WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Net-A-Porter Group Limited v. Liu Jiapeng
Case No. D2013-0613
1. The Parties
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.
Respondent is Liu Jiapeng of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <net-a-porter.info> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
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 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 April 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2013. On April 30, 2013, the Center received an email communication from Respondent to settle with Complainant. After the Center notified the possible settlement to Complainant, no request for suspension was received from Complainant.
The Center appointed Mary Padbury as the sole panelist in this matter on May 22, 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 due date for decision was extended to July 14, 2015.
4. Factual Background
Complainant’s NET-A-PORTER business was launched in June 2000 and rapidly became one of the world’s premier luxury fashion e-tailer and online couture shopping websites, located at the domain name <net-a-porter.com> (Complainant’s Website).
Complainant’s Website, which can be accessed worldwide, sells a wide range of high quality luxury apparel, including dresses, coats, trousers, maternity, swimwear, jeans, bags, shoes and accessories in general (jewelry, scarves, belts etc.). Famous international brands sold on Complainant’s Website include Burberry, Mulberry, Chloé, Jimmy Choo, Calvin Klein and Moschino.
Complainant’s Website is presented in the style of a fashion magazine and offers its customers access to the most recent and up-to-date looks of the season from international cutting-edge labels. The pages of Complainant’s Website feature high fashion editorial, updated weekly with new content and products, which is viewed by over 2.5 million people each month.
Complainant’s Website receives a high volume of industry and media attention and has won a number of awards since its formation. In 2004, it received the UK Fashion Export Award for “Best E-tailer” and the British Fashion Council Award for “Best Shop”. Since 2004, Complainant’s Website has won more than 35 awards including “Best Online Shop” in the 2006 In Style Shopping Awards, “Etailer of the Year” in the 2008 Footwear News Achievement Awards, “International Advertiser of the Year” in the 2008 LinkShare Golden Link Awards and it was included in Time Magazine’s 2008 list of “50 Best Websites”. In 2010, Complainant’s Founder and now Executive Chairman, Natalie Massenet, was presented with the “Innovator of the Year” award at the Harper’s Bazaar Women of the Year Awards and Complainant was named “Luxury Retailer of the Year” in the Luxuria Awards.
Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. Complainant advertises both within the industry and to the general public, in a variety of media, including in magazines and online.
Complainant has also developed a strong presence in social media which serves to advertise and popularize Complainant’s Website and its business. In February 2013, the official NET-A-PORTER page on the social media site Facebook (located at “www.facebook.com/netaporter”) had received more than 1 million “likes” from fans of the brand and the official NET-A-PORTER page on the social media site Twitter (located at “www.twitter.com/netaporter”) had more than 400,000 “followers”.
Complainant owns a large number of trademark registrations worldwide for NET-A-PORTER (the NET-A-PORTER marks) including the registration for its NET-A-PORTER trademark in United State Registration No. 2661220, registered from December 17, 2002, covering “computerized on line retail services featuring clothing, shoes, handbags, fashion goods, namely, hats, jewelry, accessories, scarves and purses, fashion accessories” and Canadian Registration No. 634312, registered from March 4, 2005, covering “fashion accessories and gifts; and mail order catalogue services featuring services featuring clothing, shoes, handbags, fashion accessories and gifts.”
As well as the domain name <net-a-porter.com> (registered on July 26, 1999), Complainant owns more than 70 other domain names which include the NET-A-PORTER marks or variations. These include top level domain names such as <netaporter.com> and country code domain names such as <net-aporter.us> (both of which resolve to Complainant’s Website). Complainant was known as Net-A-Porter Ltd until July 28, 2011.
The disputed domain name was created on July 9, 2012.
5. Parties’ Contentions
Complainant contends, due to the extensive use and registration of the NET-A-PORTER marks around the world as described above, the NET-A-PORTER marks have become famous under the laws of the United States and Canada. Further, Complainant asserts the NET-A-PORTER marks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.
Complainant contends the disputed domain name is confusingly similar to the NET-A-PORTER marks because it fully incorporates the NET-A-PORTER marks, and adds only the “.info” to the top level domain.
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name in that Respondent, who always uses the e-mails “[….]@gmail.com”, has referred to itself in the WhoIs database as Liu Jiapeng and has never been commonly known by the NET-A-PORTER marks, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known.
Complainant contends 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. Complainant further contends Respondent is using the disputed domain name to publish advertisements for websites that offer products for sale that compete directly with Complainant and/or which may be counterfeit knockoffs of Complainant’s own products. Complainant concludes such use does not constitute a bona fide or legitimate business use.
Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the NET-A-PORTER marks.
Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant contends Respondent must have had either actual or constructive knowledge of Complainant’s rights in the NET-A-PORTER marks. Further, Complainant contends that the disputed domain name is being used to publish a website consisting of advertisements for websites offering for sale products of Complainant’s competitors and/or possible counterfeit knockoffs of Complainant’s own products or to direct visitors to competing goods and services of others. In addition, the disputed domain name redirects to a website that offers advertising links to products in competition with those offered under Complainant’s mark. Such activity is disruptive to Complainant’s business. In addition, Complainant contends that there is no reason for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of Complainant’s NET-A-PORTER marks. As such, the nature of the disputed domain name itself evidences bad faith registration and use. Lastly, Complainant contends that even if Respondent asserts that he was somehow unaware of Complainant’s rights in the NET-A-PORTER marks, had Respondent conducted even a preliminary trademark search, he would have found Complainant’s various trademark registrations and websites associated with the marks and numerous additional references in commerce, on the Internet, and in publications evidencing Complainant’s use of its marks in connection with Complainant’s services.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
The panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <net-a-porter.info> is confusingly similar to the registered trademark NET-A-PORTER owned by Complainant. Complainant’s trademark has been adopted in its entirety and the addition of “.info” does not change this conclusion.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to the circumstances which might demonstrate as follows:
(i) before any notice to Respondent of the dispute, 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) Respondent as an individual, business or other organization, has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleading divert consumers or to tarnish the trademark or service mark at issue. Moreover, what evidence there is, suggests use of the disputed domain name for commercial gain to misleadingly divert consumers or to tarnish the trademark in issue.
The Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel is satisfied the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name;
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name provided Respondent has engaged in the pattern of such conduct;
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service of Respondent's website or location.
The Panel is satisfied that at least paragraphs 4(b)(iii) and (iv) of the Policy are made out in that it is likely that Respondent has registered the disputed domain name either to disrupt the business of a competitor or to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark NET-A-PORTER as to the source, sponsorship, affiliation, or endorsements of Respondent’s website or location or of any product or service of Respondent’s website or location.
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.info> be transferred to Complainant.
Date: July 29, 2013