WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yoox Net-A-Porter Group S.p.A. v. Melissa McJunkin
Case No. D2017-2185
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 Melissa McJunkin of Shaoxing, China.
2. The Domain Name and Registrar
The disputed domain name <wwyoox.com> (the “Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complainant filed the Complaint in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 2017, 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 13, 2017, the Center sent an email in English and Japanese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day, referring to arguments and evidence in the Complaint. 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 in English and Japanese of the Complaint, and the proceedings commenced on November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2017.
The Center appointed Haig Oghigian (the “Panel”) as the sole panelist in this matter on January 12, 2018. 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
As there is no submission form the Respondent, the facts are taken from the Complaint and generally accepted as true.
The Complainant, YOOX NET – A – PORTER GROUP S.p.a., is an online fashion retailer with offices and operations with in the United States of America, Europe, Japan, and China. The Complainant owns a large number of trademark registrations for YOOX and YOOX.COM (the “Marks”), including the following:
- International Trademark Registration No. 854072 for YOOX (registered on April 27, 2005);
- International Trademark Registration No. 1193879 for YOOX.COM (registered on September 25, 2013);
- Chinese Trademark Registration No. 14596795 for YOOX (registered June 14, 2016).
Additionally, the Complainant owns trademark registrations in numerous other jurisdictions.
The Respondent is Melissa McJunkin of Shaoxing, China.
The Disputed Domain Name is <wwyoox.com> registered to the Respondent on December 12, 2016 and resolves to a website with adult-related content.
5. Parties’ Contentions
The Complaint seeks transfer of the Disputed Domain Name to the Complainant.
i. The Disputed Domain Name is identical or confusingly similar to the marks
The Complainant is the owner of a large portfolio of registered trademarks for YOOX and YOOX.COM throughout the world, including China, the place of the Respondent’s location. The Complainant’s Marks are distinctive and well known. Conceptually, YOOX is a fancy word with no meaning.
The Disputed Domain Name is identical or at least highly confusingly similar to the Marks. The Disputed Domain Name entirely includes the Marks and differs only by adding a portion “ww”, which does not have distinguishing capacity and is insufficient to avoid confusion with the Complainant’s trademark. The Respondent’s action of omitting one “w” from “www.yoox.com” is an act of typosquatting. The generic Top-Level Domain (“gTLD”) extension should be discounted when comparing the Disputed Domain Name and the Marks. The Disputed Domain Name and the Marks are phonetically and visually highly similar.
ii. The Respondent has no rights or legitimate interests in respect to the Disputed Domain Name
The Respondent registered the Disputed Domain Name after the Complainant obtained rights in the Marks. The Respondent is not affiliated with the Complainant and does not have a license to use the Marks.
There is no evidence that the Respondent has been known by the Disputed Domain Name or that it owns any rights therein. The Respondent, based on the Complainant’s investigation, has never filed, registered or used the trademark YOOX in any jurisdiction. Rather, the Respondent uses the Disputed Domain Name to mislead and divert Internet traffic to an adult content website featuring explicit pornography or to tarnish the Complainant. Accordingly, the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
iii. The Disputed Domain Name was registered and is being used in bad faith
The Complainant is popular online fashion store known globally by its trademarks and domain name using the Marks. Prior UDRP panels have found the Marks to be well known. See Yoox Net-a-Porter Group S.p.a. v. Zheng Lijuan, WIPO Case No. D2016-2286; Yoox Net-a-Porter Group S.p.a. v. Profumeria Moena S.r.l, WIPO Case No. D2017-0858. The incorporation of the Marks is prima facie evidence that the Respondent registered the Disputed Domain Name in bad faith.
Given the well-known status of the Complainant and its Marks, the Complainant alleges that the Respondent likely knew about the Complainant and the Marks when it registered its Disputed Domain Name. Accordingly, the Respondent intentionally incorporation of the Complainant’s Marks into the Disputed Domain Name when it registered the Disputed Domain Name, which constitutes bad faith.
The Complainant also alleges that the Respondent’s offer to sell the Disputed Domain Name to the Complainant demonstrates bad faith.
The Complainant further alleges that the Respondent registered the Disputed Domain Name to disrupt the Complainant’s business by diverting Internet traffic to an adult content website. Moreover, the Respondent did so to gain commercial gain by creating a likelihood of confusion. The Respondent, therefore, is engaged in “porno-squatting.”
The Complainant also alleges over 15,000 domain names of misspelled well-known trademarks are registered with an email address associated with the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the proceedings to proceed in English. The Respondent did not object to this request. The Panel notes that Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.
The Respondent is located in China, and there is no evidence of any familiarity with the Japanese language. On the other hand, the Complainant received an offer to sell the Disputed Domain Name in English. Additionally, in a previous UDRP proceeding, the Respondent responded to the Center in English without challenging the language of the dispute. See Gaming Innovation Group Limited v. Melissa McJunkin, WIPO Case No. D2017-0659.
The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese.
Accordingly, having taken into consideration and giving regard to the circumstances of the administrative proceeding, the Panel hereby finds that the proceedings shall continue in English.
6.2 Substantive Findings
Paragraph 4(a) of the Policy requires that the complainant prove each of the following elements:
(i) The respondent’s 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 domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name is made up of minor misspellings, i.e., the addition of “ww” to the Marks, of the Complainant’s registered and distinctive Marks and the gTLD “.com”.
Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that a domain name that consists of a misspelled trademark may satisfy the first element of paragraph 4(a) of the Policy:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
The Panel finds that the Disputed Domain Name, which merely adds “ww” to the Marks but is otherwise identical to the Marks, is confusingly similar to the Marks and therefore the first part of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
As the Respondent has not sought to assert any rights or legitimate interests in the Disputed Domain Name, nor can the Panel ascertain any such rights or legitimate interests from the content of the website under the Disputed Domain Name, the Panel finds the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
In addition, as the Complainant contends, the Respondent uses the Disputed Domain Name to redirect traffic to an third party’s adult-content website. Such use is very likely to result in tarnishing the trademark and the Complainant. Section 3.12 of the WIPO Overview 3.0 provides:
“Noting that noncommercial fair use without intent to tarnish a complainant’s mark is a defense under the second element, using a domain name to tarnish a complainant’s mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent’s bad faith.”
“The facts of this case constitute a classic example of ‘porno-squatting’ in which confusion with a well known trade mark is used to divert customers to a pornographic website for commercial purposes. ‘Porno-squatting’ constitutes a paradigm case of registration in bad faith as the decisions of many panels have established . . .” Prada S.A. v. Redemption Ltd, WIPO Case No. D2009-1183.
Moreover, the Disputed Domain Name comprises the Complainant’s Marks with the addition of “ww”. In the Panel’s view the obvious inference is that this amounts to classic “typosquatting”, designed to take advantage of Internet users slightly misspelling the Complainant’s website address, and that the Respondent is most likely to have had the Complainant and its rights in the Marks in mind when it registered the Disputed Domain Name. The Panel considers that the registration of such a domain name and the use of the Disputed Domain Name to redirect Internet users to a third party website with adult content, with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <wwyoox.com> be transferred to the Complainant.
Date: January 29, 2018