WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yoox Net-A-Porter Group S.p.A. v. Faizal Ahmed

Case No. DAE2017-0004

1. The Parties

The Complainant is Yoox Net-A-Porter Group S.p.A of Milan, Italy, represented by Jaumann sas di Paolo Jaumann & C., Italy.

The Respondent is Faizal Ahmed of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <ynap.ae> is registered with AE Domain Administration (“.aeDA”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2017. On May 31, 2017, the Center transmitted by email to .aeDA a request for registrar verification in connection with the disputed domain name. On June 4, 2017, .aeDA 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 UAE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for UAE 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 June 8, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2017. The Response was filed with the Center on June 28, 2017.

The Center appointed Adam Taylor as panelist in this matter on July 4, 2017. 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.

The Complainant filed an unsolicited supplemental filing on July 10, 2017.

4. Factual Background

The Complainant, an Italian Internet mail order retailer of men’s and women’s multi-brand clothing and accessories, was founded on October 5, 2015, following the merger between Yoox S.p.A, an Internet retailing partner for leading fashion and luxury brands, and The Net-A-Porter Group Limited, an “online luxury fashion destination for content and commerce”.

The disputed domain name was registered on June 4, 2017.

The Complainant owns a number of registered trademarks worldwide for YNAP including United Arab Emirates (“UAE”) trade mark registration Nos. 252358, 252363 and 252363, all filed on April 20, 2016, and registered on October 10, 2016, in classes 18, 25 and 35 respectively.

The Complainant sent a cease and desist letter to the Respondent on May 11, 2017.

The Respondent responded on May 17, 2017, denying any infringement or awareness of the Complainant. The Respondent claimed that he planned to use the disputed domain name for a venture in the near future but was nonetheless open to selling the disputed domain name.

On the following day, in response to an enquiry by the Complainant, the Respondent proposed USD 10,000 as a “reasonable price” for the disputed domain name.

On May 26, 2017, the Complainant counter-offered USD 500. The Respondent replied stating that the “bare minimum” price was USD 6,000 – 7,000.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The disputed domain name is identical to the Complainant’s trade mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorised the Respondent to use the Complainant’s trade mark in the disputed domain name. The Respondent is not affiliated with the Complainant.

According to the Complainant’s investigations, the Respondent has never filed, registered or used the trade mark YNAP in any jurisdiction.

The word “YNAP” is a “fancy term” and it can therefore be readily assumed that it is not derived from the Complainant’s name.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

As well as owning many domain names including “ynap”, the Complainant has sought protection of its distinctive sign in many jurisdictions.

It is clear that the Complainant is extremely well known worldwide and it is therefore very difficult to conceive that the Respondent did not know of the Complainant’s marks, products and services when he registered the disputed domain name. The Respondent was aware or must have been aware of the Complainant’s marks at the time and therefore the disputed domain name has been registered in bad faith.

It is reasonably unlikely that a United Kingdom citizen willing to develop a business other than re-selling a domain name would invest in a domain name with country code Top-Level Domain referring to the UAE. It is more reasonable to expect that he would have sought <ynap.com>, which belongs to the Complainant – as is clear from the contents of the website at that domain name.

Net-a-Porter Group Limited was a very famous British company. As a United Kingdom citizen, the Respondent was likely to have been well are of the existence of this company and its recent merger with Yoox S.p.A.

The Respondent owns some 485 domain names, which demonstrates that the Respondent is extremely well aware of how to handle domain name registrations. It is hard to believe that he did not carry out any domain name searches before registering the disputed domain name.

The Respondent’s demand for USD 10,000 demonstrates his apparent intention to transfer the disputed domain name to the Complainant in excess of out-of-pocket costs.

Accordingly, the Respondent registered the disputed domain name primarily for sale to the Complainant in excess of his out-of-pocket costs in accordance with paragraph 6(b)(i) of the Policy.

B. Respondent

The following is a summary of the Respondent’s contentions:

The disputed domain name is not an infringement. The term “ynap” is a generic four-letter abbreviation which could stand for anything.

The disputed domain name is currently being developed and a landing page is present. The Respondent’s planned use does not conflict with classes 18, 25 and 35, for which the Complainant’s UAE trade marks are registered.

The Complainant’s site at <ynap.ae> is a corporate information site on which no sales take place.

The Respondent has legitimate interests in the disputed domain name as it is generic and it was registered in good faith. It was not registered with the Complainant in mind.

There is evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is making legitimate non-commercial or fair use of the disputed domain name.

It is for the Complainant to prove that the “generic abbreviation domain name” was registered solely to benefit from the Complainant’s trade mark rights.

The Respondent denies that it has engaged in a pattern of cybersquatting as he has invested in over 400 domain names.

The Complainant and its counsel could not have had a reasonable belief that it would succeed in these proceedings as the Complainant has mischaracterised its trade mark rights as conferring exclusivity over an abbreviation. The Complaint was filed in a bad faith attempt to deprive the Respondent of the disputed domain name, after the Complainant failed to acquire the disputed domain name from the Respondent.

The Complainant has failed to explain why the Respondent knew or should have known of the existence of the Complainant’s trade mark rights at the time of registration of the disputed domain name. The Respondent had never heard of the Complainant prior to the Complaint.

The disputed domain name has intrinsic value as a four-letter domain name. If the Complainant did not exist, the disputed domain name would still have the same value.

The price put forward by the Respondent for the disputed domain name was perfectly reasonable as a web page developer had already been hired to develop the website for the disputed domain name, a very costly procedure which has already begun. The Respondent merely sought reimbursement. It would be unfair if the disputed domain name had been sold for any less. However, the Respondent understood the Complainant’s situation and was open to negotiating with the Complaint.

6. Discussion and Findings

A. The Policy

The Policy and the Rules are very similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the UDRP Rules. Accordingly, the Panel refers below to UDRP cases insofar as they relate to aspects of the UDRP and the UDRP Rules which overlap with the Policy and the Rules.

B. Supplemental Filing(s)

The Complainant has made an unsolicited supplemental filing.

The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the UDRP. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

The Panel has decided not to admit the supplemental filing. The Complainant has not sought to demonstrate that there are any exceptional circumstances justifying the filing. It consists of standard rebuttal and does not appear to include any material, the existence and relevance of which was not known to the Complainant when it filed the Complaint.

The Panel would add, however, that the supplemental filing would have made no difference to the outcome of this case.

C. Identical or Confusingly Similar

The Complainant has rights in the mark YNAP by virtue of its registered trade marks for that term.

Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 6(a) of the Policy.

D. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 6(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services. The Panel rejects the Respondent’s claim to have made demonstrable preparations for such an offering as he has provided no evidence in support.

Nor is there any evidence that paragraph 6(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 6(a) of the Policy.

E. Registered or is Being Used in Bad Faith

In the Panel’s view, this is a finely balanced case.

The Respondent adamantly denies knowledge of the mark YNAP at the time of registration of the disputed domain name.

The Complainant asserts that the mark is “extremely well known worldwide” and that it is inconceivable that the Respondent was unaware of it when he registered the disputed domain name. The Complainant points out that Net-a-Porter Group Limited was a very famous British company and, given that the Respondent is located in the United Kingdom, the Respondent is likely to have been aware of it and its October 2015 merger with Yoox Spa. The term “YNAP” is an acronym derived from the names of two merged companies.

While the Complainant has supplied a list of “ynap” domain names and details of six trade mark applications in various jurisdictions, as well as the UAE marks mentioned above, there is no evidence demonstrating the extent of actual use of the term, e.g., website traffic statistics, examples of publicity, levels of turnover or advertising by reference to the mark YNAP and so on.

The Complainant draws attention to its website at “www.ynap.com”, which the Panel has reviewed. The Respondent rightly observes that this is a corporate information site rather than a trading site. Indeed it is branded “YOOX NET-A-PORTER GROUP” but the Complainant does refer to itself in places as “YNAP”.

The Respondent claims that the disputed domain name is a generic four-letter acronym and that he is currently developing the disputed domain name for use in a manner which does not conflict with the classes of goods / services covered by the Complainant’s UAE trade marks. However, despite seeking to explain his USD 10,000 price for the disputed domain name as reimbursement for web development costs actually incurred, the Respondent has not supplied any test website screenshots or other evidence of alleged preparations to use the disputed domain name. The Respondent has not even disclosed what the proposed use is.

Furthermore, the Respondent has not clarified why he selected a domain name with a suffix referable to the UAE, notwithstanding the Complainant’s questioning of the likelihood that a person located in the United Kingdom would genuinely want a UAE domain name other than for re-sale.

The Complainant’s evidence included a list of some 500 domain names owned by the Respondent. Neither the Complaint nor the Response gets to grips with the issue of whether the disputed domain name falls within an illicit or generic pattern of domain names owned by the Respondent. While many of the domain names in this list appear to be generic, there are a few that are clearly referable to well-known trade marks such as <avivogroup.co>, likely to be a misspelling of Aviva Group, <newsweek.co> and <theemirates.group>. As these form only a very small proportion of the portfolio, the Panel has not placed very great weight on them. However, they do show that the Respondent is not averse to registering domain names which reflect third party trade marks.

Having carefully weighed up all of the matters above, and notwithstanding that the Complainant could have done more to establish the fame of its mark, the Panel has narrowly concluded on balance that the Respondent registered the disputed domain name in bad faith. This is particularly because of the Respondent’s evasiveness as to the nature of his alleged proposed development of the disputed domain name, the lack of any supporting evidence thereof and his failure to respond to the Complainant’s questioning of his motive in selecting a domain name referable to the UAE. These matters cast doubt on the Respondent’s credibility, in particular his denial that he was aware of the Complainant’s mark at the time of registration of the disputed domain name.

For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 6(a) of the Policy.

The Panel would add that it has taken no account of the exchange of correspondence between the parties regarding sale of the disputed domain name. The Respondent’s opening offer to sell the disputed domain name to the Complainant for USD 10,000 followed on from the Complainant’s cease and desist letter. It was not therefore an unsolicited offer to the Complainant and the Panel does not consider that it indicates that the Respondent registered the disputed domain name for the purpose of sale to the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ynap.ae> be transferred to the Complainant.

Adam Taylor
Panelist
Date: July 18, 2017