WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Net-A-Porter Group Limited v. Suh Hanjun
Case No. D2014-2071
1. The Parties
The Complainant is The Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Winston & Strawn LLP, United States of America.
The Respondent is Suh Hanjun of Seoul, Republic of Korea, self-represented.
2. The Domain Names and Registrar
The disputed domain names <net-a-porter.club> and <net-a-porter.link> (the "Disputed Domain Names") are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrants 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 proceeding commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014.
The Respondent emailed his Response to the Center on December 28, 2014, at approximately 6:15 p.m. Eastern Standard Time (which was after midnight Geneva time). The case file included a post-Response submission by the Complainant on January 6, 2015 concerning the timeliness of the Response and a further submission by the Respondent on January 13, 2015 objecting to the Complainant's submission.
The Panel notes that the Response, allegedly sent from New York and thus timely, was received by the Center in the early hours of the morning after the Response due date. Even if one were to consider the Response as late, the Panel finds no prejudice to the Complainant in the present circumstances and will consider the Response in rendering this decision. Cf., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (accepting late submission that resulted in no prejudice to the parties).
The Complainant seeks permission to file a Reply. The Complainant's request contends that "it appears that the evidence the Respondent submitted was manufactured after notice of these proceedings. It appears that the content creation date is December 28, 2014 (after the Complaint was filed) and that the document was edited for several hours on that date." The Policy demonstrates a strong preference for single submissions by the parties. This truncated process, specifically adopted by ICANN notwithstanding the availability of other litigation models, helps promote rapid, cost effective dispute resolution. Although there are limited times when a supplemental submission may be appropriate (such as to present new facts or authority not available at the time of the initial submission, see Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000‑0105; Investissement Marius Saradar S.A.L. (Holding Company) and Banque Saradar S.A.L. v. John Naffah and Z Publishing Inc, WIPO Case No. D2000-0853), supplemental submissions should be the rare exception, and not the rule.
Here, although there appears to be some disputed facts between the parties, there also is substantial documentary evidence in the case file that helps to clarify the issues. The Panel thus believes that it presently has sufficient information in the record in order to issue its ruling. Of course, to the extent either party disagrees with the Panel's decision, it will be free to file a lawsuit (Policy, paragraph 4(k)) where it can engage in discovery and offer the court live testimony in order to allow credibility findings to be made on the disputed facts. See Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Accordingly, the Panel concludes that the 'supplemental submissions were not warranted in this case, and shall decide this dispute based upon the Complaint and Response.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 12, 2015. 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 was launched in June 2000 and has become one of the world's premier luxury fashion e-tailer and online couture shopping websites, located at "www.net-a-porter.com" (the Complainant's Website).
The Complainant owns a large number of trademark registrations worldwide for NET-A-PORTER (collectively, the "NET-A-PORTER Marks"). In particular, the Complainant owns International Reg. No. 1074088 for the mark NET-A-PORTER, having a registration date of August 31, 2012, and covering "electronic downloadable publications in the fields of fashion, news, lifestyle, culture, entertainment, travel, [and] social networking," among other items. The Complainant also owns International Reg. No. 969606 for the mark NET-A-PORTER, which issued on January 24, 2013, and covers retail services relating to clothing. Further, the Complainant owns UK Reg. No. 2375992 for the mark NET-A-PORTER, having a registration date of October 18, 2004, and covering among other things "entertainment services," as well as UK Reg. No. 2261318 for the mark NET-A-PORTER, having a registration date of September 14, 2001, and covering "[t]he bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothes store or from an Internet website specializing in the marketing of clothing and related accessories."
The Complainant's Website 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.). Well-known international brands sold on the Complainant's Website include Burberry, Mulberry, Chloé, Jimmy Choo, Calvin Klein and Moschino. The pages of the Complainant's Website also feature high fashion editorial, updated weekly with new content and products, which is viewed monthly by over 2.5 million people. Indeed, the Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries.
In 2004, the Complainant's Website won 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 and "E-tailer of the Year" in the 2008 Footwear News Achievement Awards." In 2010, the Complainant's Founder was presented with the "Innovator of the Year" award at the Harper's Bazaar Women of the Year Awards and the Complainant was named "Luxury Retailer of the Year" in the Luxuria Awards. Examples of these awards and others are attached as Annex 5 to the Complaint.
The Respondent registered the Disputed Domain Names on August 14, 2014.
The Complainant's trademarks were all registered before the Respondent's registration of the Disputed Domain Names. The Respondent contends that he began planning to use the Disputed Domain Names a few months prior to the initiation of this proceeding. The Respondent admits to having at least some knowledge of the NET-A-PORTER mark before applying for registration of the Disputed Domain Names ("we hardly knew this company (Complainant)").
5. Parties' Contentions
The Complainant asserts that it has rights in the NET-A-PORTER trademark. The Complainant contends that the Disputed Domain Names are identical to the Complainant's mark because it consists of the NET-A-PORTER mark in its entirety, and that the only difference between the Complainant's mark and the Disputed Domain Names are the addition of the generic Top-Level Domain ("gTLD") ".link" and ".club". The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant further alleges that the Respondent registered and uses the Disputed Domain Names in bad faith in view of the renown of the NET-A-PORTER Marks, absence of likely legitimate uses by an unauthorized party like the Respondent and Respondent's numerous domain name registrations containing other famous marks, such as MACYS, NIEMAN MARCUS and AVEDA, among others, with no discernible legitimate business purpose. Consequently, the Complaint seeks to have the Disputed Domain Names transferred to the Complainant.
The Respondent asserts that he registered the Disputed Domain Names for use with a project titled "neta poteo link," which the Respondent alleges is derived from the phrase "[I]nternet and network porter – research connection." The Respondent explains that the project relates to his development of a new boosting solution for the Internet and network performance. The Respondent claims that he "will plan to use" <net-a-porter.link> as the main homepage for his research solution, and <net-a-porter.club> as the open researcher community.
The Respondent contends that his business is totally different than any rights associated with the Complainant's NET-A-PORTER Marks. The Respondent contends that the NET-A-PORTER Marks and the Disputed Domain Names have different pronunciations and are different words. The Respondent contends that the NET-A-PORTER Mark includes ordinary words for those working in the network solution area, namely "net" and "porter." The Respondent also contends that his use of the gTLDs ".link" and ".club" have functional meanings that differ from the NET-A-PORTER Marks.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, the 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.
As set forth above, the Complainant is the owner of numerous worldwide trademark registrations for the mark NET-A-PORTER, and has used the NET-A-PORTER Marks for more than ten years. By any measure, the mark NET-A-PORTER is well-known. Accordingly, the Panel finds that the Complainant has trademark rights in the mark NET-A-PORTER.
The Disputed Domain Names are identical to the Complainant's NET-A-PORTER Marks. They contain the Complainant's NET-A-PORTER Mark in its entirety. The only difference between the Complainant's mark and the Disputed Domain Names is the addition of the gTLD ".link" or ".club". It is well established that the addition of a gTLD extension typically does not distinguish a domain name from a complainant's mark. See, e.g., Koninklijke Philips Electronics N.V. v. Alan Horswill, WIPO Case No. DTV2002-0004. Here, the Disputed Domain Names constitute the entirety of the Complainant's mark NET-A-PORTER, and the gTLDs ".link" and ".club" do nothing to reduce the confusing similarity between the NET-A-PORTER Marks and the Disputed Domain Names. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks").
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence shows that the Complainant has exclusive rights in the NET-A-PORTER Marks, is not affiliated with or related to the Respondent, and has not authorized the Respondent to register and use the Disputed Domain Names or the NET-A-PORTER Marks. There is no evidence to suggest that the Respondent was commonly known under the Disputed Domain Names prior to their registrations. Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The record lacks sufficient evidence of demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.
Indeed, the Respondent is using the Disputed Domain Names to advertise the products and services offered by a third-party domain hosting entity. Advertising the products and services of an unrelated third-party does not constitute a bona fide or legitimate business use. See, e.g., F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808 ("the offering of a third-party service totally unrelated to Complainant…is neither a bona fide use, nor a commercial or fair use of the domain name").
The Panel disagrees with the Respondent's claim that his use of the Disputed Domain Names is legitimate because, inter alia, the NET-A-PORTER Marks include the words "net" and "porter" – which the Respondent claims are ordinary words for those working in the network solution area. Whether or not the Respondent's claim is true, the combination of words "net", "a", and "porter" itself is unique, and the Disputed Domain Names wholly include those words. Moreover, the Respondent admits that the Disputed Domain Names derive from the phrase "[I]nternet and network porter – research connection." Assuming this to be true, there were several words that the Respondent could have selected as his domain name, instead of using the Complainant's well-known trademark NET-A-PORTER. Indeed, the Panel finds no reason in the record for the Respondent to have registered the Disputed Domain Names other than to trade off of the substantial reputation and goodwill of the Complainant's NET-A-PORTER Marks.
The Panel therefore finds that the evidence in the record is sufficient to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Names, and thus the Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel will deal with the issue of bad faith registration and bad faith use separately below.
First, the Panel finds that the Respondent has registered the Disputed Domain Names in bad faith.
Bad faith can be inferred based on the fame of the complainant's marks, such that the respondent was aware or should have been aware of the complainant's mark and claims of rights thereto (particularly in view of the complainant's use of its mark on the Internet). Moreover, the registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark may suggest bad faith. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting LLC, WIPO Case No. D2005-1319. Here, the Panel finds it highly doubtful that the Respondent, who has no relationship to the NET-A-PORTER Marks, would have registered the Disputed Domain Names without having knowledge of the Complainant or the NET-A-PORTER Marks. The only reasonable conclusion to draw is that the Respondent deliberately sought to misappropriate the Complainant's NET-A-PORTER Marks by registering the Disputed Domain Names with a view to using them in some future venture, whether by selling or renting the Disputed Domain Names to others, by purporting to provide a business or service related to the Complainant, or by engaging in some other illegitimate activity. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Names in bad faith.
Moreover, the Respondent admits to having at least some knowledge of the NET-A-PORTER Marks before applying for registration of the Disputed Domain Names ("we hardly knew this company (Complainant)"). Indeed, the Respondent does not refute the Complainant's allegation that he received notice of the NET-A-PORTER Marks before registering the Disputed Domain Names as a result of the Trademark Clearinghouse used by the gTLD registries. This fact further evidences the Respondent's bad faith registration.
Second, the Panel finds that the Respondent has used the Disputed Domain Names in bad faith.
As indicated above, the Disputed Domain Names currently resolve to webpages advertising services of a hosting entity. The Panel believes that the only credible explanation for the use of the Disputed Domain Names is to take advantage of the similarity between them and the Complainant's distinctive and well-known NET-A-PORTER Marks, for commercial advantage. As mentioned above, the Respondent has no connection whatsoever to the trademark NET-A-PORTER (other than through a strained interpretation). The registration of a domain name by a respondent that is similar to a distinctive trademark, when the respondent has no relationship to that trademark, may be sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, supra; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, supra). Thus, it is the Panel's opinion that the Respondent must have been aware of the NET-A-PORTER Marks and intentionally attempted to use them for commercial gain.
Moreover, the Respondent's registration of the Disputed Domain Names prevents the Complainant from reflecting its own mark in that corresponding domain name should it so wish. See, e.g., Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763.
Finally, the Panel notes that the Respondent does not refute the Complainant's allegation that he has registered numerous domain names containing other famous marks, such as MACYS, NIEMAN MARCUS and AVEDA, among others, with no discernible legitimate business purpose. Such conduct also evidences bad faith registration and use. See ATOL v. Namegiant-Moyobamba Pshp, WIPO Case No. D2006-1203 (finding that the registration of several domain names containing the marks of others without attention to whether they may be identical to trademarks can evidence a pattern of conduct sufficient to constitute bad faith registration and use).
For the above reasons, pursuant to the third criterion of paragraph 4(a) of the Policy, the Panel finds that the Complainant has shown that the Disputed Domain Names have been registered and are being used in bad faith by the Respondent.
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-porter.club> and <net-a-porter.link>, be transferred to the Complainant.
Andrew J. Park
Date: January 26, 2015