WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Self-Portrait IP Limited v. Franklin Kelly
Case No. D2019-0283
1. The Parties
Complainant is Self-Portrait IP Limited of Hong Kong, China, represented by Taylor Wessing, United Kingdom.
Respondent is Franklin Kelly of Los Angeles, California, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <self-portrait-dresses.online> (the “Disputed Domain Name”) 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 February 5, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed a first amended Complaint on February 13, 2019 and a second amended Complaint February 14, 2019.
The Center verified that the Complaint together with the amended 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 February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 29, 2019. 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
According to the Complaint, Self-Portrait is a fashion label founded in November 2013. Since its launch, Self-Portrait has received international recognition and become a go-to for occasion wear for women all over the world. Self-Portrait is stocked by over 250 stockists including Selfridges, Matchesfashion.com and Net‑a‑Porter, and is sold internationally in over 40 countries across Europe, Asia, Australasia and the United States.
Complainant owns the following trademark registrations for SELF-PORTRAIT:
International registration, Registration No. 1363382, Registration Date December 16, 2016, covering goods and services in International Classes 3, 9, 14, 18, 25 and 35, designating China, the European Union (“EU”) and the United States;
International Registration No. 1226502, Registration Date October 2, 2014, covering goods in International Class 25, designating China and the EU.
United States Registration No. 5038313, Registration Date September 13, 2016, filed on October 2, 2014, covering goods in International Class 25,
United Kingdom Registration No. 3007606, Date of entry in register August 30, 2013, filed on May 28, 2013, covering goods in International Class 25.
United Kingdom Registration No. 3070626, Date of entry in register December 5, 2014, filed on September 1, 2014, covering goods in International Class 25.
United Kingdom Registration No. 3197255, Date of entry in register February 3, 2017, filed on November 17, 2016, covering goods in International Classes 3, 9 and 14.
Complainant also owns the <self-portrait-studio.com> domain name, at which it operates its “www.self‑portrait-studio.com” website.
The Disputed Domain Name was registered on July 16, 2017.
5. Parties’ Contentions
Complainant contends as follows:
The Disputed Domain Name is confusingly similar to the SELF-PORTRAIT trademark, in which Complainant has established registered and unregistered rights. The mark SELF-PORTRAIT is inherently distinctive and non-descriptive, and it has a reputation in the fashion world. The Disputed Domain Name consists of the name “self-portrait”, combined with the descriptive suffix “dresses”. The name “self-portrait” is identical to Complainant’s SELF-PORTRAIT trademark, and is the dominant and principal component of the Disputed Domain Name. The combination of the term “dresses” with the name “self-portrait” conveys the meaning that the Disputed Domain Name relates to clothing and, in particular, to dresses offered by Complainant, or an undertaking otherwise connected with it. In Self-Portrait IP Limited v. Xinnet Whois Privacy Pro Service / Sun yanqi, Sun yan qi, WIPO Case No. D2018-1709, the panel determined that the <selfportraitdresssale.com> domain name is confusingly similar to Complainant’s trademark SELF‑PORTRAIT, thus satisfying the requirements of paragraph 4(a)(i) of the Policy. The Disputed Domain Name differs only by the omission of the suffix “sale” after the word “dresses”, which does not materially affect the finding of confusing similarity.
Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name was registered on July 18, 2017 – over three years after the establishment of Complainant's well-known SELF-PORTRAIT mark. As stated above, Complainant has recently been successful in a case, concerning a domain name almost identical to the Disputed Domain Name. In that case, the panel also determined that the respondent had no rights or legitimate interests in respect of the domain name <selfportraitdresssale.com> and that this domain name was registered and was being used in bad faith.
In the present case, the Disputed Domain Name resolves to a fraudulent, fake website purporting to be the official website of Complainant that is visually very similar to the website at the domain name <selfportraitdresssale.com>, the subject of Complainant’s successful UDRP complaint mentioned above.
The website at the Disputed Domain Name is using the SELF-PORTRAIT mark in relation to the purported sale of Complainant’s clothing products. The design of the website has completely copied Complainant's official website, including Complainant's branding and the layout and presentation of the clothing. Thus, the website at the Disputed Domain Name gives the impression it is the original and official website of Complainant, when it is not. This use is completely unauthorized. Complainant has a good faith belief that the website at the disputed Domain Name is fraudulent and does not actually supply any products to customers once they have placed and paid for an order, and/or the website may be supplying counterfeit products to consumers. This amounts to a blatant and serious infringement of Complainant’s trademarks, and to fraud. As part of its deception of Internet users, the website features multiple images that are direct reproductions from Complainant’s website. The reproduction and use of all those images is unauthorized by Complainant and/or the photographers of the images. Their use amounts to an infringement of copyright. Accordingly, Respondent is using the Disputed Domain Name fraudulently.
There is no evidence of Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods or services or of a legitimate noncommercial or fair use. There is no evidence that Respondent has been or could be commonly known by the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith. By using the Disputed Domain Name, Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s SELF-PORTRAIT mark and its business. Respondent’s registration, fraudulent use, and any other use, of the Disputed Domain Name will disrupt the business and image of Complainant’s SELF-PORTRAIT network by misleading members of the public into believing that the Disputed Domain Name is connected with Complainant, and/or it will otherwise impede members of the public searching for Complainant’s genuine websites.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By submitting printouts taken from various official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the SELF-PORTRAIT mark. The Panel notes that the Disputed Domain Name incorporates the SELF-PORTRAIT mark in its entirety, with the addition of a hyphen and the term “dresses”. In the view of the Panel, this addition does not prevent the Disputed Domain Name from being confusingly similar to Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel concludes that the Disputed Domain Name is confusingly similar to the SELF-PORTRAIT mark, in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel notes that according to the relevant data disclosed by the Registrar, the registrant of the Disputed Domain name is Franklin Kelly. The Panel also notes that at the end of the main page of the website at the Disputed Domain Name, a legend states, “Copyright © 2019 Self Portrait Dresses Store. Powered by Self Portrait Dresses”. However, there is no evidence on the casefile that an entity called “Self Portrait Dresses Store” really exists, or that Respondent is known – commonly or otherwise – by such name. Therefore, Policy paragraph 4(c)(ii) does not apply.
The Panel further notes that as shown by Complainant the website at the Disputed Domain Name profusely offers dresses for sale at considerable discount prices (63 % to 78 % off). Although Complainant does not submit any evidence that the goods offered by Respondent actually are counterfeit, and/or that Respondent is deceiving Internet users by not delivering the products it sells on its website, the Panel considers that Respondent, by suggesting it is a “Self Portrait Dresses Store”, at least is impersonating Complainant or one of its authorized shops. A comparison of the website at the Disputed Domain Name with Complainant`s official website “www.self-portrait-studio.com” shows that the former is a copy, or at least a slavish imitation, of the latter, considering the general layout and presentation of the products offered.
The consensus view of prior panels is that impersonation of the complainant is neither a use in connection with a bona fide offering of products or services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii). See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) See also section 2.5.1. (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”).
The Panel concludes that Complainant succeeded in making a prima facie case that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since Respondent failed to provide any explanation whatsoever of his reasons for registering and using the Disputed Domain Name as shown, the Panel finds that Respondent lacks any rights or legitimate interests the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel notes that Complainant’s SELF-PORTRAIT products and trademark appeared in the last few years in well-known international fashion publications such as Vogue, Harper’s Bazaar and Elle, that even reported that celebrities use to wear them. The Panel also notes that Complainant is operating its global website “www.self-portrait-studio.com”. The Panel further considers that Complainant’s United Kingdom trademark Registration No. 3007606 for SELF-PORTRAIT was registered in August 2013, almost four years before the registration of the Disputed Domain Name in July 2017. See section 4 above. The Panel also observes that the website at the Disputed Domain Name is a close imitation of Complainant’s official website. Lastly, in the “About Us” section on the website at the Disputed Domain Name, its publisher presents itself in a way implying that it is Complainant itself, in a clear attempt to impersonate Complainant. In the view of the Panel, these facts show that Respondent knew of, and targeted Complainant when he registered the Disputed Domain Name.
As shown above, the Disputed Domain Name is being used in a website closely imitating Complainant’s official website, and where dresses are being offered at heavy discounts (63 % to 78% off). Whether or not these dresses are counterfeit, their images are identical to the originals, including the models wearing them, as shown in Annex 9 to the Complaint. According to Complainant, this reproduction of Complainant’s copyright material was unauthorized, and therefore, illegitimate. It is clear that this use of the Disputed Domain Name is an attempt to impersonate Complainant. In the view of the Panel, by using the Disputed Domain Name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s SELF-PORTRAIT mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith
The Panel finds that the Disputed Domain Name was 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 Disputed Domain Name, <self-portrait-dresses.online> be transferred to Complainant.
Date: April 12, 2019