WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Outfitters Inc. v. Domain Admin, Privacy Protect, LLC / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd
Case No. D2021-3145
1. The Parties
Complainant is Urban Outfitters Inc., United States of America, represented by SafeNames Ltd., United Kingdom.
Respondent is Domain Admin, Privacy Protect, LLC, United States of America / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <myurbn.com> (the “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 September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2021, 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 September 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 1, 2021.
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 October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on November 3, 2021. 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 multinational lifestyle retail corporation headquartered in Philadelphia, United States. The Complainant, which made net sales of USD 3.45 billion in the fiscal year 2021, owns a portfolio of clothing and retail brands including URBAN OUTFITTERS.
Since its founding in 1970, Complainant’s URBAN OUTFITTERS brand has become well known for its offering of trendy apparel and accessories, primarily targeted towards young adults. With some 19,000 employees and more than 200 retail locations, Complainant offers goods under this brand to consumers across North America, Europe and the Middle East. Collaborations with famous artists and brands including Justin Bieber, Lady Gaga, Adidas and Calvin Klein have increased Complainant’s exposure of the URBAN OUTFITTERS brand over time.
Complainant has used a four-letter contraction of its URBAN OUTFITTERS trademark, URBN, since at least 1993. Complainant has continuously used this term as its ticker on the Nasdaq Stock Market in which its shares are listed. Complainant uses the website under “www.urbn.com”, having registered the domain name <urbn.com> in 1996. It uses this site (which received an average of 1.6 million visits per month between March and August 2021) and the URBN trademark, to direct Internet users to the commercial sites of its subsidiaries and brands.
Complainant’ group owns numerous trademark registrations for URBN including:
- United States trademark registration no 2,518,432, URBN.COM (word), filed on November 24, 1999 and registered on December 11, 2001, for services in international class 35;
- United States trademark registration no 4,971,624, URBN (fig.), filed on March 23, 2015 and registered on June 7, 2016, with first use in commerce on May 18, 2000, for services in international classes 35 and 43.
- European Union trademark registration no 010598861, URBN (word), filed on January 27, 2012 and registered on June 25, 2012 for goods and services in international classes 18, 25, 35; and
The Domain Name was registered on November 4, 2014. At the time the Complaint was filed, it was resolving to a parking page (the Website) comprising pay-per click (‘PPC’) advertising links. The links were unrelated to Complainant’s offerings. A banner across the top of the Website indicated “This domain myurbn.com may be for sale. Click here for more information”. Per Complaint, clicking on this link directs Internet users to a page under a domain marketplace “Sedo”, which asked users to submit a minimum offer of USD 12,000 for the Domain Name. Currently the Domain Name leads to a suspicious page blocked for reasons of security threat.
Complainant sent a cease and desist letter to Respondent on July 22, 2021 and a follow-up notice on July 29, 2021 to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has demonstrated rights through registration and use on the URBN trademark.
The Panel finds that the Domain Name is confusingly similar with the URBN trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the word “my” does not prevent a finding of confusing similarity (Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. The Domain Name consists of Complainant’s trademark in its entirety, carrying a high risk of implied affiliation that cannot constitute fair use.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website which contained PPC links and also a link directing to “Sedo” where the Domain Name was being offered for sale for the amount of minimum USD 12,000. Respondent has not provided a plausible explanation about the inclusion of these links on the Website. In the absence of such explanation, it appears not unlikely to the Panel that the inclusion of these links was intended to increase the traffic to the Domain Name, which would increase the attractiveness and price in the offer for sale (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).
Currently the Domain Name leads to a suspicious page blocked for reasons of security threat.
These, along with the fact that the Domain Name was registered with a privacy shield service speak against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the URBN trademark had been used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s trademark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of URBN (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
As regards use, the Domain Name resolved to the Website which contained PPC links and a link directing to “Sedo” where the Domain Name was being offered for sale for the amount of minimum USD 12,000. This, in view also of the finding that Respondent has no rights to or legitimate interests in the Domain Name, constitutes evidence of bad faith use (Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1). Currently the Domain Name leads to a suspicious page blocked for reasons of security threat.
Furthermore, as Complainant demonstrated, historical WhoIs records show that the Domain Name was registered under the name “Sol Invictus Comiti LP” which had been used to register numerous other domain names, some of which clearly encompass well-known trademarks of third parties.
Finally, the Panel considers also the apparent concealment of the Domain Name registrant’s identity through use of a privacy shield, which is further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <myurbn.com> be transferred to Complainant.
Date: November 17, 2021