WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters Inc. v. Ju Yu
Case No. D2014-1639
1. The Parties
Complainant is Urban Outfitters Inc. of Philadelphia, Pennsylvania, United States of America (“USA”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Ju Yu of Meridian, Idaho, USA.
2. The Domain Name and Registrar
The disputed domain name <freepeopleclothingoutlet.net> 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 September 22, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2014, 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.
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 September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on October 22, 2014. 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
Complainant is an American public trading company established in 1970, originally as The Free People’s Store and later rebranded to Urban Outfitters Incorporated. Complainant operates more than 130 stores in the USA, Canada and Europe. In 1984 Complainant launched its global brand FREE PEOPLE, marketing in North America, Europe, and Asia.
“Free People”is a women’s fashion line marketed by Complainant which owns over 75 “Free People” stores in the USA and Canada, “Free People” is sold across the world in 1,500 boutique stores and a selection of department stores on a wholesale basis. Complainant generates over USD100 million per year in sales under this brand.
With three main websites located at <freepeople.com>, <freepeoplewholesale.com> and
freepeople.co.uk>, Complainant has a large online presence.
The disputed domain name was registered by Respondent on August 14, 2014.
5. Parties’ Contentions
Complainant alleges and provides evidence showing that:
Through its continuous use of the FREE PEOPLE mark (the “Mark”) since the launch of its brand over 30 years ago, Complainant has acquired goodwill in the Mark in the clothing and fashion industry.
Complainant owns nine trademark registrations for the Mark in the USA, Europe, and other jurisdictions, the oldest of which dates back to 1994.
The disputed domain name is confusingly similar to Complainant’s Mark.
Respondent has never been authorized to use or register Complainant’s Mark, has no legitimate rights or interests in doing so, and has acted in bad faith by registering and using the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, a complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Complainant has offered sufficient evidence to prove that it is the owner of a valid trademark rights in the USA and other jurisdictions for the Mark.
To satisfy paragraph 4(a)(i) of the Policy, the disputed domain name must be identical or confusingly similar to Complainant’s trademark. Here, the disputed domain consists of (1) Complainant’s registered FREEPEOPLE Mark; (2) the generic term “clothing outlet” – a term highly descriptive of the channels of trade through which Complainant’s goods are sold in connection with its Mark; and (3) the generic Top-Level Domain (“gTLD”) suffix “.com.”
It is well established that the addition of a gTLD does not distinguish a mark, and likewise that the addition of generic terms - particularly ones closely associated with Complainant and its goods, services, or channels of trade - not only fails to avoid confusion but indeed generally tends to increase the likelihood of confusion. Accordingly, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (mere addition of generic words associated with channels of trade before or after the complainant’s mark does not avoid confusion).
The Panel concludes that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must first show a prima facie case that the respondent lacks rights or legitimate interests in a domain name. After such a showing, the burden of rebuttal shifts to the respondent to show that it does have rights or legitimate interests. As expressed in paragraph 4(c)(i), rights or legitimate interests in a domain name may be demonstrated by showing that “before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
In the instant case, Complainant establishes that it has neither licensed nor otherwise authorized Respondent to use its Mark; and that it has amply and publicly protected its trademark rights over many years. Complainant also conducted a search of the Mark together with the name of Respondent and found no references to Respondent indicating any use by Respondent of the Mark, except for the use in dispute here.
Complainant has put forward all the evidence that could reasonably be expected, considering such evidence is peculiarly within the knowledge of Respondent. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the record supports Complainant’s assertions. For this reason, Complainant has established a prima facie case that Respondent must now refute.
Respondent has failed to file any Response rebutting Complainant’s prima facie case.
The Panel therefore concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
“The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.” Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. The Policy states, in paragraph 4(b)(iv), that bad faith exists where the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location.”
Respondent registered the disputed domain name some 30 years after Complainant began using the Mark in commerce and some 20 years after Complainant obtained trademark registrations for the Mark. Given the volume of Complainant’s sales and the striking similarity between Complainant’s Mark and the nature of its goods, on the one hand, and the disputed domain name, on the other, it would be highly implausible to suggest - and indeed Respondent never does suggest - that it was unaware of Complainant’s trademark rights. Moreover, the evidence of record reflects that Respondent is using the disputed domain name to sell what appear to be counterfeit goods, on a website displaying the Complainant’s copyrighted images and a version of the Complainant’s brand story, without any disclaimer or other explanation regarding the Respondent’s relationship with the Complainant, thereby misleading customers as to the source or origin of its goods and unfairly trading on the good will associated with Complainant’s Mark.
Indeed, Respondent has previously been involved in disputes concerning this same Complainant as well as concerning several marks associated with clothing sold in Complainant’s stores. Respondent has already been found to have improperly used trademarks and/or domain names associated with Complainant. See, e.g., Urban Outfitters Inc. v Ju Yu, WIPO Case No. D2014-0029. Nevertheless, Respondent proceeded once again to register a domain name associated with Complainant.
In sum, the Panel finds that Respondent has engaged in a pattern of abusive domain name registrations, constituting bad faith as set forth in paragraph 4(b)(ii) of the Policy. Respondent has incorporated the
Mark into the disputed domain name to capitalize on the good will and reputation of Complainant and its goods and services, constituting bad faith under paragraph 4(b)(iv) of the Policy.
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 <freepeopleclothingoutlet.net> be transferred to the Complainant.
Michael A. Albert
Date: November 5, 2014