WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Net-A-Porter Group Limited v. Wang Xinchuan

Case No. D2015-1259

1. The Parties

The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Winston & Strawn LLP, United States of America (the “United States”).

The Respondent is Wang Xinchuan of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <theoutnet1.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On July 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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.

On July 27, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested 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 in both Chinese and English, and the proceeding commenced on August 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on September 4, 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.

4. Factual Background

The Complainant is a company headquartered in the United Kingdom. It is one of the world’s premier fashion outlets and is in the business of selling discounted designer womenswear and accessories. The Complainant ships its products to various parts of the world, including Asia, Africa, Europe, the Middle East, North and South America.

The Complainant operates a website at “www.theoutnet.com”, featuring information about its activities and products.

The Complainant owns the following trade mark registrations for THE OUTNET:

The disputed domain name <theoutnet1.com> was registered on December 30, 2014, long after the Complainant has registered its trade mark THE OUTNET in the USA, China and Europe. According to the evidence provided by the Complainant, the disputed domain name resolved to a website which shows THE OUTNET mark, and the offer of clothing, shoes, bags and accessories products under various fashion brands, such as “Isabel Marant”, “Helmut Lang”, “Alexander Wang” and “Bailey”. However, as of the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

Due to the extensive use and registration of THE OUTNET mark around the world, the Complainant is confident that THE OUTNET mark has become famous under the laws of the United States, China, and the European Union. Further, the Complainant is confident that THE OUTNET mark would have obtained the status of notorious mark.

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain name is confusingly similar because it fully incorporates THE OUTNET mark, adds the number “1” to THE OUTNET mark, and merely adds the generic Top-Level Domain (gTLD) “.com.” Such minor alterations do not render the disputed domain name any less confusing for purposes of the confusingly similar analysis.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent has never been commonly known by THE OUTNET nor any variations thereof, and has never used any trade mark or service mark similar to the disputed domain name.

The Respondent has never operated any bona fide or 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 that offers products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products. Such use does not constitute a bona fide or legitimate business use.

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 OUTNET mark.

A3. The disputed domain name was registered and is being used in bad faith:

The Respondent has registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in THE OUTNET mark. Had the Respondent conducted even a preliminary trade mark search, it would have found the Complainant’s trade mark registration in THE OUTNET mark and the websites associated with THE OUTNET mark, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its marks in connection with the Complainant’s services. Hence, the Respondent had registered the disputed domain name in bad faith.

The disputed domain name has been used to publish a website offering for sale products of the Complainant’s competitors and/or counterfeit knock offs of the Complainant’s own products. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy at 4(b)(iv).

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the Respondent’s website is entirely in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(c) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in THE OUTNET mark by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark THE OUTNET in its entirety. The trade mark THE OUTNET is clearly identifiable and is the prominent element of the disputed domain name. The addition of the numeral “1” does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s trade mark. The addition of the gTLD “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use 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) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) 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.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant, or otherwise authorized or licensed to use the THE OUTNET mark, or to seek registration of any domain name incorporating the THE OUTNET mark.

The Panel notes the Complainant’s assertion that the Respondent is using the disputed domain name to publish a website that offers products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products. Indeed, by using the THE OUTNET mark on its website without disclaimers disclosing the lack of a business relationship between itself and the Complainant, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.theoutnet1.com” is somehow connected with the Complainant, despite the lack of affiliation or association with or authorization from the Complainant.

The Panel is therefore satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has failed to respond. Since no response was filed, the prima facie case has not been rebutted.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites 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 the Respondent’s websites or location or of a product or service on the Respondent’s website or location.

The Panel determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Given the observation above that the Respondent has not accurately disclosed its relationship (or more precisely lack thereof) with the Complainant and the Panel’s consequent finding that the Respondent lacks rights or legitimate interests in the disputed domain name, this case can be simply dealt with on the basis that the disputed domain name involves an impersonation of the Complainant so as to benefit from confusion created by the disputed domain name itself. Such registration and use of the disputed domain name is abusive in the Panel’s opinion.

The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name <theoutnet1.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: September 22, 2015