Complainant is Urban Outfitters Inc. of Philadelphia, Pennsylvania, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Name Redacted.1
The disputed domain name <freepeopledresssale.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2018. On January 18, 2018, the Center received an email communication from Respondent stating that a third party used her name without her knowledge to register the disputed domain name. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel’s attention and that it is the Panel’s role to decide her claim regarding identity theft. On January 19, 2018, Complainant requested that Respondent’s name be redacted from the Complaint.
On February 7, 2018, the Center informed the Parties that it did not receive any formal Response by the specified Response due date and it would proceed with the Panel appointment shortly.
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 16, 2018. 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.
Complainant is a retail company based in the United States and founded in 1970. The first store was originally called “Free People” and opened in Pennsylvania. Later, the name was changed to Urban Outfitters. Today, the company has four FREE PEOPLE wholesale sales and showrooms facilities in New York, Los Angeles, Chicago, and London, and sells their line worldwide in over 1,800 department and specialty stores. Complainant has its own boutiques throughout the United States and Canada since 2002. Complainant’s products for the brand FREE PEOPLE can be found online on their official website “www.freepeople.com”. Internet online sales of FREE PEOPLE goods began in 2004.
Complainant owns the following trademark registrations for FREE PEOPLE
March 24, 1995
May 24, 1994
September 30, 2003
February 13, 2002
November 14, 2002
March 22, 1994
April 2, 1993
September 30, 1970-February 1, 1991(first use in commerce)
November 17, 1995
March 2, 1994
September 24, 1993
June 1, 1994
November 5, 1993
March 14, 2008
March 14, 2008
October 14, 2008
March 14, 2008
The disputed domain name was registered on October 21, 2017. According to the evidence submitted by Complainant, the disputed domain name resolves to an active website, offering alleged FREE PEOPLE clothing and accessories for sale at lower prices.
Complainant contends as follows:
The disputed domain name is confusingly similar to the FREE PEOPLE trademark as the domain name incorporates the trademark in its entirety with the addition of the words “dress” and “sale”. The addition in a domain name of other terms, whether descriptive, geographical, pejorative, meaningless or otherwise, would not prevent a finding of confusing similarity.
Respondent lacks rights and any legitimate interest in the disputed domain name. To the best of Complainant’s knowledge, Respondent has not registered any trademark for the term “FREE PEOPLE” and therefore, does not hold rights in the disputed domain name. The disputed domain name resolves to an active website, offering alleged FREE PEOPLE clothing and accessories for sale at lower prices. See Annex 12 to the Complaint.
Respondent has never been authorized or licensed to sell Complainant’s goods, or in any way to use the FREE PEOPLE trademark. The consensus view concerning resellers is that the use of a trademark to resell goods and services may be in good faith if they meet the requirements established under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, Respondent fails to disclose the registrant’s relationship with Complainant. Respondent also fails to sell only trademarked goods from Complainant. Indeed, on the website at the disputed domain name, Respondent also sells alleged KAREN MILLEN products, such as clothes and accessories. As the conditions of the Oki Data principles are not met, this cannot constitute a good faith offering of goods and services.
Respondent has never been commonly known by the disputed domain name. Respondent has not registered the disputed domain name as a trademark or acquired common law rights by way of widespread use through the years.
There is no evidence that Respondent is making a noncommercial or fair use of the disputed domain name. The website’s activity demonstrates that Respondent intends to benefit from the goodwill and reputation of Complainant by selling alleged products of Complainant online. On the website, all products are offered at very low prices compared to Complainant’s legitimate products. Respondent also offers different means of payment for potential customers. For all these reasons, it seems clear that Respondent is using the disputed domain name for a commercial purpose, and consequently, Respondent cannot rely on this third exception under paragraph 4(c) of the Policy.
Respondent has both registered and used the disputed domain name in bad faith. Complainant’s FREE PEOPLE trademark has been active for many years and predates the registration of the disputed domain name by 23 years for its earliest trademark. Moreover, any Internet user has access to those trademark registrations, as they can be found on public trademark databases. A search on popular search engines like Google also shows Complainant as the first hit (Annex 14 to the Complaint). The FREE PEOPLE trademark has now acquired recognition on both national and international level. Moreover, as soon as Respondent registered the disputed domain name, a corresponding website was set up, and Respondent used it to sell alleged FREE PEOPLE products. Therefore, it is clear that Respondent knew of Complainant’s goodwill and reputation at the time of the registration of the disputed domain name.
Upon identifying Respondent’s use of the disputed domain name, Complainant sent a DMCA notice to the Internet Service Provider (ISP) as Respondent used on the website copyright images belonging to Complainant (Annex 15 to the Complaint). Following this notice, on January 9, 2018, the ISP removed the content of the website at the disputed domain name. However, on the same day, Respondent changed its ISP, and the website came back up again, displaying the same content (see Annex 16 of the Complaint). This activity illustrates Respondent’s consistent intent to take advantage of Complainant’s FREE PEOPLE brand and further shows that Respondent has a complete disregard for the protection of IP rights. Complainant concludes that these facts support a finding of an abusive intent in terms of the registration and use of the disputed domain name.
The disputed domain name is used to sell clothes at discount prices under the FREE PEOPLE brand, with the intention of attracting users by creating a likelihood of confusion with Complainant’s trademark for commercial gain to attract Internet users. By using copyrighted images of Complainant, Respondent tries to mislead users into believing that the website is somehow associated with Complainant. Respondent uses images found on Complainant’s website to illustrate the products sold on the disputed domain name. In Annex 17 of the Complaint, Complainant shows that the images of both websites are identical, and that Respondent even uses the same type of name products, such as “Daydream Bodycon Slip” or “Victorian Waisted Mini Dress”. This unauthorized use by Respondent of copyrighted images from Complainant reinforces the impression of bad faith of Respondent and its intent to use the disputed domain name misleadingly to attract users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent has clearly attempted to free ride on the goodwill and reputation of Complainant’s brand FREE PEOPLE.
Furthermore, Respondent is most likely stealing personal information from Internet users and uses this personal information to register domain names (Annex 21 to the Complaint). Therefore, Complainant submits that the registrant’s name listed on the WhoIs for the disputed domain name is not the true identity of Respondent. The only plausible explanation for using alias information is to frustrate a proceeding like this.
In an additional submission of January 19, 2018 regarding Respondent’s email communication of January 18, 2018 (see section 5.B. below), Complainant contends that Respondent is not the real registrant of the disputed domain name. Complainant asserts that it is more likely than not that Respondent is a victim of identity theft and that the disputed domain name was registered by a third party without the involvement of the person listed on the WhoIs registry. The Panel decides to admit this additional submission, because it refers to a fact that could not have been anticipated by Complainant.
Respondent did not reply to Complainant’s contentions.
On January 18, 2018, Respondent sent an email to the Center, stating that it had received a written communication regarding the present dispute, which it did not understand. Her name, address and telephone number have been listed alongside an email address that does not belong to Respondent. Respondent says this is clearly a case of identity fraud, causing her great distress and worry. Her name appears to be linked to a company that she has never heard of. Respondent requests that her name and details be removed from the present case.
On January 22, 2018, the Center replied to Respondent’s email. The Center noted her claim that the registration of the disputed domain name has been made without her knowledge or authorization by a third party using her identity. The Center also made clear that it is the administrative panel (on appointment), and not the Center who is in position to make a substantive assessment on the merits of Respondent’s claims and/or evidence in this regard. The Center further noted that the UDRP Rules provide that Respondent in a proceeding is the holder of a domain name registration against which a Complaint is initiated. In order for the Center to fulfill its administrative compliance functions under the Rules, it is necessary that the listed registrant of record of the disputed domain name be named as a Respondent in the Complaint. The Center has certain obligations under the Rules in relation to the notification of a Complaint that include ensuring that Notification of the Complaint is forwarded to the contact details for the registrant of record as listed in the WhoIs data, or such as may be provided by the applicable Registrar.
By submitting printouts of trademark databases for various jurisdictions, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the mark FREE PEOPLE. See section 4 above.
The Panel notes that in the disputed domain name the FREE PEOPLE trademark is incorporated in its entirety, with the addition of the generic and common terms “dress” and “sale”. It is well established that the addition in a domain name of such terms generally is inapt to distinguish the disputed domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Section 1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FREE PEOPLE mark.
Complainant contends that Respondent has not registered any trademark for the term FREE PEOPLE and therefore, does not hold rights in the disputed domain name. Respondent has never been authorized or licensed to sell Complainant’s goods, or in any way to use the FREE PEOPLE trademark. In fact, the disputed domain name resolves to an active website, offering alleged FREE PEOPLE clothing and accessories for sale at lower prices. However, Respondent fails to disclose the registrant’s relationship with Complainant. Respondent also fails to sell only trademarked goods from Complainant, and instead it sells alleged KAREN MILLEN products, such as clothes and accessories, thus failing to meet the Oki Data criteria for constituting a good faith offering of goods and services.
Complainant also asserts that Respondent has never been commonly known by the disputed domain name, and has not registered the disputed domain name as a trademark or acquired common law rights in the trademark.
Finally, says Complainant, there is no evidence that Respondent is making a noncommercial or fair use of the disputed domain name. The website at the disputed domain name shows that Respondent intends to benefit from the goodwill and reputation of Complainant by selling alleged products of Complainant online. On the website, all products are offered at very low prices compared to Complainant’s legitimate products. Respondent also offers different means of payment for potential customers. For all these reasons, Respondent cannot rely on this third example under paragraph 4(c) of the Policy.
The Panel notes that the evidence on the casefile supports Complainant`s contentions. In particular, Complainant has shown that Respondent’s website at the disputed domain name contains copies of copyrighted images of Complainant’s official website “www.freepeople.com”, as well as offerings of ladies clothing of competing companies, which clearly violates Policy paragraphs 4(c)(i) (bona fide offering) and (iii) (fair or legitimate noncommercial use). In addition, there is no evidence that Respondent is known, commonly or otherwise, by the disputed domain name, which prevents the application of Policy paragraph 4(c)(ii).
In view of Respondent’s failure to submit any explanation or evidence in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainant has shown that its registrations and use of FREE PEOPLE trademark predate the registration of the disputed domain name by over two decades. See section 4 above. Also, Complainant has shown that Respondent’s website at the disputed domain name contains copyrighted images taken from Complainant’s official website “www.freepeople.com”, which reveals Respondent’s intent either to impersonate Complainant or to commercially profit from the confusion created among Internet users. This means that Respondent knew perfectly of, and had Complainant, its FREE PEOPLE mark and products in mind at the time of registering the disputed domain name.
As shown by Complainant by submitting printouts of the corresponding websites, on the website at the disputed domain name there appear several images identical to copyrighted images used on Complainant’s official website “www.freepeople.com”. In addition, Complainant has evidenced that the <freepeopledresssale.com> website contains various offerings of ladies’ clothing produced by at least one company competing with Complainant. In the opinion of the Panel, by using the disputed domain name in this manner, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to Policy, paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith..
Lastly, the Panel notes that the name and contact details of the registrant, provided to the Registrar at the registrations of the disputed domain name, although they correspond to a real person (“Name Redacted”), do not appear to belong to the real person or entity who obtained and controlled the registration of the disputed domain name until presently. Whoever this person or entity may be, by way of an identity theft or by abusing of private information furnished by a third party, it appears that it deliberately exposed an innocent person to undeserved worries and distress. In the opinion of the Panel, this is an additional evidence of registration and use 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, <freepeopledresssale.com> be transferred to Complainant.
Date: March 7, 2018
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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