WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Net-A-Porter Group Limited v. D Frankland

Case No. D2013-0616

1. The Parties

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

The Respondent is D Frankland of York, United Kingdom, represented per se.

2. The Domain Name and Registrar

The disputed domain name <netaporter.net> (the “Domain Name”) is registered with eNom (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 Domain Name. On the same day, 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 April 9, 2013, the Center received an email communication from the Respondent indicating its willingness to settle the dispute with the Complainant. On April 10, 2013, the Center invited the Complainant to comment on the possible settlement between the parties by April 11, 2013. The Center did not hear from the Complainant 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 April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Response was filed with the Center on May 2, 2013.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 14, 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 to these proceedings has simultaneously made another Complaint against a third party in regard to other disputed domain names. The Center has requested that Charters Macdonald-Brown be Panelist for both of these proceedings.

4. Factual Background

The Complainant is the owner of the Net-a-Porter business, which operates via a website using domain name <net-a-porter.com> (the “Website”). Through the Website, the Complainant retails luxury fashion and couture clothing items. Designer brands sold on the Website include Burberry, Mulberry, and Jimmy Choo, among many others. The Complainant’s business, operated from the Website, has won numerous awards since its formation, and the Website was included in Time Magazine’s 2008 list of “50 Best Websites”. The Website also gains significant public attention through advertisement on social media sites such as Facebook (“www.facebook.com/netaporter”) and Twitter (“www.twitter.com/netaporter”). The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. (It is noted in relation to the registered trademarks and domain names mentioned below that until July 28, 2011, the Complainant was known as Net-a-Porter Ltd).

The Complainant submitted in its Complaint that it “owns a large number of trademark registrations worldwide for NET-A-PORTER (the NET-A-PORTER MARKS) ”. The Complainant then went on to provide at Annex 6 to its Complaint a printout of United States. trademark registration 2661220 NET-A-PORTER from the United States Patent and Trademark Office (USPTO) register; a printout of United Kingdom trademark 2261318 NET-A-PORTER from the United Kingdom Intellectual Property Office (UKIPO) register, and a trademark search conducted through a tool called “Corsearch” which shows a number of NET-A-PORTER marks in the United States. The results of this “Corsearch” are somewhat unclear, with most of the trademark registration details being accompanied by the term “Cancelled”, although what precisely has been cancelled is not obvious.

The Panel mayundertake limited factual research into matters of public record in the process of making its Decision (Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679). In this case, the Panel has carried out a number of preliminary trademark searches to gain a fuller picture of the Complainant’s trademark rights in NET-A-PORTER, and has found a number of CTMs incorporating the NET-A-PORTER mark, as well as national rights not referred to in the Complaint.

The Panel has the discretion to take the results of this research into account, and in any case can conclude that the Complainant owns a number of registered trademark rights in the mark NET-A-PORTER worldwide.

The Complainant also owns more than 70 domain names which include NET-A-PORTER mark or variations thereof, including top-level domains and country code top-level domains. It registered its Website domain name (<net-a-porter.com>) on July 26, 1999, and the business trading from the Website commenced in June 2000. It therefore follows that since at least June 2000, the domain name has been associated with the Complainant’s business.

On February 10, 2005, the Respondent registered the Domain Name <netaporter.net>, which the Complainant contends in these proceedings should be transferred from the Respondent to the Complainant.

Upon receiving notification from the Center about the Complaint made against it, the Respondent contacted the Center by email on April 9, 2013, indicating that it would “like to give the domain name straight away to prevent any further misunderstanding”. On April 10, 2013, the Center contacted the Complainant by email to communicate this offer to transfer the Domain Name, and suggested a suspension of the proceedings to explore a possible settlement. The Complainant did not respond to this communication.

On April 12, 2013, the Center notified the parties that, as it had not received a request from the Complainant requesting a suspension of proceedings, it would proceed with notification of the Complaint. The Respondent submitted a formal Response to the Complaint on May 2, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant submits that:

(i) the Domain Name is confusingly similar to NET-A-PORTER, in which it has registered trademark rights;

(ii) the Respondent lacks rights or legitimate interests in the Domain Name; and

(iii) the Respondent registered and is using the Domain Name in bad faith.

Pursuant to paragraph 4(a) of the Policy, in order to succeed in these proceedings, the Complainant must show that each of these three elements is present.

B. Respondent

The Respondent emphasizes in his Response, his agreement that the Domain Name be transferred to the Complainant without delay.

The Respondent sets out the reasons why he registered the Domain Name in 2005, which are, in summary, that it was a play on the term “pret a porter”, and suggested the concept of a consumer “porting” their telephone and broadband from one service provider to another (at the time of registration, this was possible due to regulatory changes to Local Loop Unbundling in the industry, in which the Respondent held a particular interest). The Respondent also owns the domain name <pretasurfer.com> for the same reason.

The Respondent states that the motivation for the registration of the Domain Name was not connected to the existence of the Complainant.

The Respondent submits that he has never promoted the Domain Name and it receives little to no Internet “traffic”. The Domain Name points to a “parking page” on a website, which had keywords set for broadband services only, and not clothing: any links to clothing could only be as the result of a contrived search by a user of the website.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is established that the Complainant has rights in the trademark NET-A-PORTER, necessary for a finding of confusing similarity under 3(b)(ix)(1) of the Rules and paragraph 4(a)(i) of the Policy.

The Complainant contends, in particular, that the Domain Name is confusingly similar to its NET-A-PORTER trademarks because the Domain Name fully incorporates the NET-A-PORTER mark, and that the removal of the hyphens between the words, and the use of “.net” in the Domain Name, are both irrelevant to the “confusingly similar” analysis.

For the purposes of assessing confusing similarity in accordance with the Policy, the Panel is permitted to disregard the suffix “.net”, as it is generic and a technical requirement of registration, which does not itself form part of the trademark in question (Cox Holdings, Inc. v. Gary Lam, WIPO Case. No. D2004-0931). Therefore, it is only the omission of the hyphens in the Domain Name that needs to be considered.

The Panel finds that the removal of the hyphens does not alter the fact that the Domain Name <netaporter.net> is confusingly similar to the Complainant’s NET-A-PORTER mark (Renault Trucks v. Cho, Yoongoo, WIPO Case. No. D2005-0693).

The Panel finds that the Complainant has proved the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent lacks rights or legitimate interests in the Domain Name due to the Respondent using the email addresses “ […]t@namecheap.com” and “[…]@totalise.co.uk”, and being identified on the DomainTools’ WhoIs database as “D Frankland”, therefore, not being commonly known by the NET-A-PORTER marks or variations thereof. Furthermore, the Complainant submits that the Respondent has never used any trademark or service similar to the Domain Name by which it may have come to be known, apart from the alleged infringing use which is the subject of this Complaint.

The Complainant also contends that the Respondent has never operated any bona fide or legitimate business under the Domain Name, nor is it making a protected non-commercial or fair use of the Domain Name. A screenshot of the Domain Name taken on April 3, 2013 shows that it pointed to a “parking page” on the website “www.netaporter.net”, which featured a series of “sponsored listings” almost exclusively for services or companies related to clothing and shoes (although, apparently, unconnected with the Complainant’s business). Nor are these sponsored listings, apparently, connected to the Respondent.

The Respondent has provided reasons why he registered the Domain Name, but he has, by his own admission, only ever used the Domain Name to point to a parking page of a website which he has not promoted and has not received any significant attention from Internet users. Using the Domain Name in this way cannot be considered bona fide, commercial, or fair use on the part of the Respondent (Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787). In addition, the Respondent’s submission that any links on the “www.netaporter.net” website to clothing would only be there as the result of a contrived search is incorrect. The screenshots submitted in evidence show different data on-screen, but in any event, the Panel’s visit to the Domain Name website shows that two of the sponsored listings are for “Women’s Clothing” and “Men’s Clothing”. Therefore, there is reason to believe that the Domain Name is being used to publish advertisements for products that directly compete with the Complainant’s business.

The Complainant’s task under this element of the Policy, paragraph 4(a)(ii) is essentially to “prove the negative”, i.e. that the Respondent does not have rights or legitimate interests in the Domain Name, and, as such, it has been established that the Complainant need only present a prima facie case; the burden is then placed on the Respondent to prove he owns any such rights or legitimate interests. The Respondent has not proved successfully in his Response that he owns any right or legitimate interest in the Domain Name. The Panel agrees with the Complainant’s submission that the Respondent is not commonly known by the NET-A-PORTER marks, nor any variations thereof, nor that he is known by a trademark or service similar to the NET-A-PORTER marks.

Given the above assessment, coupled with the fact that no authorization or licence has been granted in respect of the Respondent’s use of the NET-A-PORTER marks, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s rights in the NET-A-PORTER marks, due to the Respondent being resident in the United Kingdom where the Complainant has registered trademark rights in NET-A-PORTER, and because the “Respondent’s website” is targeted at the United States, where the Complainant also has registered trademark rights for NET-A-PORTER.

The Panel is reluctant to find that a respondent will always have constructive knowledge of a complainant’s trademark rights if they are registered in a place to which the respondent is connected the registration of a domain name is fast, simple, and can be made by anybody who uses the Internet, so there is no reason why a general member of the public would, necessarily, know about trademark rights that were similar to the domain name being registered. However, in this case, it seems extremely unlikely, given the reputation and goodwill of the Complainant especially in the United Kingdom, that the Respondent did not know of the Complainant or that it would have rights in NET-A-PORTER. In addition, the Complainant has a very strong online presence, and advertisements and references to the brand are frequent on the Internet. Even if it were the case that the Respondent was unaware of the Complainant at the time of registration (which he does not submit in his Response), it is highly unlikely that he would not have become aware of the Complainant in the six years he has owned the Domain Name.

As established in the assessment above, some of the advertisements (or all of them, if the Complainant’s screenshot of the website is consulted) for services on the website compete with the Complainant’s services, but there is no evidence from the screenshots produced in the proceedings, nor from the Panel’s limited research, that there is any content on the website that appears to be advertising “counterfeit knockoffs” of the Complainant’s products. Indeed, the Panel’s research shows that the website appears to feature sponsored links for a variety of products, not just clothing. However, the fact remains that there are advertisements for clothing on the website, which directly compete with the Complainant’s business. In accordance with paragraph 4(b)(iii) of the Policy, the Panel considers that the Respondent registered the Domain Name to disrupt the Complainant’s business, which is indicative of bad faith. If subsequent conduct is also taken into account, panels in previous UDRP decisions have found that a domain name registrant will normally be deemed responsible for the content appearing on a website at its domain name, even if the content is generated on an automatic basis. The Respondent has not, apparently, acted to mitigate any “disruptive” content on the website.

It would also appear that the Respondent registered the Domain Name to try to intentionally attract, for commercial gain, Internet users to the Domain Name’s website by creating a likelihood of confusion with the NET-A-PORTER mark, in accordance with a finding of bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

In any event, regardless of the findings of the Panel in connection with the elements which must be proved under paragraph 4(a) of the Policy, the Respondent has unambiguously and formally declared that he consents to the transfer of the Domain Name to the Complainant. The Panel has the discretion to transfer the Domain Name on this basis alone.

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <netaporter.net>, be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: May 24, 2013