Urban Outfitters, Inc v. Domain Administrator
Claim Number: FA1505001620565
Complainant: Urban Outfitters, Inc of Philadelphia, Pennsylvania, United States of America.
Complainant Representative: Safenames Ltd of Milton Keynes, United Kingdom.
Respondent: Domain Administrator of Victoria, British Columbia, CA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: SALE Registry
Registrars: GoDaddy.com, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Piotr Nowaczyk, as Examiner.
Complainant submitted: May 21, 2015
Commencement: May 28, 2015
Default Date: June 12, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
No multiple complainants or respondents and no extraneous domain names require dismissal.
Findings of Fact:
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The Complainant is a retail company registered under American law. It has been operating in the market under the brand “URBAN OUTFITTERS” for over 40 years. The Complainant is the registered proprietor of US word mark “URBAN OUTFITTERS” (registration number 1,323,901) which was registered on March 5, 1985. The “URBAN OUTFITTERS” mark is well recognized in association with the Complainant’s goods in the clothing and fashion industry.
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Legal Findings and Conclusions:
IDENTICAL OR CONFUSINGLY SIMILAR
The disputed domain name, <urbanoutfitters.sale> is identical to the Complainant's “URBAN OUTFITTERS” mark since it incorporates the word mark in its entirety. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.sale” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825; White Castle Management Co. v. Craig Meyer, Claim Number: FA1410001585453).
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent is not commonly known by “URBAN OUTFITTERS” name. The Complainant has neither licensed nor authorized Respondent to use its trademark. The disputed domain name points to a web page which promotes the sale of this domain therefore it aims at the Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill.
In the absence of any counter arguments and evidences in support of the Respondent’s rights and legitimate interest, the Examiner finds that the second element under URS Procedure 1.2.6.2 has been satisfied.
BAD FAITH REGISTRATION AND USE
The disputed domain names was registered on May 7, 2015 despite receiving notification that the domain names matches a mark registered with the TMCH. The Complainant believes that “URBAN OUTFITTERS” mark was chosen as a domain name for its ability to attract the Internet users and therefore to trade off of the goodwill associated with it. The Complainant also asserts that the web page that the disputed domain name resolves to can confuse the Internet users looking for the Complainant’s services who would expect that the domain resolves to a website where the Complainant is selling merchandise which is on sale. The Complainant underlines that the Respondent is associated with 54 domains containing well known marks, which is clear evidence of a pattern of conduct of registration in order to prevent the mark owner from registering the same as encapsulated in URS Procedure 1.2.6.3(b). Finally, having received a cease and desist letter from the Complainant’s representatives, the Respondent offered to sell the disputed domain name for $3,500.
The Examiner finds that registering the disputed domain name despite the fact that the Complainant’s rights in “URBAN OUTFITTERS” mark were available for discovery in the Respondent’s preliminary checks constitute a bad faith registration. Moreover, the webpage that the disputed domain name resolves to is in itself an evidence of bad faith use of <urbanoutfitters.sale> as it uses the Complainant’s mark for commercial purposes without any authorization. Thus, the Examiner finds that the third element under URS Procedure 1.2.6.2 has been satisfied.
It should be noted that the Complainant’s contentions regarding the Respondent’s offer to sale the disputed domain name as well as the pattern of conduct that it is allegedly involved with were not proven.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<urbanoutfitters.sale>
Piotr Nowaczyk, Examiner
Dated: June 12, 2015
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