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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

YOOX NET-A-PORTER GROUP S.p.A. v. Zheng Lijuan

Case No. D2016-2286

1. The Parties

The Complainant is YOOX NET-A-PORTER GROUP S.p.A. of Milan, Italy, represented by Jaumann sas di Paolo Jaumann & C, Italy.

The Respondent is Zheng Lijuan of Liaocheng, Shandong, China.

2. The Domain Name and Registrar

The disputed domain name <yooxcn.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2016, 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 November 16, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on November 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 14, 2016.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 21, 2016. 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 is the world's leading online luxury fashion retailer. The Complainant was formed in 2015 when YOOX S.p.A. merged with THE NET-A-PORTER GROUP Limited, both luxury fashion companies formed in 2000. The Complainant has a client base of more than 2.5 million high-spending customers, over 27 million monthly unique visitors worldwide and combined 2015 net revenues of EUR 1.7 billion. The Complainant has offices and operations in the United States of America, Europe, Japan and China and delivers to more than 180 countries around the world.

The Complainant owns several trademark registrations worldwide for the YOOX mark, including International Trademark Registration Nos. 854072 (April 27, 2005) in Classes 18, 25, and 35, designated for protection in the European Union, the Czechia, Slovenia, Slovakia, Norway, Singapore, Turkey, Bosnia and Herzegovina, Japan, the Republic of Korea, China, the Russian Federation, and Ukraine, among several other jurisdictions, and 1193879 (September 25, 2013) in Classes 18, 25, and 35, designated for protection in Albania, Armenia, Australia, Bahrain, Switzerland, China, Colombia, Egypt, India, Georgia, Mexico, the Philippines, New Zealand, and Kazakhstan, among several other jurisdictions. The Complainant also owns Chinese trademark Registration No. 14596795 (June 14, 2016) for the mark YOOX in Class 35.

The Respondent registered the disputed domain name on October 4, 2016. At the time the Complaint was filed, the disputed domain name resolved to a website that included the YOOX mark and advertised competing fashion apparel goods. The Respondent's website was very similar in design and layout as the Complainant's website located at "www.yoox.com". The Respondent's website also hosted banner ads, including ads for the Complainant that included a link to the Complainant's website at www.yoox.cn. At the time of the Decision, the disputed domain name resolves to an inactive website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's YOOX mark. The disputed domain name consists of the Complainant's YOOX mark, the letters "cn", which are understood by Internet users to refer to China, and the generic Top-Level Domain ("gTLD") ".com". The addition of the letters "cn" and the gTLD ".com" to the Complainant's mark does not effectively differentiate the disputed domain name from the Complainant's trademark or alleviate consumer confusion. The addition of the letters "cn" increases the confusing similarity by suggesting that the disputed domain name refers to the Complainant's business operations in China. The Panel may ignore the gTLD when considering confusing similarity of the disputed domain name to the Complainant's mark. Therefore, the disputed domain name is identical or, at least, confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to show that the Respondent is using, or has prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent offered goods for sale on the resolving website. However, the intentional adoption of a well-known trademark for the Respondent's profit indicates that such use is not bona fide, especially given that the Complainant has granted no rights, permissions or licenses to the Respondent to use the Complainant's trademarks on the Respondent's website or in the disputed domain name. Furthermore, there is no indication that the Respondent has been commonly known by the name "yooxcn" or similar variation of that name. The Respondent's website showed the mark YOOX, not YOOXCN. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. It is apparent from the Respondent's website that the sole purpose of the Respondent's use of the disputed domain name is to engage in commercial transactions. Therefore, the Respondent does not have any rights or legitimate interests in the disputed domain name as contemplated under paragraph 4(a)(ii) of the Policy.

Finally, the Complaint contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent's website looked much like the Complainant's website at "www.yoox.com" and included a link to the Complainant's own website at "www.yoox.cn". This clearly demonstrates that the Respondent is well aware of the existence of the earlier rights and of the reputation of the Complainant and of the Complainant's trademarks. Moreover, the Respondent had actual or constructive notice of the Complainant's YOOX mark when it registered and used the disputed domain name because of the Complainant's popularity and widespread mention in the press and in popular culture. The Respondent not only used the YOOX mark in the disputed domain name, but also used the Complainant's YOOX device and the same font and general appearance as the Complainant uses in its own website. The Respondent registered and used the disputed domain name with the purpose of obtaining an economic advantage. The Respondent used an affiliate marketing platform hosting banner ads of the Complainant. In this way, the Respondent was being paid commissions for the Internet users who clicked on such ads redirecting them to the Complainant's website at "www.yoox.cn". Thus, it is clear that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Therefore, the Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent's conduct suggests that the Respondent understands English. The disputed domain name resolved to a website containing English words. Finally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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

The disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

The Complainant has rights in the YOOX trademark. It is the registered owner of trademark registrations, including in China, for the YOOX mark. Use and registration of the YOOX mark by the Complainant and its predecessor in interest precedes the Respondent's registration of the disputed domain name by many years. The Panel accepts that the Complainant's mark is internationally well-known.

The disputed domain name is confusingly similar to the Complainant's trademark. It consists of the term "yoox", which is identical to the Complainant's YOOX mark, and the term "cn", which is a geographic descriptor for China. The addition of the geographically descriptive term "cn" to the Complainant's trademark in the disputed domain name does not affect the assessment of whether the disputed domain name is similar to the Complainant's trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414; see also Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093. It is likely to be recognized by Internet users as indicating business activities in China. See Inter IKEA Systems B.V. v. Muhannad Mayyas, WIPO Case No. D2016-0067; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. Indeed, in that regard the addition of "cn" in the disputed domain name increases potential for confusion because it may mislead Internet users into thinking the disputed domain name will resolve to the Complainant's China website. Additionally, the gTLD ".com", being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the YOOX trademark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The prominent portion of the disputed domain name is "yoox", which is identical to the Complainant's YOOX mark. Therefore, the disputed domain name is confusingly similar to the Complainant's YOOX mark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The 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 Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent used the disputed domain name to publish a website promoting goods and services that competed directly with the Complainant's and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 ("[I]t would be unconscionable to find that a bona fide offering of services in a respondent's operation of a web-site using a domain name which is confusingly similar to the complainant's mark and for the same business."). Additionally, the Respondent used an affiliate marketing program and opted to host banner ads for the Complainant at the top of the Respondent's website. The Respondent would earn commissions when Internet users clicked on such ads and were redirected to the Complainant's website. Therefore, it is obvious that the Respondent was aware of the Complainant and its YOOX mark at the time of registration of the disputed domain name. The term "yoox" bears no other obvious relationship to the Respondent's activities in connection with the disputed domain name. "The inevitable conclusion is that [this] word[] [is] not one[] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. Indeed, it is readily apparent that the Respondent intentionally meant to mislead consumers into believing the Respondent's was a genuine website controlled by or associated with the Complainant. The Respondent's website prominently featured the YOOX mark as well as the Complainant's stylized YOOX design. The website also mimicked the style, layout, and font of the Complainant's website. Such activity is not bona fide and no rights or legitimate interests can be created where the Respondent has chosen the disputed domain name seeking to create a false impression of association with the Complainant.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. Indeed, the website features the YOOX mark and not "yooxcn". The Complainant contends, and the Respondent does not deny, that the Complainant granted no rights, permissions or licenses to the Respondent to use the Complainant's trademarks on the Respondent's website or in the disputed domain name.

Finally, the Respondent is not making any noncommercial or fair use of the disputed domain name. The Respondent's website made apparent that the purpose of the Respondent's use of the disputed domain name is to engage in commercial transactions.

C. Registered and Used in Bad Faith

The Respondent registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The 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 domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 such website or location or of a product or service on such website or location.

The Respondent was undoubtedly aware of the Complainant and its YOOX trademark at the time of registration of the disputed domain name. The Complainant and its YOOX trademark are known widely and throughout the world. Additionally, the Complainant owns trademark registrations for its YOOX trademarks in many jurisdictions, including in China where the Respondent is located. A simple Internet search for "yoox" would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant's famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent's use of the disputed domain name to host banner ads for the Complainant on the Respondent's website for purposes of economic gain. The Respondent's intentional registration of a domain name incorporating the Complainant's well-known mark, being fully aware of the Complainant's rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent's use of the disputed domain name, both to compete with the Complainant by offering similar Internet retail services and also to use an affiliate marketing platform to generate pay-per-click commissions, falls within the use contemplated in paragraph 4(b)(iv) of the Policy. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Initially, Internet users would be likely to be drawn to the Respondent's website because of the confusing similarity between the disputed domain name and the Complainant's YOOX mark. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. By prominently featuring the Complainant's YOOX mark and logo on the website, by mimicking the general appearance of the Complainant's website, and by featuring banner ads for the Complainant, the Respondent affirmatively created an impression that the Respondent's website and the disputed domain name were associated with the Complainant. Therefore, once they arrived at the Respondent's website, Internet users would be led to believe mistakenly that the website is controlled by or affiliated with the Complainant. By creating this false impression, the Respondent could commercially benefit either by consumers' purchases of goods through the Respondent's website or by pay-per-click commissions earned from consumers clicking the banner ads for the Complainant. These activities amount to bad faith use of the disputed domain name.

7. Decision

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, <yooxcn.com>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 3, 2017

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