WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Net-A-Porter Group Limited v. Whois Privacy Services Pty Ltd Domain Hostmaster / Dzone Inc., Yeonju Hong

Case No. D2013-0629

1. The Parties

The Complainant is the Net-A-Porter Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Winston & Strawn LLP, United States of America (“US”).

The Respondent is Whois Privacy Services Pty Ltd Domain Hostmaster of Fortitude Valley, Queensland, Australia / Dzone Inc., Yeonju Hong of Gwangju, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <netaporterdomain.com>, <netaporterdomains.com> and <netaporternic.com> are registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2013, the Registrar transmitted by email to the Center its verification response 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 April 23, 2013, 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 April 25, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2013.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on May 28, 2013. 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 following facts are undisputed.

The Complainant is Net-A-Porter Group Limited, and sells a wide range of high quality luxury apparel, including dresses, coats, trousers, shoes, bags and accessories in general. The business was launched in June 2000 and rapidly became a luxury fashion e-tailer and online couture shopping website, located at the domain name <net-a-porter.com> (the Complainant’s Website).

The Complainant’s Website updated weekly with new content and products which is viewed by over 2.5 million people each month. The Complainant markets and advertises its services throughout the world and currently ships products to 170 different countries. The Complainant advertises both within the industry and to the general public, in a variety of media, including in magazines and online.

The Complainant has been active since 2000 and has provided its services under the well-known mark NET-A-PORTER registered on December 17, 2002.

The Complainant owns a large number of trademark registrations worldwide for NET-A-PORTER. The Complainant uses the NET-A-PORTER trademark in connection with and covering among other items retail services relating to clothing, headgear and footwear, jewellery, watches, fashion accessories, textiles, cosmetic, handbags and all manner of bags. The Complainant owns registrations for the NET-A-PORTER trademark on the Principal Register of the United States Patent and Trademark Office, with registration number 2661220 (registered on December 17, 2002) and also an International Registration with registration number 969606 (registered on June 11, 2008) designating the Republic of Korea, and in numerous other jurisdictions throughout the world.

The disputed domain names are all registered on June 14, 2012.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The disputed domain names are confusingly similar to the NET-A-PORTER trademarks. In the case of <netaporterdomain.com> and <netaporterdomains.com> they are confusingly similar because they fully incorporate the NET-A-PORTER trademark, omit hyphens, and add only the generic words “domain” and “domains”. In the case of <netaporternic.com>, it is confusingly similar to the NET-A-PORTER trademark because it fully incorporates the NET-A-PORTER trademark, omits hyphens and add only the generic word “nic”.

The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has never been commonly known by the NET-A-PORTER trademark nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain names by which it may have come to be known. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the NET-A-PORTER trademark.

The Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected noncommercial or fair use of the disputed domain names. The Respondent previously used the disputed domain names to publish websites with advertising links to websites that offer products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products. Currently, the Respondent is using the disputed domain names to resolve to web pages offering the disputed domain names for sale.

The Respondent has registered and using the disputed domain names in bath faith. The Respondent registered the disputed domain names with either actual or constructive knowledge of the Complainant’s rights in the NET-A-PORTER trademark by virtue of the Complainant’s prior registration of those marks. The disputed domain names have been used to publish websites consisting of advertisements for websites offering for sale products of the Complainant’s competitors and/or counterfeit knock offs of the Complainant’s own products, or to direct visitors to competing goods and services of others. Such activities fall squarely into the explicit example of bad faith.

The Respondent has registered the disputed domain names to disrupt the Complainant’s business and to trade off the reputation and goodwill of the Complainant’s NET-A-PORTER trademark. As such, the nature of the disputed domain names themselves evidence bath faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(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

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

The most dominant part in the disputed domain names is the word element “netaporter”.

The disputed domain name <netaporterdomain.com> incorporates the Complainant’s trademark in its entirely, omits hyphens, and adds only the generic word “domain”.

The disputed domain name <netaporterdomains.com> incorporates the Complainant’s trademark in it’s entirely, omits hyphens, and adds only the generic word “domains”.

The disputed domain name <netaporternic.com> incorporates the Complainant’s trademark in it’s entirely, omits hyphens, and adds only the generic abbreviation “nic”. The abbreviation “nic” in relation to IT stands for Network Information Center.

See Oki Data Ams., Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Schering-Plough Corp. and Schering Corporation v. Registrant [240614]: Forum LLC c/o Moniker Privacy Services, WIPO Case No. D2006-1068 (finding that the exclusion of a hyphen is irrelevant for purpose of the identical or confusingly similar analysis).

Finally, with regards to the suffix “.com” (which indicates that the domain name is registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

Thus, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain names, such as:

(i) use or preparation to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the disputed domain names.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that NET-A-PORTER is the Respondent’s name or that the Respondent is commonly known as NET-A-PORTER. There is also no evidence that the Respondent is, and has ever been, a licensee of franchisee of the Complainant and that the Respondent has ever asked, and has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the marks.

Furthermore, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services as the Respondent is using the disputed domain names to publish websites with advertising links to websites that offer products for sale that compete directly with the Complainant and/or which may be counterfeit knockoffs of the Complainant’s own products. Currently, the Respondent is using the disputed domain names to resolve to web pages offering the disputed domain names for sale.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S. p. A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names are registered and are being used in bad faith.

In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the disputed domain names. This is emphasized by the fact that the disputed domain names have been used to publish websites consisting of advertisements for websites offering for sale products of the Complainant’s competitors and/or counterfeit knock offs of the Complainant’s own products, or to direct visitors to competing goods and services of others.

This behavior of the Respondent fits the example as paragraph 4(b)(iv) of the UDRP, i.e. that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the disputed domain names are registered and are being used in bad faith.

7. Decision

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 names <netaporterdomain.com>, <netaporterdomains.com> and <netaporternic.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: June 5, 2013