The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Duan Zuochun/ Simon David of Zhuhai, Guangdong, China, and Olympia, Washington, United States of America, respectively.
The disputed domain name <netaporter.biz> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant submitted an amended Complaint on April 15, 2013.
The Complainant sent an email communication to the Center on April 5, 2013 attaching a copy of an email communication signed by a Mr. Duan and received by the Complainant’s legal counsel on April 4, 2013 to the effect that Mr. Duan was prepared to sell the disputed domain name for USD1000.00.
The Center verified that the Complaint together with the amended 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 April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2013.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 16, 2013. 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 Complainant is the owner of a large number of registered trademarks worldwide for NET-A-PORTER which are listed in an Annexure to the Complaint. Amongst those registrations are the mark NET-A-PORTER with U.S.Reg. No. 2661220, and registration date December 17, 2002, covering among other things “computerized on line retail services featuring clothing, shoes, handbags, fashion goods, namely, hats, jewelry, accessories, scarves and purses, fashion accessories.”; and the mark NET-A-PORTER with Chinese Reg. No. 9949703 and registration date September 9, 2011 covering among other things, “short; jacket; coat; woman shirt; shirt; pullover; onepiece dress; skirt; drawers; pants . . .”.
The Complainant is the owner of the domain name <net-a-porter.com> registered on July 26, 1999.
The disputed domain name was registered on October 14, 2011.
The Complainant asserts that on April 4, 2013, the initial filing date of this Complaint, the Registrar for the disputed domain name listed the Respondent in the WhoIs record as Duan Zuochun, of Zhuhai, Guangdong, , China. On April 12, 2013, the Center notified the Complainant that the Registrar indicated that the registrant of the disputed domain name as of April 12, 2013 was Simon David, of Olympia, Washington, United States. The Complaint was therefore amended to name both Duan Zuochin and Simon David as the Respondents.
The Complainant asserts that it is a leading fashion and couture e-tailer (Internet-based retailer) operating from the website “www.net-a-porter.com”, launched in June 2002. This website can be accessed worldwide and leading fashion brands are available from it, with products being shipped to 170 countries worldwide. The website is presented in what the Complainant refers to as a fashion magazine format and the Complainant asserts that it is viewed by 2.5 million people each month. The Complainant asserts that it has received numerous awards in relation to its business and its website. The Complainant also asserts a large following on social media Facebook and Twitter. The Complainant submits that the NET-A-PORTER marks have become famous under US law.
The Complainant further asserts that the disputed domain name is confusingly similar to its registered trademarks as it merely deletes hyphens and adds “.biz” to the generic top level domain. The Complainant cites various UDRP panel decisions to the effect that addition of other terms to a wholly incorporated trademark, deletion of hyphens and substitution of a different extension do not affect a domain name for the purposes of assessing confusing similarity.
The Complainant asserts that neither Duan Zuochun nor Simon David have ever been commonly known under the Complainant’s trademarks nor ever used any trademark similar to the Complainant’s trademarks in business other than in the manner considered in the extant case. Nor has the Complainant ever granted any license to the Respondent to use the disputed domain name similar to the Complainant’s trademarks.
Further the Complainant submits that 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 Complainant asserts that the Respondent uses the disputed domain name to publish advertisements for websites that offer products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products, which does not constitute bona fide or legitimate business use, according to the Complainant.
Further the Complainant submits that registration of the disputed domain name with actual or constructive knowledge of previously registered trademarks belonging to the Complainant is per se evidence of bad faith registration. Further, using the disputed domain name to publish a website consisting of advertisements for websites offering for sale products of the Complainant’s competitors and/or possible counterfeit knockoffs of the Complainant’s own products or to direct visitors to competing goods and services of others falls squarely within the explicit examples of bad faith registration and use found in the Policy, according to the Complainant.
Further, according to the Complainant the disputed domain name resolves to a website with advertising links for products in competition with those offered under the Complainant’s mark. According to the Complainant such activity is disruptive of the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith.
Finally the Complainant asserts that there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s NET-A-PORTER marks. As such, the nature of the disputed domain name is itself evidence of bad faith registration and use, according to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name is not identical to the Complainant’s NET-A-PORTER trademark. However, the disputed domain name wholly incorporates that trademark, with no additions. The omission of the hyphens is of no significance in terms of the overall similarity between the marks and the disputed domain name. As has been regularly decided by different UDRP panels the substitution of the generic top level domain for another is also inconsequential in terms of confusing similarity. Nothing in the disputed domain name is apt to dispel the impression of confusing similarity and connection between it and the Complainant’s NET-A-PORTER trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark NET-A-PORTER.
The Respondent (Simon David and/or Duan Zuochun) is not commonly known under the Complainant’s trademark nor has previously used or adopted such a mark in a legitimate business. The Complainant asserts that it has not licensed the use of its trademarks or the disputed domain name to the Respondent in any way. The website to which the disputed domain name resolves attempts to ride on the reputation of the Complainant by adoption of a domain name wholly incorporating the Complainant’s trademarks and by engaging in a similar business to that of the Complainant. The website to which the disputed domain name resolves was established at a time when the reputation of the Complainant’s trademarks was well established around the world. In the circumstances the Respondent’s conduct does not give rise to any rights or legitimate interests in the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name wholly incorporates the Complainant’s trademark, with only the omission of the hyphens which has little or no effect in terms of consumer impression and understanding. The Complainant’s trademark NET-A-PORTER is an inherently distinctive play on words. The Complainant had a well established reputation at the time the disputed domain name was registered. In the Panel’s opinion it is inconceivable that the Respondent was unaware of the Complainant’s business or reputation in the NET-A-PORTER marks at that time. This is further evidenced by the fact that the website to which the disputed domain name resolves engages in the same line of business of fashion retailing that the Complainant engages in by way of its <net-a-porter.com> web presence.
Further the Respondent’s website contains links to websites where products are offered in a manner which competes with the Complainant’s fashion e-tailer business. The products available from the website to which the disputed domain name resolves may be counterfeit products, according to the Complainant. In the circumstances it is apparent that the Respondent is using the disputed domain name nearly identical to the Complainant’s trademark to attract customers to its website to then benefit from their confusion by providing paying links or competing offerings of goods. Further, according to the record the Respondent appears to have attempted to sell the disputed domain name to the Complainant for a sum beyond recovery of regular expenses. This may be further evidence of bad faith use.
Therefore the Panel holds that the disputed domain name was registered and is being used in bad faith.
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.biz> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: May 27, 2013