WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters Inc. v. Melania Hudson /Milly Beacham
Case No. D2019-2323
1. The Parties
The Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Melania Hudson, United States / Milly Beacham, United Kingdom.
2. The Domain Names and Registrars
The disputed domain name <freepeopledressuk.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The disputed domain name <freepeopledresses.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
Hereinafter collectively referred to as the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 24, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 25, 2019, the Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 1, 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 the Respondent of the Complaint, and the proceedings commenced on October 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 31, 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
The Complainant, Urban Outfitters Inc. is a retail Company based in the United States and founded in 1970. The first store opened in Pennsylvania was originally called “free people”. Then, the name was changed to Urban Outfitters. In 1984, the FREE PEOPLE brand was reintroduced to the market.
Today, the Complainant has four wholesales sales and showrooms facilities in New York, Los Angeles, Chicago, and London and sends their lone worldwide in over 1,800 departments and specialty stores.
In addition, the Complainant owns various trademark registrations in various jurisdictions for the term FREE PEOPLE, among others:
- FREE PEOPLE, United Kingdom trademark Registration No. 00001572918, registered on April 24, 1995;
- FREE PEOPLE, United States trademark Registration No. 2770021, registered on September 30, 2003, and
- FREE PEOPLE, International Registration No. 957751, registered on October 14, 2008.
Moreover, the Complainant is the owner of the domain name <freepeople.com> registered on May 1, 1996.
The Disputed Domain Name <freepeopledresses.com> was registered on December 28, 2016, while the Disputed Domain Name <freepeopledressuk.com> was registered on March 28, 2018. Both of them resolve to a website offering alleged FREE PEOPLE clothing and accessories for sale at lower prices.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant submits that the Disputed Domain Names are confusingly similar to the FREE PEOPLE trademark as they incorporate the Complainant’s trademark in its entirety with the addition of the terms “dress”, “dresses” and “UK”. These additions, do not prevent a finding of confusing similarity.
Rights or legitimate interests
The Complainant states that the Respondent lacks rights and any legitimate interest in the Disputed Domain Names.
In addition, the Complainant alleges that the Respondent has not registered any trademark for the term “free people”.
In addition, the Respondent in the Disputed Domain Name <freepeopledressuk.com> also sells alleged Karen Millen products.
The Complainant further alleges that the Respondent has never been commonly known by the Disputed Domain Names and has neither registered the Disputed Domain Names as a trademark or acquired common law rights by way of widespread use through the years.
Finally there is no evidence that the Respondent is making a noncommercial or fair use of the Disputed Domain Names, since the websites activities demonstrate that the Respondent intends to benefit from the goodwill and reputation of the Complainant.
Registration and use in bad faith
The Complainant states that the Respondent has registered and uses the Disputed Domain Names in bad faith.
In addition, the Complainant alleges that the FREE PEOPLE trademark has been active for many years and predates the registration of the Disputed Domain Names for more than 20 years.
Moreover, the Respondent used both Disputed Domain Names to sell alleged FREE PEOPLE products. Therefore, it is clear that the Respondent knew of the Complainant’s good will and reputation at the time of the registration of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussions and Findings
6.1. Preliminary Issue: Consolidation of Respondents
According to Registrars, the Disputed Domain Name <freepeopledressuk.com> is registered in the name of Milly Beacham while the Disputed Domain Name <freepeopledresses.com> is registered in the name of Melania Hudson.
The Complainant alleges that there were three other UDRP cases where a false identity was used to register the domain name (all saints retail limited v. name redacted, WIPO Case No. D2018-0698; All Saints Retail Limited v. Name Redacted, WIPO Case No. D2017-2492 and Urban Outfitters Inc. v. Name Redacted, WIPO Case No. D2018-0070). In this sense, it compares the website of the Disputed Domain Name <freepeopledressuk.com> with the websites of the domain names involved in the previous UDRP cases, inferring that they are similar and, therefore, it would be the same person who registered the domain names in the previous three cases, using a false identity.
The issue of the consolidation of multiple respondents has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11 and earlier decisions including Mou Limited v. Zeng Xiang / Debra Nelis / Privacy Protection Service Inc. d/b/a PrivacyProtect.org, WIPO Case No. D2016-0759, et al.
In order to file a single complaint against multiple respondents, the complaint must meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
The Panel finds that the Complainant has not provided sufficient evidence to establish that both Disputed Domain Names, <freepeopledressuk.com> and <freepeopledresses.com> are subject to common control.
The fact that the Disputed Domain Name <freepeopledressuk.com> has a website which is similar to the ones in the previous cases (All Saints Retail Limited v. Name Redacted, WIPO Case No. D2018-0698; All Saints Retail Limited v. Name Redacted, WIPO Case No. D2017-2492 and Urban Outfitters Inc. v. Name Redacted, WIPO Case No. D2018-0070) does not imply that they are or were subject to a common control.
In addition, Complainant did not provide arguments or evidence regarding a connection between the two Respondents.
Accordingly, the Panel rejects the Complainant’s request to have the Complaint filed against multiple Respondents. In the circumstances, for administrative expediency, the rest of this decision shall deal with the Disputed Domain Name <freepeopledresses.com> registered by Melania Hudson.
The Complaint may wish to bring separate complaint in respect of the Disputed Domain Name <freepeopledressuk.com>.
6.2. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Names in this case:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <freepeopledresses.com> is confusingly similar to the Complainant’s trademark FREE PEOPLE, since it incorporates the Complainant’s trademark in its entirety. The addition of the term “dresses” and the generic Top-Level Domain (“gTLD”) “.com” does not negate the confusing similarity. WIPO Overview 3.0.
In sum, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant’s trademark FREE PEOPLE. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. Furthermore, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name.
In addition, the Respondent is using the Disputed Domain Names to sell alleged FREE PEOPLE clothing and accessories.
As such, the Panel finds that the Complainant’s has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the Disputed Domain Name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant’s trademark predates the registration of the Disputed Domain Name for several decades having acquired widespread consumer goodwill. Therefore, the Panel concludes that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s trademark since the content on the website is related to the Complainant’s products.
Due to this conduct, the Panel understands that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark to attract Internet users for commercial gain, as described by paragraph 4(b)(iv) of the Policy.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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 <freepeopledresses.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: November 15, 2019