WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters, Inc. v. Romero, Raymundo
Case No. D2010-1969
1. The Parties
Complainant is Urban Outfitters, Inc. of Philadelphia, Pennsylvania, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Romero, Raymundo of Fort Collins, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <homeanthropologie.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 17, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 17, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. Respondent did not submit a timely response. Accordingly, the Center notified Respondent’s default on December 22, 2010. Respondent then sent two e-mail messages to the Center on December 27, 2010 regarding actions allegedly taken by Respondent on November 15, 2010 with respect to the disputed domain name.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on December 28, 2010. 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
Complainant and its subsidiaries have several trademark registrations for ANTHROPOLOGIE in various countries with dates of first use dating back as far as 1989. The disputed domain name was registered on April 14, 2010. Screenshots attached to the Complaint and not disputed by Respondent indicate that Respondent used the disputed domain name for a website where Respondent sold furniture similar to that of Complainant.
5. Parties’ Contentions
Complainant alleges that it founded the Anthropologie brand in 1992 and that one focus of the brand is home furnishings. Complainant alleges that today it operates more than 133 Anthropologie stores in the United States and 3 stores in Canada and the United Kingdom, and that it made nearly USD 700 million in sales under the Anthropologie brand in 2010. Complainant attached to the Complaint database records of numerous ANTHROPOLOGIE trademark registrations, including 2 United States registrations with dates of first use going back to 1989. Some of the trademarks are registered to Complainant, though the 2 United States registrations are in the names of U.O. Merchandise, Inc. and Anthropologie, Inc. Complainant also alleges that it has registered the ANTHROPOLOGIE trademark as a domain name in several gTLDs. Complainant alleges that the disputed domain name is confusingly similar to its ANTHROPOLOGIE trademark in that it consists of the exact trademark with the addition of the generic word "home" and the gTLD ".com". Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not commonly known by the disputed domain name, because ANTHROPOLOGIE is a coined word that refers only to Complainant, because Respondent is known as Romero, Raymundo, and because Respondent used the disputed domain name to sell furniture similar in style to that of Complainant. Complainant further alleges that Respondent lives and worked near Anthropologie stores and likely was aware of the brand when he registered the disputed domain name, especially in light of Respondent's background in advertising, marketing, branding, strategy, apparel, designing, and furniture. Complainant alleges that Respondent has registered a domain name containing a well-known trademark in bad faith, and that Respondent registered the disputed domain name to disrupt Complainant's business and to attract users to Respondent's website for commercial gain through confusion with Complainant's ANTHROPOLOGIE mark. Complainant further alleges that after receiving notice of infringement Respondent added a disclaimer to his website and took other steps to attempt to distance his activities from those of Complainant, including moving his website to “thenewanthology.com”.
On December 27, 2010 the Respondent sent two email messages to the Center in which the Respondent states that the disputed domain name "was taken offline (and terminated PERMANENTLY) since the Fifteenth of November of Two Thousand and Ten".
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The trademark registrations and extensive use described above demonstrate that Complainant has rights in the ANTHROPOLOGIE mark.
The disputed domain name consists of the ANTHROPOLOGIE mark with the generic word "home" appended to the beginning, plus the “.com” gTLD. The addition of generic words to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). “Indeed, where, as here, the generic word describes the goods or services of the Complainant, its addition contributes to the confusion.” Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003. Similarly, the addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and Complainant's trademark. Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184 ("the TLD suffix is irrelevant when comparing a disputed domain name to a trademark as the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trademarks in issue").
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by <homeanthropologie.com>. Rather, the submissions attached to the Complaint indicate that Respondent was using the disputed domain name in connection with the sale of goods and/or services that compete with those of Complainant. The sale of competitive products using Complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii) of the Policy. LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. FA0601000636445; Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services"). Respondent's email communications of December 27, 2010 do not identify any right or legitimate interest in the disputed domain name, and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant argues that factors (iii) and (iv) are met in light of Respondent's registration of an allegedly well-known trademark, Respondent's physical proximity to Complainant's stores, Respondent's marketing experience, Respondent's operation of a competing business using the disputed domain name, and Respondent's changes to his website upon receiving notice of Complainant's allegations of infringement. The Panel agrees that in light of Respondent's apparent profession, his proximity to Complainant's stores, his sale of similar merchandise, and the arbitrary spelling of Complainant's trademark, it is highly likely that Respondent adopted the disputed domain name knowing that it was Complainant's trademark and intending to capitalize on the goodwill associated with the trademark. Respondent does not argue otherwise but instead comments that the disputed domain name has been taken offline permanently. Ceasing to use a disputed domain name after notice of alleged infringement does necessarily cure the bad faith that the Policy seeks to address. Indeed, some panels have held that ceasing use after notice of infringement is additional evidence of bad faith. Arnold Bernhard & Co., Inc. v. PrivacyProtect.Org / Kevin Dale Press, WIPO Case No. D2010-1511 ("[t]he fact that the Respondent has stopped using the disputed domain name in the meantime is an additional indication of the Respondent’s bad faith"); La Francaise des Jeux v. Jimmy Lomeli, WIPO Case No. D2007-1276 ("The fact that the Respondent stopped using the domain name at issue upon receipt of a warning letter sent to him by the Complainant and the fact the Respondent renewed the domain name despite the Complainant’s intervention is also a sign bad faith"). Certainly Respondent's sale of competitive goods using Complainant's trademark constitutes bad faith. Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483 (“[t]he unauthorized use of Complainant’s trademark to sell competitive products constitutes bad faith under paragraph 4(b)(iv) of the Policy.”).
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <homeanthropologie.com>, be transferred to Complainant.
Bradley A. Slutsky
Dated: January 11, 2011