WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters Inc. v. Tatiana Ovdienko
Case No. D2017-1267
1. The Parties
Complainant is Urban Outfitters Inc. of Philadelphia, Pennsylvania, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Tatiana Ovdienko of La Jolla, California, United States.
2. The Domain Name and Registrar
The disputed domain name <freepeopleonsale.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on August 7, 2017. 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 the owner of at least two registrations for trademarks containing the term FREE PEOPLE. Specifically, Complainant is the owner of the following trademark registrations:
Date of Registration
January 6, 1994
March 24, 1995
The disputed domain name, <freepeopleonsale.com>, appears to have been registered on February 15, 2017. The disputed domain name is not directly linked to a functioning website.
5. Parties’ Contentions
Complainant is a lifestyle specialty retail company based in the United States and founded in 1970 by Richard Hayne. The first store was originally called Free People and opened in Pennsylvania. When Complainant opened a second store, the name was changed to Urban Outfitters. Initially, the mission of Complainant was to provide second-hand clothing, furniture, jewelry, and home décor for college-aged customers. As the business expanded, Complainant created Urban Outfitters private label division which supported product exclusive to Urban Outfitters and a subsequent wholesale line.
In 1984, the FREE PEOPLE brand was reintroduced to the market. Complainant developed young women’s casual wear under the FREE PEOPLE trademark and that product line eventually evolved into a more contemporary brand.
Today, Complainant’s FREE PEOPLE brand has four wholesale sales and showroom facilities in New York, Los Angeles, Chicago, and London and sells its line worldwide in over 1,800 department and specialty stores. Complainant has also been operating boutiques throughout the United States and Canada since 2002. Complainant’s FREE PEOPLE branded products can be found online at “www.freepeople.com”.
Complainant went public in 1993 and initially sold shares in public offering for USD 18 a share. Now the company trades on the NASDAQ exchange under the name URBN. In 2017, Complainant announced a net income of USD 12 million for the three months ending on April 30, 2017. The total company net sale for the first quarter was USD 761 million. The FREE PEOPLE brand experienced a net sales increase of 1.5 percent during this same period. Complainant recently experienced record sales for the three months and year ending on January 31, 2017. Complainant’s total net sales increased by 2 percent compared to the same quarter in 2016 and to a net sales record of USD 1.02 billion.
Complainant’s FREE PEOPLE trademark has been used in trade since 1984 and Complainant has secured trademark registrations for this same trademark beginning in 1994.
Complainant features its website at “www.freepeople.com” where its products have been available online since at least as early as 2004. Complainant’s website allows Internet users to browse for Complainant’s products online, which include casual women’s apparel, intimates, shoes, accessories, active wear, home products and gifts.
Complainant’s surging presence has been underpinned by comprehensive marketing campaigns across the world encompassing web marketing, social media advertising and catalog printing.
The disputed domain name is identical or confusingly similar to Complainant’s FREE PEOPLE trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the FREE PEOPLE trademark and the disputed domain name is confusingly similar to Complainant’s FREE PEOPLE trademark.
Complainant owns at least one Spanish trademark registration and one United Kingdom trademark registration for the FREE PEOPLE trademark. Specifically, Complainant owns Spanish Trademark Registration No. M1788148, as well as United Kingdom Trademark Registration No. UK00001572918.
Accordingly, Complainant has established rights in its FREE PEOPLE trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is confusingly similar to Complainant’s FREE PEOPLE trademark because the disputed domain name consists of the entirety of Complainant’s FREE PEOPLE trademark and merely adds the term “onsale”, in addition to adding the generic Top-Level Domain (“gTLD”) “.com” as a domain suffix.
Neither the addition of a purely descriptive term to a well-known mark or the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
In this case the addition of the term “onsale” to Complainant’s FREE PEOPLE trademark is insufficient to establish a domain name that is distinct from Complainant’s trademark and insufficient to avoid a finding of confusing similarity.
Confusing similarity is especially acute in this case where the merely descriptive term (i.e., “onsale”), simply describes and/or suggests that Complainant’s products are being sold at Respondent’s website at a discounted price point. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
In this case, the addition of the gTLD “.com” domain suffix directly behind Complainant’s FREE PEOPLE trademark in combination with the merely descriptive term “onsale”, is insufficient to avoid a finding that the disputed domain name is confusingly similar to Complainant’s FREE PEOPLE trademark.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that a respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms “free”, “people”, “onsale,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its FREE PEOPLE trademark.
The Panel finds that Respondent is not currently maintaining a website associated with the disputed domain name. In this case, Respondent’s failure to develop a website associated with the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Complainant asserted that the disputed domain name previously resolved to an active website, offering alleged “FREE PEOPLE” dresses and swimwear for sale with discounted prices, and also stating that it was an official outlet store authorized by the Complainant.
Under the circumstances, in light of the misleading nature and statements, the Panel concludes Respondent is not using the disputed domain name <freepeopleonsale.com> in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(ii)-(iii). See America Online, Inc. v. Xiangfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] 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”). There is also no evidence that Respondent is using the disputed domain name pursuant to Policy, paragraph 4(c)(iii).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the FREE PEOPLE trademark.
Respondent’s awareness of the FREE PEOPLE trademark can be inferred because Complainant’s FREE PEOPLE trademark is well-known in numerous countries, including the United States, Canada, Spain and the United Kingdom. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
As described above, the Panel finds that the prior use of the disputed domain name to misleadingly confuse Internet users with regards to Complainant’s mark as to the source or endorsement of Respondent’s prior website to be indicative of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).
Also, the Panel holds that Respondent is currently housing the disputed domain name and does not associate the disputed domain name with an active website. The lack of so-called active use does not prevent a finding of bad faith in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 <freepeopleonsale.com> be transferred to Complainant.
Gary J. Nelson
Date: August 21, 2017