WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Net-A-Porter Group Limited v. Registration Private and Domains By Proxy, LLC and Alan Ballmer and Last Minute Trader

Case No. D2015-0449

1. The Parties

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

The Respondent is Registration Private and Domains By Proxy, LLC of Arizona, United States of America and Alan Ballmer and Last Minute Trader, of London, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <netasporter.com> (the “Domain Name”) 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 March 12, 2015. On March 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2015.

The Center appointed David Taylor as the sole panelist in this matter on April 27, 2015. 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 is a luxury fashion retailer that operates an online couture shopping website at “www.net-a-porter.com”, which was launched in June 2000.

The Complainant owns a large number of trade mark registrations worldwide for NET-A-PORTER and NET-A-SPORTER, including but not limited to the following:

- NET-A-PORTER, U.K. Reg. No. 2261318, registered on September 14, 2001;

- NET-A-PORTER, U.S. Reg. No. 2661220, registered on December 17, 2002;

- NET-A-PORTER, U.K. Reg. No. 2375992, registered on October 18, 2004; and

- NET-A-SPORTER, E.U. Reg. No. 012415791, registered on September 15, 2014;

The Domain Name was registered on June 15, 2014.

The Domain Name resolves to a “coming soon” website, which prominently displays the term “NETASPORTER”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its trade marks because it fully incorporates its NET-A-SPORTER mark, and adds the letter “s” to its NET-A-PORTER mark, and that such minor alterations do not lessen the confusing similarity with the Complainant’s trade marks.

The Complainant further states that the Respondent lacks rights or legitimate interest in the Domain Name. The Complainant asserts that the Respondent has never been commonly known by the NET-A-PORTER trade marks or any variation thereof and that the Complainant has not granted the Respondent any license, permission, or authorization to use the NET-A-PORTER trade marks, in a domain name or otherwise. The Complainant further asserts that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, and nor is the Respondent making a noncommercial or fair use of the Domain Name. Rather, the Domain Name resolves to a generic inactive website, which the Complainant argues constitutes passive holding of the Domain Name.

The Complainant contends that the Respondent registered and used the Domain Name in bad faith. The Complainant states that the Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s rights in the NET-A-PORTER trade mark, which is evidence of bad faith registration within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant further argues that there is no reason that could explain why the Respondent registered the Domain Name other than to trade off of the substantial reputation and goodwill of Complainant’s NET-A-PORTER trade marks and that, as such, the nature of the Domain Name itself evidences bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the 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.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence of its trade mark registrations in the term “NET-A-PORTER” and “NET-A-SPORTER”. The Panel is therefore satisfied that the Complainant has established trademark rights in NET-A-PORTER as well as NET-A-SPORTER.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade marks. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s NET-A-PORTER and NET-A-SPORTER trade marks without the hyphens and, in the case of NET-A-PORTER, with the addition of the letter “s” before the letter “p”. The Panel agrees with the Complainant that such variations are insufficient to avoid confusion with the Complainant’s trade marks.

Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has stated that it has not authorised the Respondent to make any use of its trade marks and, furthermore, it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, given the notoriety surrounding the Complainant’s trade mark. Furthermore, the Respondent’s use of the Domain Name to resolve to a “coming soon” website cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name.

The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“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”).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.

However, the aforementioned circumstances are non-exhaustive and so there are other factors (as described below) that may also indicate bad faith.

In the instant case, the Panel notes that many of the Complainant’s trade marks significantly predate the registration date of the Domain Name by at least 10 years. Furthermore, the Complainant has put forward ample evidence of its strong reputation and renown worldwide, including in the United Kingdom, where the Respondent is based. Accordingly, the Panel finds that the Respondent must have been aware of the Complainant’s rights at the time of registration of the Domain Name in 2014. The Panel thus finds that the Domain Name was registered by the Respondent in bad faith, most likely seeking to trade on the Complainant’s goodwill and reputation.

The Panel further finds that the Respondent’s use of the Domain Name to resolve to a “coming soon” website constitutes passive holding which, in the circumstances of this case, in particular, the strength and renown of the Complainant’s trade mark and the Respondent’s failure to take part in the present proceedings, evidences bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that passive holding can constitute bad faith, inter alia, where the trade mark in question has “a strong reputation and is widely known”); see also paragraph 3.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith. Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 domain name <netasporter.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: May 11, 2015