WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Net-A-Porter Group Limited v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2013-0615
1. The Parties
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 Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Virgin Islands, Oversea Territory of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <net-a-pporter.com> and <thenetaporter.com> are registered with Above.com, Inc.
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 names. On April 9, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 10, 2013.
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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2013.
The Center appointed James McNeish Innes as the sole panelist in this matter on May 13, 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.
4. Factual Background
The Complainant’s NET-A PORTER business is well known as an e-tailer which sells worldwide through its website “www.net- a-porter.com” a wide range of high quality luxury apparel including dresses, coats, trousers, bags, shoes and jewelry. The Complainant has invested considerable resources in the development of the website. A number of famous international brands are sold through the Complainant’s website. It has a number of trademark registrations worldwide for the name NET-A-PORTER. A number of the registrations are demonstrated on the record and have existed since 2001. The disputed domain name was registered on July 27, 2011.
5. Parties’ Contentions
The Complainant’s contentions include the following
a) Its NET-A-PORTER business was launched in June 2000 and rapidly became the world’s premier luxury fashion e-tailer and online couture shopping website, located at the domain name <net-a-porter.com> (the Complainant’s website).
b) The Complainant’s website is presented in the style of a fashion magazine and offers its customer’s access to the most recent and up-to-date looks of the season from international cutting-edge labels. The pages of the website feature high fashion editorial, updated weekly with new content and products.
c) The Complainant’s website receives a high volume of industry and media attention and it has won a multitude of awards since its formation. In 2004, it claimed the UK Fashion Export Award for "Best E-tailer", and the British Fashion Council Award for "Best Shop". Since 2004, the Complainant's website has won more than 35 awards including "Best Online Shop" in the 2006 In Style Shopping Awards, "E-tailer 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".
d) The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. The Complainant advertises both within the industry and to the general public, in a variety of media, including in magazines and online.
e) As well as the domain name <net-a-porter.com> (registered on July 26, 1999), the Complainant owns more than 70 other domain names which include the NET-A-PORTER marks or variations thereof. These include generic top level domains such as “.com” nd country code top level domains such as“.us” (both of which resolve to the Complainant's website).
f) Due to the extensive use and registration of the NET-A-PORTER marks around the world, the NET-A-PORTER marks have become famous in the United States and Australia. Further, the NET-A-PORTER marks have obtained the status of a notorious mark and therefore enjoy liberal protection under the Paris Convention.
g) The disputed domain names are confusingly similar to the NET-A-PORTER marks. In the case of <net-a-pporter.com>, the disputed domain name is confusingly similar to the NET-A-PORTER marks because it fully incorporates the NET-A-PORTER marks and merely contains an insignificant typographical difference. In the case of <thenetaporter.com>, the disputed domain name is confusingly similar to the NET-A-PORTER marks because it fully incorporates the NET-A-PORTER marks, adds only "the" and deletes only hyphens. The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish confusing similarity for purposes of the Policy despite the addition of other words to such marks.
h) the Respondent lacks rights or legitimate interest in the disputed domain names. It has never been commonly known by the NET-A-PORTER marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain names.
i) The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to the NET-A-PORTER marks. See Nokia Corp v. Nokiagirls.com, WIPO Case No. D2000-0102 (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
j) The Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected noncommercial or fair use of the disputed domain names. Respondent is using the domain names as pay-per-click websites with advertising links to websites that offer products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of Complainant's own products.
k) The Respondent registered the offending disputed domain names with either actual or constructive knowledge of the Complainant's rights in the NET-A-PORTER marks by virtue of Complainant's prior registration of those marks with the trademark office of Australia, where Respondent is a resident, and the United States, where the Respondent's websites are targeted.
l) The disputed domain names have been used to publish websites consisting of advertisements for websites offering for sale products of the Complainant's competitors and/or counterfeit knock offs of the Complainant's own products, or to direct visitors to competing goods and services of others.
m) Further, the disputed domain names resolve to websites that offer advertising links for products in competition with those offered under the Complainant's mark. Such activities are disruptive to the Complainant's business and therefore conclusive evidence that the Respondent registered and is using the disputed domain names in bad faith pursuant to Policy, paragraph 4(b)(iii).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the domain names.
(iii) That the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the disputed domain names are identical or confusingly similar to its mark for the following reasons;
a) The disputed domain name is confusingly similar to the dominant portion of the Complainant’s mark NET-A-PORTER.
b) The only difference between the Complainant’s mark and the disputed domain name is that it contains an insignificant typographical difference.
c) The disputed domain name is a minor variation of the Complainant’s mark.
a) The disputed domain name is confusingly similar to the dominant portion of the Complainant’s mark NET-A-PORTER.
b) The only difference is that it adds only “the” and deletes only hyphens.
c) The disputed domain name contains only minor variations of the Complainant’s marks.
The Panel accepts the Complainant's contentions. The disputed domain names are confusingly similar to the Complainant's mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading "Evidence of Registration and Use in Bad Faith". For the purposes of paragraph 4(a)(iii), the 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 disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant's assertion that the Respondent has attempted to divert users to its websites for commercial gain by creating confusion with the Complainant's mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 names <net-a-pporter.com> and <thenetaporter.com> be transferred to the Complainant.
James McNeish Innes
Date: May 20, 2013