the Complaint and Annex 6 to the Complaint:
Trademark | Trademark Office | Reg. No. / Status | Registration Date | Class(es) |
|
NET-A-PORTER (word) |
United Kingdom |
2261318 / registered |
September 14, 2001 |
35 |
|
NET-A-PORTER (word) |
OHIM |
0969606 / registered |
August 10, 2009 |
35 |
|
NET-A-PORTER (word) |
OHIM |
007162548 / registered |
July 22, 2009 |
3, 9, 14, 16, 18, 21, 24, 25 |
|
NET-A-PORTER (word) |
Malaysia |
2011020392 / registered |
November 17, 2011 |
35 |
(iv) the Complainant is the registrant of the domain name <net-a-porter.com> which incorporates the Complainant’s NET-A-PORTER trademark and was first created on July 26, 1999. Under the domain name <net-a-porter.com>, the Complainant operates its official website where a wide range of designer and high-end apparel is offered for sale (the “Complainant’s Website”). The Panel determined these facts through the Annex 4 to the Complaint and by visiting the Complainant’s website available at “www.net-a-porter.com” and publicly available WhoIs records on September 9, 2015.
(v) since its creation, the Complainant’s website has won a number of awards, including: UK Fashion Export Award for “Best E-tailer” and the British Fashion Council Award for “Best Shop” in 2004; “Best Online Shop” in the 2006 In Style Shopping Awards; “E-tailer of the Year” in the 2008 Footwear News Achievements Awards; “International Advertiser of the Year” in the 2008 Link Share Golden Link Awards; and was also included in Time Magazine’s 2008 list of the “50 Best Websites” (Annex 5 to the Complaint).
(vi) under the disputed domain name, a website which offers for sale wide range of apparel is operated (Annex 7 to the Complaint).
The Complainant, essentially, asserts that:
(i) the Complainant’s NET-A-PORTER business was launched in 2000 and rapidly became the world’s premier luxury fashion e-tailer and online couture shopping website located at the domain name <net-a-porter.com>;
(ii) the Complainant’s Website, which can be accessed worldwide, sells a wide range of high quality luxury apparel. Famous international brands sold on the Complainant’s Website include Burberry, Mulberry, Chloe, Jimmy Choo, Calvin Klein and Moschino;
(iii) the Complainant’s Website is presented in style of a fashion magazine and it offers its customers access to the most recent up-to-date looks of the season from international cutting-edge-labels. The Complainant’s Website features high fashion editorial content, updated weekly, which is viewed by over 2.5 million people each month;
(iv) the Complainant’s Website receives a high volume of industry and media attention and it has won a multitude of awards;
(v) The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. The Complainant advertises both within the industry and to the general public, in a variety of media;
(vi) the Complainant has developed strong presence in social media, with more than 1.2. million “likes” on Facebook and 615,000 “followers” on Twitter;
(vii) the Complainant owns a large number of NET-A-PORTER trademarks, registered worldwide, including United Kingdom, Malaysia and European Union.
(viii) Due to the extensive use and registration of NET-A-PORTER trademarks around the world, the Complainant is confident that its NET-A-PORTER trademark would be considered well known and/or famous under the laws of the United States and the United Kingdom, as well as that the same trademark should be afforded the status of notorious mark and consequently should enjoy liberal protection under the Paris Convention;
(ix) the disputed domain name is confusingly similar to the Complainant’s NET-A-PORTER trademark, because it incorporates a dominant element of the same NET-A-PORTER trademark, namely the entire term with the addition of the lettering “-uk”, which does not render the disputed domain name any less confusing for the purposes of the confusingly similar analysis;
(x) the Respondent lacks rights or legitimate interests in the disputed domain name, because it has never been commonly known by the NET-A-PORTER trademark nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted in the Complaint;
(xi) the Respondent has never operated any legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to publish a website offering services that compete directly with Complainant’s services, with said services offering for sale products, which may be counterfeit products.
(xii) the Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations which are confusingly similar to the Complainant’s NET-A-PORTER trademark;
(xiii) the disputed domain name was registered and is used in bad faith, because the Respondent registered the domain name with either actual or constructive knowledge of the Complainant’s rights in NET-A-PORTER trademark by virtue of the Complainant’s prior registrations of said trademark with trademark offices of the European Community (of which Austria is a part and where the Respondent is located);
(xiv) the disputed domain name is used in bad faith because it is being used to provide services that compete directly with the Complainant’s services;
(xv) there is no reason for the Respondent to have registered the disputed domain name other than to trade off the substantial reputation and goodwill of the Complaint’s NET-A-PORTER trademark, and as such the nature of the disputed domain name itself evidences bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent 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.
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights, see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence to show that it is the owner of a number of NET-A-PORTER trademarks.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, generic, descriptive, geographical or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraphs 1.2 and 1.9 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainant’s NET-A-PORTER trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name.
The Panel must further answer the question, whether adding the hyphen and the lettering “uk” to the Complainant’s NET-A-PORTER trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s NET-A-PORTER trademark.
With respect to the above, this Panel upholds the Complainant’s contention that the addition of the lettering “uk”, the common abbreviation for the United Kingdom, to the Complainant’s NET-A-PORTER trademark in the disputed domain name is insufficient to prevent a finding of confusing similarity. Moreover, in the Panel’s view, adding said wording, which can be considered as geographical or generic, in fact, might reinforce consumer confusion as to the connection between the Complainant’s NET-A-PORTER trademark and the disputed domain name. It would be entirely reasonable for anyone seeking information regarding the Complainant and its business to type the lettering “uk” together with the Complainant’s NET-A-PORTER trademark. Especially, if one takes into the account that the Complainant is a company seated in the United Kingdom.
Prior UDRP panels have found confusing similarity in a number of earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a geographical generic term. Confusing similarity was found in those instances because the term added was not powerful enough to overcome the association created by the trademark itself. See particularly, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338; TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
Regarding the hyphen, in this Panel’s view, addition of the same in the disputed domain name is insignificant and does little to avoid confusing similarity of the disputed domain name with the respective NET-A-PORTER trademark of the Complainant. What is more, the same hyphen seems as logical extension of the hyphens present in the NET-A-PORTER trademark of the Complainant.
It should be noted that a number of UDRP panels in previous cases found the hyphen to be insufficient to overcome the confusing similarity of the domain names consisting of a trademark and one or more hyphen/s followed by one or more generic term/s (e.g. see Swarovski Aktiengesellschaft v. Swarovski AG, WIPO Case No. D2010-2139; Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou, WIPO Case No. D2010-2022; Swarovski Aktiengesellschaft v. Domain Privacy Group Inc. / George Tzikas, WIPO Case No. D2010-2067; and Swarovski Aktiengesellschaft v. Bruce Bush, WIPO Case No. D2012-0628).
In relation to the applicable gTLD “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. has proven that the disputed domain name is confusingly similar to its trademarks.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP. […]”.
In this case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Namely, the Complainant has established that it is the owner of a number of NET-A-PORTER trademarks in various jurisdictions, as well as that it has used the same trademarks widely on the market and the Internet, including through its website located at “www.net-a-porter.com”.
The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its NET-A-PORTER trademarks, or to apply for or use any domain name incorporating the same trademarks.
Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
From the evidence presented by the Complainant, it arises that the disputed domain name resolves to a website offering services which directly compete with those offered by the Complainant on its Website. Having in mind the renown of the Complainant and its NET-A-PORTER trademarks, in this Panel’s opinion it can be safely concluded that the Respondent deliberately chose to include the Complainant’s trademarks in the disputed domain name, in order to trade on the renown of the Complainant’s trademarks and to achieve commercial gain by misleadingly diverting consumers. Such use cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases - See e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA, WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; and Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(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 holder’s website or location or of a product or service on the holder’s website or location.
Owing to a lack of the Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant and its trademarks because of a number of NET-A-PORTER trademark registrations and extensive use of the same trademarks on the market and Internet by the Complainant, as well as the coverage of the same in media.
Therefore, in this Panel’s view, it is safe to conclude that the Respondent was aware of the Complainant and its trademarks when he registered the disputed domain name, and that the Respondent intention was for the disputed domain name to trade on the renown of the Complainant and its NET-A-PORTER trademark. Especially, if one takes into the account that the lettering “uk”, a common abbreviation for the United Kingdom was added to the Complainant’s NET-A-PORTER trademark in the disputed domain name, and that the Complainant is a company seated in the United Kingdom. It would be a too much of a coincidence, that the Respondent, who is apparently located in Austria, decided to include the abbreviation for the United Kingdom in the disputed domain name without knowing about the Complainant and its country of origin.
Panels in earlier UDRP cases have found bad faith registration based in part on proof that the respondent "knew or should have known" about the existence of the complainant's trademark and in particular in cases that involved trademarks widely used on the Internet (see paragraph 3.4 of WIPO Overview 2.0).
Furthermore, and as already discussed above, the disputed domain name resolves to website offering services competitive to those of the Complainant. Having in mind the renown of the Complainant and its trademarks, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The presence of the Complainant’s NET-A-PORTER trademark in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name clearly benefits from the same.
For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name is redirected. See, e.g., the following decisions issued by panels in some of earlier UDRP proceedings:
(i) Sanofi v. PrivacyProtect.org / ICS Inc., WIPO Case No. D2012-1293: “previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031: “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;
(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292: “The fact that the Respondent elected to register a domain name substantially comprising the PEPSI trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.”
Given the above, the Panel determines that the disputed domain name has been registered and is being used bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 <net-a-porter-uk.com> be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: September 10, 2015