WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters Inc. v. Domain Administrator, PrivacyGuardian.org / RaeAnna Reynolds
Case No. D2019-1973
1. The Parties
Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
Respondent (collectively) is Domain Administrator, PrivacyGuardian.org / RaeAnna Reynolds, United States.
2. The Domain Name and Registrar
The disputed domain name <freepeopleoutlets.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 16, 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 August 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 26, 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
Complainant is a lifestyle specialty retail company based in the United States that was founded in 1970. The first store was originally called “FREE PEOPLE” and opened in Pennsylvania. Upon opening a second store, the name was changed from “FREE PEOPLE” to “Urban Outfitters”. At that time, Complainant’s mission was to provide secondhand clothing, furniture, jewelry and home decor for college-aged customers. As the business expanded, Complainant created Urban Outfitters private label division, which supported product exclusive to Urban Outfitters after which it created a wholesale line. In 1984, the FREE PEOPLE brand was reintroduced to the market. Complainant developed young women’s casual wear with the FREE PEOPLE business evolving to a more contemporary brand.
Today, there are four FREE PEOPLE branded wholesale sales and showrooms in New York, Los Angeles, Chicago, and London and the line is sold worldwide in over 1,800 department and specialty stores. Since 2002, there are also boutiques throughout the United States and Canada. Complainant went public in 1993 and it trades on the NASDAQ stock exchange under the name URBN.
Complainant registered its official website “www.freepeople.com” on May 1, 1996 and Internet users have been able to shop online for products (e.g., casual women’s apparel, intimates, shoes, accessories, active wear, home products and gifts) bearing the FREE PEOPLE Mark since 2004.
Complainant has pursued comprehensive marketing campaigns worldwide including by Internet and social media advertising (e.g., Facebook, Pinterest, Twitter, Instagram, YouTube) and catalogue printing.
Complainant owns numerous trademark registrations for the FREE PEOPLE Mark or “the Mark” including United States Registration No. 1,827,547 (registered March 22, 1994; first used in commerce 1991) and United States Registration No. 2,770,021 (registered September 30, 2003; first used in commerce 2002).
Respondent registered the Domain Name on December 17, 2018.
On April 26, 2019, Complainant’s representative sent a cease and desist letter to Respondent, to which it did not respond.
5. Parties’ Contentions
Complainant uses its FREE PEOPLE Mark to distinguish its goods and services from those of its competitors and the Mark has acquired a significant amount of goodwill and recognition globally for the past 33 years
Complainant has obtained several trademark registrations for the FREE PEOPLE Mark including the United States registrations mentioned above. All of the registrations issued before Respondent registered the Domain Name. The FREE PEOPLE Mark has acquired secondary meaning in relation to Complainant’s goods and services.
The Domain Name is confusingly similar to the Mark as it incorporates the FREE PEOPLE Mark in its entirety with the addition of the word “outlets”. Adding this term would not prevent a finding of confusing similarity. Furthermore, the suffix “.com” is merely a technical requirement for domain names.
To the best of Complainant’s knowledge, Respondent does not have any registration for FREE PEOPLE and therefore, does not hold rights to the Domain Name. And Respondent has never been commonly known by the Domain Name. Furthermore, the Domain Name resolves to an active website offering allegedly Complainant’s clothing and accessories under the FREE PEOPLE Mark for sale at prices lower than the prices at which Complainant sells the same products. Respondent has never been authorized or licensed to sell Complainant’s goods or otherwise use the Mark. And Respondent has not shown that it is an authorized “reseller” in accordance with accepted criteria. The authenticity of the products being sold on Respondent’s website as Complainant’s products is doubtful as the sales prices for those products is significantly less than the prices at which Complainant sells its products. Thus, this cannot constitute a good faith offering of goods and services. Also, Respondent’s website’s activity demonstrates that Respondent intends to benefit commercially from the goodwill and reputation of Complainant by selling alleged products of Complainant online for very low prices.
The FREE PEOPLE Mark has been used for many years and predates the registration of the Domain Name by 25 years for its earliest trademark registration. Those trademark registrations, are publicly available. A search on search engines like Google also shows Complainant as the first hit. The Mark has acquired recognition worldwide. When Respondent registered the Domain Name its website was set up and Respondent used the Mark to sell alleged products under the FREE PEOPLE Mark. Thus, Respondent knew of Complainant’s goodwill and reputation when it registered the Domain Name.
Complainant sent a cease and desist letter to Respondent on April 26, 2019 and a reminder on May 7, 2019, but Respondent did not respond to either. Those facts support a finding of an abusive intent to register and use the Domain Name.
The Domain Name is being used to sell discounted clothes under the FREE PEOPLE Mark. The Domain Name was chosen with the intention of attracting users by creating a likelihood of confusion with Complainant’s Mark. Respondent has intentionally attempted to attract Internet users to its website for commercial gain. By using similar images of Complainant’s products, Respondent is trying to mislead users into believing that the website is somehow associated with Complainant. The product images and names are similar to the ones found on Complainant’s website (e.g., “All Dolled Up Mini Dress” or “Day Glow Midi Dress”). This reinforces Respondent’s bad faith intent to use the Domain Name to misleadingly attract users to its website by creating a likelihood of confusion with the Mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the FREE PEOPLE Mark by virtue of its trademark registrations set forth above.
The Panel further finds that the Domain Name <freepeopleoutlets.com> is confusingly similar to the FREE PEOPLE Mark. The Domain Name incorporates the entirety of the Mark adding the descriptive term “outlets” and the generic Top-Level Domain (“gTLD”) “.com”.
When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, and relevant under the second and third elements of the Policy, adding the descriptive term “outlets” adjacent to the FREE PEOPLE Mark and offering on Respondent’s website deeply discounted clothes and accessories like those that Complainant sells under the FREE PEOPLE Mark will likely confuse the public to think that the Domain Name refers to an outlet store run by Complainant or otherwise associated with it. See Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Andy Lau, WIPO Case No. D2015-1536; Karen Miller Fashions Limited v. Ming Li, WIPO Case No. D2013-0362. See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Adding the gTLD “.com” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the FREE PEOPLE Mark in any manner, including as a domain name. The record evidence indicates that Respondent registered the Domain Name long after Complainant had established and registered rights in the FREE PEOPLE Mark. Respondent has not provided any evidence establishing that it has been commonly known by the Domain Name. Furthermore, there is no evidence that Respondent is making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name. Respondent uses the Domain Name on a website selling alleged clothes and accessories of Complainant for prices much lower than the prices at which Complainant sells its products.
If the clothes and accessories sold on Respondent’s website are not genuine products of Complainant, then Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the FREE PEOPLE Mark for a site selling other products. Complainant maintains that the low prices at which Respondent is selling its products calls into question the authenticity of those products as possibly being those of Complainant.
If Respondent is offering genuine clothes and accessories sold under the FREE PEOPLE Mark, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in, among other cases, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The WIPO Overview 3.0 summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark. In this case, Respondent’s website does not disclose any relationship with Complainant, in particular that it is not an authorized dealer or has any particular connection with Complainant. Rather, the prominent display of the FREE PEOPLE Mark in a similar font at the top on each page along with product images displayed and named like those of Complainant gives the impression that Respondent’s website is an official website of Complainant. Members of the public who are interested in FREE PEOPLE products may visit Respondent’s website on the assumption that Respondent is the Complainant itself or an authorized dealer or reseller of FREE PEOPLE products. In the event that Respondent is reselling genuine FREE PEOPLE products, its use in its present form does not grant it rights or legitimate interests in the Domain Name.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant’s established rights and trademark registrations for the FREE PEOPLE Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Mark. Furthermore, Complainant has spent considerable effort advertising, marketing, and promoting the Mark by way of various media. Respondent would have had to have known about Complainant and the FREE PEOPLE Mark when registering the Domain Name and Respondent has used the Domain Name in bad faith considering (1) the Mark’s renown and Complainant’s long-standing use of it in conjunction with clothes and accessories akin to those being offered by Respondent on its website; (2) Respondent added the descriptive term “outlets” to the Mark and is selling clothes and accessories allegedly like those of Complainant at deep discount; and (3) the product images and names Respondent uses on its website are similar to the ones found on Complainant’s website (e.g., “All Dolled Up Mini Dress” or “Day Glow Midi Dress”). On the uncontroverted evidence, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Respondent’s use of a confusingly similar Domain Name as described above was clearly designed to imply a connection between Respondent and Complainant. Considering the circumstances here, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy). Moreover, Respondent’s failure to respond to Complainant’s cease and desist letter is further evidence of bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <freepeopleoutlets.com> be transferred to Complainant.
Harrie R. Samaras
Date: October 7, 2019