WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Net-A-Porter Limited v. Zhou Qinming
Case No. D2011-0504
1. The Parties
The Complainant is Net-A-Porter Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom.
The Respondent is Zhou Qinming of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <netaporter.org> (“Disputed Domain Name”) is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 18, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On March 21, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 22, 2011, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On March 25, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 20, 2011. 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
The Complainant is an e-commerce business that sells a wide range luxury apparel through its website “www.net-a-porter.com”. The Complainant’s website stocks products from over 300 international brands including Burberry, Mulberry, Chloe, Jimmy Choo, Calvin Klein and Moschino and ships to 170 countries.
The Complainant’s website has been in operation since June 2000 and has a loyal customer base around the world. The Complainant’s website has won many awards including a Time Magazine award in 2008 for being one of the 50 best websites. It is viewed by over 3 million people each month and acquires 10,000 new customers every month. The Complainant’s website is advertised extensively both online and offline. The Complainant was valued at £350 million by the Richemont group which acquired the Complainant in April 2010.
The Complainant has registered the trade mark NET-A-PORTER in many countries including the following:
Jurisdiction Trade Mark No. Registration Date
United Kingdom 2206010A July 7, 2000
CTM 007162548 January 22, 2009
China G969606 June 11, 2008
The Complainant also owns the domain names <net-a-porter.com> (registered on July 26, 1999) and <netaporter.com> (registered on January 29, 2006) both of which resolves to the Complainant’s website. The Complainant also owns over 50 domain names incorporating the trade mark NET-A-PORTER or NETAPORTER. The Complainant’s website adopts a clean white background which presents products for sale online organized in column and rows. It also prominently displays the trade mark NET-A-PORTER at its top left corner.
The Disputed Domain Name was registered on December 12, 2009 and redirected visitors to a website at “www.spazzalato.com”. The redirected website has a white background and prominently displays the words “Net a Porter” at the top right corner. The footer states “All Products Are High Quality Replicas” and products under the brands carried by the Complainant’s website (for example, Gucci, UGG Australia) are purportedly offered for sale online in a column and row format. The domain name <spazzolato.com> was registered on June 8, 2010 but it is unknown whether it is owned or controlled by the Respondent as it has in place a WhoIs privacy service.
Other than the WhoIs information on the Disputed Domain Name and the website redirected from the Disputed Domain Name, no further information about the Respondent is available.
5. Parties’ Contentions
The Complainant contends that:
(a) The Disputed Domain Name is identical to the Complainant’s NET-A-PORTER trade mark. The only difference is the removal or the hyphens in the Disputed Domain Name which is a technique also used by the Complainant in its domain names <netaporter.com> and <netaporter.co.uk>;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not connected to or associated with the Complainant and the Complainant has not authorized or given permission to the Respondent to provide goods or services under the Complainant’s trade mark. There is no evidence that the Respondent has been or is commonly known by “net a porter”. The Respondent has not made any use or preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services; and
(c) The Disputed Domain Name was registered and is being used in bad faith. Given the significant reputation of the Complainant’s NET-A-PORTER trade mark, it is inconceivable that the Respondent was not aware of the same at the time of registering the Disputed Domain Name. The Respondent is offering for sale counterfeit products at the website “www.spazzolato.com”. The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant. Potential customers of the Complainant may mistakenly buy counterfeit products believing that they are genuine, or be led to believe that the Complainant is selling counterfeit products. The Respondent is running an online discount fashion store from the website redirected from the Disputed Domain Name and is deliberately seeking to confuse customers as to the source, sponsorship, affiliation, or endorsement of that website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The language of the registration agreement is Chinese. As such, the default language of the proceeding is Chinese. The Complainant requests that the language of the proceeding be English. Having regard to the circumstances, the Panel determines that the language of the proceeding shall be English. In coming to this determination, the Panel has taken into consideration the following factors:
1) The website redirected from the Disputed Domain Name is entirely in English;
3) The Complaint was submitted in English and the Complainant has confirmed that English is the most cost-effective language;
2) Adopting Chinese as the language of the proceeding now will likely result in undue expenses and delay;
4) The Respondent has not replied to the Complaint and did not oppose the Complainants’ request that English be the language of the proceeding; and
5) There is no apparent benefit for the proceeding to be conducted in Chinese.
To succeed in this proceeding, the Complainant must establish the following limbs of paragraph 4(a) of the Policy:
1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name incorporates the words in the NET-A-PORTER trade mark entirely. The Complainant clearly owns rights in the NET-A-PORTER trade mark by virtue of being the registered proprietor.
The only difference between the Disputed Domain Name and the Complainant’s trade mark are the hyphens between the words which have been removed in the Disputed Domain Name. Regardless of the removal of the hyphens, the Disputed Domain Name reads identically to NET-A-PORTER trade mark. The absence of hyphens does not assist to distinguish the Disputed Domain Name from the NET-A-PORTER trade mark and the Panel accordingly holds that the Disputed Domain Name is confusingly similar to the NET-A-PORTER trade mark. Therefore, the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant has already denied any authorization or relationship with the Respondent that justifies the Respondent having any rights or legitimate interests in the Disputed Domain Name. There is also no evidence to suggest that the Respondent is commonly known by the name “net a porter”.
The words “net a porter” are clearly used as a trade mark on the website redirected from the Disputed Domain Name. The omission of hyphens does not assist to distinguish the words “net a porter” from “net-a-porter”. The website redirected from the Disputed Domain Name purports to offer online services for replicas of branded products. In the absence of any clarification or explanation from the Respondent, the Panel can only conclude that the Respondent is associated with the redirected website and that there is a reasonable likelihood that the replicas offered for sale on the website without the authorization of the brand owners. Such activity on the part of the Respondent can hardly be described as legitimate or bona fide.
Therefore, the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The burden of production has shifted to the Respondent and the Respondent has failed to discharge it by not filing a Response. In the circumstances, the second limb of paragraph 4(a) is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) provides an example of bad faith registration and use of a domain name:
“[…] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The website redirected from the Disputed Domain Name uses in relation to its online services a sign which is not capable of being distinguished from the NET-A-PORTER trade mark of the Complainant. This is an obvious attempt at associating the content of the website with the NET-A-PORTER trade mark. Based on the available evidence, the Panel agrees that it is inconceivable that the Respondent was not aware of the NET-A-PORTER trade mark and the Complainant. The Panel believes that a reasonable visitor to the website will likely be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The website is obviously targeted at attaining commercial gain from Internet users visiting it. Accordingly, the factual circumstances fall within the ambit of the scenario envisaged by paragraph 4(b)(iv).
The Complainant has shown reasonable basis for the likelihood of products offered on the website redirected from the Disputed Domain Name to be counterfeits. In particular, the bold assertion on the website that “All Products Are High Quality Replicas” leaves little to the imagination as to the nature of the products. The allegations leveled at the Respondent are very serious. However, the Respondent has chosen to remain silent. Such a lack of reaction is not reasonably expected from an honest trader in the circumstances. In line with past panel decisions, the situation speaks loudly of bad faith on the part of the Respondent (see Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988; Luxottica Group S.p.A. , Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297; Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552).
The Complainant also relied on paragraph 4(b)(iii) of the Policy arguing that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. The Panel accepts that there is a reasonable likelihood that the registration of the Disputed Domain Name and the redirected website will have the effect of causing confusion to consumers and thereby cause some disruption to the Complainant’s business. However, the Panel is not convinced on the available facts that the Complainant is a competitor of the Respondent, or that the registration of the Disputed Domain Name was primarily for the purpose of disrupting the Complainant’s business. Nevertheless, in view of the above findings, the Panel will not make any finding in relation to paragraph 4(b)(iii).
Based on the above, the Panel holds that bad faith use and registration under the third limb of paragraph 4(a) is established as well.
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 <netaporter.org> be transferred to the Complainant.
Kar Liang Soh
Dated: May 11, 2011