Westmore · UDRP DecisionYooxnow.com
The Panel ordered transfer of <yooxnow.com>. It found the domain confusingly similar to Complainant's YOOX mark because it incorporated the mark in full with the additional word “now.” Respondent lacked rights or legitimate interests because the domain was used for an online fashion retail website competing with Complainant, without authorization or evidence of another legitimate basis. The same competing commercial use supported a finding that Respondent intentionally sought to attract Internet users through confusion with the YOOX mark under paragraph 4(b)(iv) of the Policy.
The timeline behind yooxnow.com
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This decision illustrates the combined significance of full-mark incorporation and directly competitive website use. The addition of a common word did not avoid confusing similarity, while use of the resulting domain for online fashion sales supported both the absence of legitimate interests and bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Yoox Net-A-Porter Group S.p.A. v. Jude Chou Case No. D2019-2366 1. The Parties Complainant is Yoox Net-A-Porter Group S.p.A., Italy, represented by Jaumann S.r.l., Italy. Respondent is Jude Chou, China. 2. The Domain Name and Registrar The disputed domain name <yooxnow.com> 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 September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2019, 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 October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2019. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 29, 2019. 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 Complainant is a company organized under the laws of Italy that is active worldwide in the online fashion business. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Yoox”, the following of which enjoy, inter alia, protection for the territory of China: - Word mark YOOX, International trademark, registration number: 854072, registration date: April 27, 2005, status: active; - Word mark YOOX, International trademark, registration number: 1193879, registration date: September 25, 2013, status: active; - Word mark YOOX, Chinese trademark, registration number: 14596795, registration date: June 14, 2016, status: active. Moreover, Complainant has evidenced to own the domain name <yoox.com> which resolves to Complainant’s main website at “www.yoox.com” used to offer fashion articles for online sale. Respondent, according to the WhoIs information for the disputed domain name, is domiciled in China and registered the disputed domain name on May 21, 2019. At the time of filing of the Complaint and rendering of this decision, the disputed domain name resolves to a website at “www.yooxnow.com” which as well offers fashion products for online sale. On August 26, 2019, Complainant sent a cease-and-desist letter to Respondent to which the latter did not reply. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to be the world’s leading online luxury fashion retailer with its YOOX brand being renowned worldwide. Complainant submits that the disputed domain name is confusingly similar to Complainant’s YOOX trademark, as it incorporates the latter in its entirety with the only addition of the common English word “now”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not affiliated with Complainant and does not have a license to use Complainant’s YOOX trademark, (2) there is neither apparent evidence of Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, no any proof that Respondent has been commonly known by the disputed domain name, and (3) Respondent’s making use of the disputed domain name suggests affiliation with Complainant being the owner of the YOOX trademark, which may not be considered fair. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent’s business under the disputed domain name consists of the online retail sale of clothing articles and further fashion items which represents the core of Complainant’s own business activities, (2) Respondent apparently seeks to cause confusion by using a domain name which includes Complainant’s YOOX trademark to offer thereunder the same services claimed by Complainant’s trademark and corresponding website activities, and (3) Respondent apparently targeted Complainant when registering the disputed domain name and seeks to take unfair advantage of Complainant’s YOOX trademark’s reputation for commercial gain. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <yooxnow.com> is confusingly similar to the YOOX trademark in which Complainant has rights. The disputed domain name incorporates Complainant’s YOOX trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS) , WIPO Case No. D2003-0696 ). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 ), that the addition of another term (whether e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “now” does not dispel the confusing similarity arising from the incorporation of Complainant’s YOOX trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s YOOX trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Yoox” on its own. Moreover, Respondent apparently has neither used the disputed domain name in connection with a bona fide offering of goods or services, nor in a legitimate noncommercial or fair manner, but rather to direct it to a website offering the online retail sale of clothing articles and further fashion items which represents the core of Complainant’s own business activities, the obvious purpose being to take unfair advantage of Complainant’s YOOX trademark for commercial gain. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0 , section 2.1 ). Since Respondent has not filed a Response, it has not met that burden. Therefore, Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The circumstances to this case, namely the use of the disputed domain name which incorporates Complainant’s YOOX trademark in its entirety to run a website that is in direct competition with Complainant’s core business, leave no doubt that Respondent was fully aware of Complainant’s rights in the YOOX trademark when registering the disputed domain name and that the latter clearly is directed thereto. Also, there is no reason whatsoever apparent as to why Respondent needed to rely on the designation “Yoox” in order to set up a website for the purpose of selling fashion articles online if not to profit commercially from the reputation of Complainant’s YOOX trademark in the online fashion business. Therefore, having registered and using the disputed domain name in such manner, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s YOOX trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 name <yooxnow.com> be transferred to Complainant. Stephanie G. Hartung Sole Panelist Date: November 5, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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