DECISION

 

Urban Outfitters Inc. v. Blue Face

Claim Number: FA2302002031962

 

PARTIES

Complainant is Urban Outfitters Inc. (“Complainant”), United States of America (“United States”), represented by Matthew Powders of Safenames Ltd, United Kingdom.  Respondent is Blue Face (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <urbanoutfittersonline.us>, <urbanoutfittersshops.us>,  <urbanoutfittersfashion.us>, <freepeopleonlinestore.us>, and <topthropologyfashion.us> (the “disputed domain names”), registered with 1API GmbH (“the Registrar”).

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 15, 2023; Forum received payment on February 15, 2023.

 

On February 16, 2023, the Registrar confirmed by e-mail to Forum that the <urbanoutfittersonline.us>, <urbanoutfittersshops.us>, <urbanoutfittersfashion.us>, <freepeopleonlinestore.us>, and <topthropologyfashion.us> disputed domain names are registered with 1API GmbH and that Respondent is the current registrant of the names.  The Registrar has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@urbanoutfittersonline.us, postmaster@urbanoutfittersshops.us, postmaster@urbanoutfittersfashion.us, postmaster@freepeopleonlinestore.us, postmaster@topthropologyfashion.us.  Also on February 16, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.

 

Having reviewed the communications record, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a lifestyle retail corporation that owns a portfolio of clothing and retail brands including URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE. Complainant has rights in the URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE trademarks through its registration of the marks with multiple trademark offices, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,323,901, registered on March 5, 1985 (for URBAN OUTFITTERS)); (Reg. No. 1,827,547, registered on March 22, 1994 (for FREE PEOPLE));  and (Reg. No. 1,814,261, registered on December 28, 1993 (for ANTHROPOLOGIE)).

 

The aforementioned trademarks will hereinafter collectively be referred to as the “URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks”.

 

Complainant contends that the disputed domain names are confusingly similar to the URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks as they incorporate each mark in its entirety, and then add the terms “online”, “shop”, “fashion”, and “online store”. Complainant also contends that Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks.  Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent passes off as Complainant to provide services similar to those offered by Complainant.

 

The disputed domain names were registered as follows:  <urbanoutfittersonline.us> (registered on 17/02/2022);

<urbanoutfittersshops.us> (registered on 17/02/2022) <urbanoutfittersfashion.us> (registered on 11/08/2022) <freepeopleonlinestore.us> (registered on 17/02/2022);  and <topthropologyfashion.us> (registered on 17/02/2022).

 

Each of the disputed domain names resolve to websites that impersonate Complainant and its several resolving websites, although Respondent currently holds the <urbanoutfittersonline.us> disputed domain name inactively.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant owns registered trademark rights in the URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks as described above. The Panel also finds that the disputed domain names are confusingly similar to Complainant’s URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:

 

(1)  the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3)  the disputed domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the  URBAN OUTFITTERS, FREE PEOPLE and ANTHROPOLOGIE Marks as set forth below.

 

The Panel finds that Complainant has rights in the URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks through its registration of the marks with multiple trademark offices, including the USPTO (e.g., Reg. No. 1,323,901, registered on March 5, 1985 (for URBAN OUTFITTERS)); (Reg. No. 1,827,547, registered on March 22, 1994 (for FREE PEOPLE)); and (Reg. No. 1,814,261, registered on December 28, 1993 (for ANTHROPOLOGIE)).  Registration with multiple trademark offices worldwide, including the USPTO, is generally sufficient to demonstrate rights in a mark under Policy paragraph 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).

 

The Panel concludes that the disputed domain names are identical or confusingly similar to Complainant’s URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks. The disputed domain names incorporate each mark in its entirety while adding the terms “online”, “shop”, “fashion”, and “online store”. Additionally, the <topthropologyfashion.us> disputed domain name incorporates the ANTHROPOLOGIE trademark while substituting the “ie” in “ANTHROPOLOGIE” for “y” and replaces the letters “an” with the word “top”, and while also adding the word “fashion”. Under Policy paragraph 4(a)(i), adding a term or terms to the disputed domain name is insufficient in differentiating the trademark. Additionally, adding or replacing letters in a mark is insufficient in differentiating the mark. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.).

 

Furthermore, each of the disputed domain names includes the “.us” country-code Top-Level Domain (“ccTLD”). The addition of a ccTLD to an otherwise recognizable mark does not distinguish the disputed domain names from the URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks under Policy paragraph 4(a)(i). The addition of a ccTLD to complainant’s marks is irrelevant in determining whether the disputed domain names are confusingly similar since the use of a ccTLD is a technical requirement. See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Here, the Panel holds that Complainant has made out a prima facie case. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain names, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks.  Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.

 

In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.

 

In support, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Rather, Complainant provides evidence that demonstrates that the disputed domain names resolve to websites that impersonate Complainant’s websites, used Complainant’s trademark on Respondent’s resolving websites, and disrupted Complainant’s business.

 

Specifically, Respondent has used the disputed domain names to divert Internet users to confusingly similar websites, which display the Complainant’s trademarks and are clearly designed to capitalize on confusion between the disputed domain names and Complainant’s trademarks.  Diversion to such  websites is not a legitimate, noncommercial or fair use of the disputed domain names.

 

In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain names when a respondent diverts traffic to sites that imitate, compete, and pass off as the complainant . See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017).

 

In short, there is no evidence that Respondent is using or is planning to use the disputed domain names for a bona fide offering of goods or services, nor is Respondent commonly known by the disputed domain names or is making any legitimate noncommercial or fair use of the disputed domain names. Accordingly, the Panel concludes that Respondent cannot establish any rights or legitimate interests in the disputed domain names.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.

 

Registration or Use in Bad Faith

The Panel concludes that Respondent registered and is using the disputed domain names in bad faith.

 

First, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s resolving websites by creating a likelihood of confusion with Complainant's URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy paragraph 4(b)(iv)).

 

Second, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith by attracting Internet users for commercial gain and passing off as Complainant. Under Policy paragraph 4(b)(iv), attracting users for commercial gain while passing off as a complainant is evidence of bad faith registration or use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

Third, the fame of the URBAN OUTFITTERS, FREE PEOPLE, and ANTHROPOLOGIE Marks, which were adopted by Complainant more than 25 years in advance of Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain name independently, but rather Respondent had actual knowledge of Complainant’s marks. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Finally, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith by engaging in a pattern of cybersquatting. Under Policy paragraph 4(b)(ii), a respondent’s previous involvement in several usDRP and UDRP proceedings resulting in a finding of bad faith is indicative of a pattern of bad faith. See Greektown Casino, LLC v. Daniel Kirchhof c/o Unister GmbH, FA1308001513182 (Forum Sept. 17, 2013) (“The Panel finds that Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy paragraph 4(b)(ii) bad faith use and registration in the instant proceeding as well.”).

 

For example, the Respondent in this proceeding (Blue Face) was the respondent in many other Forum UDRP and usDRP cases, and the disputed domain names in those cases were ordered transferred from the respondent to the complainant.[i] Thus, the Panel finds that Respondent engaged in a pattern of abusive domain name registration, demonstrating bad faith.  A chart listing many WIPO cases in which respondent also engaged in a pattern of cybersquatting was provided by Complainant in an Annex to the Complaint as evidence of Respondent’s involvement in previous proceedings.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <urbanoutfittersonline.us>, <urbanoutfittersshops.us>, <urbanoutfittersfashion.us>, <freepeopleonlinestore.us>, and <topthropologyfashion.us> disputed domain names be TRANSFERRED from Respondent to Complainant.

 

Lynda M. Braun, Panelist

Dated:  March 16, 2023