WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Net-a-Porter Group Limited v. Registration Private, Domains By Proxy LLC / Lee Elle, Ellure Couture, Inc.
Case No. D2019-2714
1. The Parties
The Complainant is The Net-a-Porter Group Limited, United Kingdom, represented by Taylor Vinters Via LLC, United Kingdom.
The Respondent is Registration Private, Domains By Proxy LLC, United States of America / Lee Elle, Ellure Couture, Inc., United States of America.
2. The Domain Name and Registrar
The disputed domain name <netaporterkids.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 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 the Complainant on November 8, 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 amendment to the Complaint on November 13, 2019.
The Center verified that the Complaint together with the amendment to 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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 20, 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, The Net-a-Porter Group Limited, is in the e-commerce business in which it sells a wide range of designer apparel featuring collections from hundreds of designers (including Chloe, Stella McCartney and Burberry) which it ships to many customers located all over the world. One of the prominent features of many of the collections is childrenswear or kidswear.
The Complainant owns numerous trademark registrations of NET-A-PORTER in many different countries, including the following:
European Union trademark registration No. 13.302.435 NET-A-PORTER of March 23, 2015, in classes 3, 9, 14, 16, 18, 21, 24, 25 and 28;
International trademark registration No. 730.051 NET-A-PORTER of February 16, 2000, in classes 3, 14, 16, 18, 21, 24 and 25;
United States of America trademark registration No. 4.554.960 NET-A-PORTER of June 24, 2014, in classes 35 and 45;
United Kingdom trademark registration No. UK0002206010A NET-A-PORTER of July 7, 2000, in classes 14, 16, 18, 21, 24 and 25.
The Complainant also owns several domain names, all of which incorporate the trademark NET-A-PORTER or variants thereof, which resolve to the Complainant’s website in which the Complainant informs potential customers about the products on sale.
The disputed domain name <netaporterkids.com> was registered on July 20, 2017 and relates to a website offering similar products to those of the Complainant, such as kidswear.
5. Parties’ Contentions
The Complainant claims to have used the trademark NET-A-PORTER as the trading name of the Complainant’s e-business to sell a wide range of apparel since June 2000. Kidswear is a prominent feature of many of the collections sold by the Complainant.
The trademark NET-A-PORTER is internationally renowned and boasts a loyal global customer base and significant reputation.
In essence, the Complainant claims that the disputed domain name <netaporterkids.com> is confusingly similar to the trademark NET-A-PORTER in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.
More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor has the Complainant authorized the Respondent to use the trademark NET-A-PORTER.
The Respondent does not own any rights reflecting or corresponding to the disputed domain name.
The disputed domain name currently resolves to the Respondent’s website which not only appears to impersonate the Complainant, but also offers for sale what appears to be counterfeits of the products sold on the Complainant’s website.
A side-by-side comparison of screenshots taken from the Complainant’s website and screenshots taken from the Respondent’s website evidence the use of misappropriated copyright protected photographs of goods for sale from the Complainant’s website. For the avoidance of doubt, the Complainant confirms that no consent was provided for the use by the Respondent of these photographs.
The Respondent registered and is using the disputed domain name in an attempt to create a false air of legitimacy, confusing customers into believing that the counterfeit goods are in fact genuine goods that are being sold by the Complainant, who has a global reputation for selling genuine designer apparel online. The Respondent’s website contains no information, disclaimer or content that contradicts such assumption.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the trademark NET-A-PORTER.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name <netaporterkids.com> contains the Complainant’s trademark NET-A-PORTER in its entirety, save for the deletion of the two hyphens (which the Complainant submits, is a common misspelling of the Complainant’s trademark) and the addition of the dictionary word “kids”, which the Panel considers are not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.
Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term would not prevent a finding of confusing similarity under the first element.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark NET-A-PORTER in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence that shows that the Complainant has ever granted the Respondent with the right to register and use the NET-A-PORTER trademark as a domain name.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144.
As further discussed under section C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves relates to the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the NET-A-PORTER trademark when it registered the disputed domain name on July 20, 2017, because NET-A-PORTER is the trademark of the Complainant which was extensively registered (including in the United States of America where the Respondent is located and according to the Respondent’s website, the Respondent has a warehouse) years before that date.
Furthermore, the trademark NET-A-PORTER has been extensively used on an international scale and is known as an award winning online seller of genuine luxury brands well before the Respondent registered the disputed domain name. Therefore it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains Complainant’s trademark NET-A-PORTER.
The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277 and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating NET-A-PORTER was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website.
The inclusion of the descriptive word “kids” in the disputed domain name <netaporterkids.com> clearly strengthens the idea of an affiliation with the Complainant. Customers seeking to purchase apparel for children or “kids” would be liable to enter the disputed domain name site <netaporterkids.com> expecting to contact the Complainant.
Relying on a misleading impression of legitimate association with the Complainant for financial gain offering for sale presumably counterfeit copies of the goods offered by the Complainant and misleading consumers into believing that they are genuine whereas in reality no such connection exists, amounts to bad faith registration and use of the disputed domain name.
In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the Complainant’s well-known trademark NET-A-PORTER.
Therefore, the Complainant also succeeds on the third prong.
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 <netaporterkids.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: December 30, 2019