WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The North Face Apparel Corp. v. Max Neumann
Case No. D2018-0831
1. The Parties
The Complainant is The North Face Apparel Corp. of Wilmington, Delaware, United States of America, represented by SILKA Law AB, Sweden.
The Respondent is Max Neumann of Jakobsweiler, Germany.
2. The Domain Name and Registrar
The disputed domain name <thenorthfaceindirim.biz> (the "Domain Name") is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on May 18, 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
The Complainant is a well-known manufacturer and supplier of a wide range of outdoor clothing, footwear, equipment and accessories including jackets, rainwear and fleeces, as well as sweatshirts and T-shirts. It has carried on business under the name The North Face since 1966. In Germany alone there are approximately 200 stores selling the Complainant's clothing and other products. The Complainant has a significant presence on various social media platforms such as Facebook, YouTube, Pinterest, Instagram and Twitter. It uses the domain name <thenorthface.com> registered on October 26, 1995 for a website to promote its products.
The Complainant is the registered proprietor of several European Union trademarks comprising THE NORTH FACE including No. 001190693 THE NORTH FACE registered on November 27, 2000 and No. 005002746 THE NORTH FACE and device (see below) registered on June 15, 2007 (the "Mark").
The Domain Name was registered on January 19, 2018. At the time of preparation of the Complaint, it resolved to a website in the Turkish language offering what purported to be products of the Complainant at heavily discounted prices. The home page incorporated the Complainant's above figurative mark and a photograph of an alpine scene apparently taken from the Complainant's website. The website included text at its foot claiming that it was "Powered by The North Face Satış". "Satış" is the Turkish word for "Sales". The Domain Name currently resolves to a parking page stating that "The domain is marked as inactive".
The Respondent did not reply to a cease and desist letter sent on behalf of the Complainant on March 1, 2018.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain ("gTLD") ".biz", the Domain Name comprises the entirety of the Mark, together with the Turkish word "indirim" which translates into English as "discount". In the view of the Panel, the addition of this term does not detract from the confusing similarity of the Domain Name to the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website offering what the Complainant claims to be counterfeit products of the Complainant. The Panel notes that the website was offering products for sale at what purport to be very substantially discounted prices, which is consistent with the products in question being counterfeit. There is no suggestion that the Respondent has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complainant or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Respondent has used the Domain Name for a website selling what purport to be the Complainant's goods, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The home page of the website incorporated the Complainant's figurative mark and a photograph taken from the Complainant's website. In the view of the Panel, the statement at the foot of the home page of the website stating that the website was "Powered by The North Face Satış" reinforced the suggestion that the website was in some way authorized by or operated on behalf of the Complainant. In the absence of any response by the Respondent, the Panel has no reason to doubt that the Respondent was offering counterfeit goods of the Complainant on the website, particularly given the very substantially discounted prices at which the website was purporting to sell the goods. In the Panel's view, the use of a domain name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy. The fact that since the Complaint was filed the Domain Name has become inactive does not obviate a finding of bad faith use.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <thenorthfaceindirim.biz> be transferred to the Complainant.
Date: May 31, 2018