Urban Outfitters Inc. v hr lids

WIPO Case No. D2023-0583

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Urban Outfitters Inc. v. hr lids

Case No. D2023-0583

1. The Parties

Complainant is Urban Outfitters Inc., United States of America (“United States”), represented by SafeNames

Ltd., United Kingdom.

Respondent is hr lids, United States.

2. The Domain Name and Registrar

The disputed domain name <urbanoufitters.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2023.
On February 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 8, 2023, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Not disclosed) and contact information in the Complaint. The
Center sent an email communication to Complainant on February 15, 2023, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the

Complaint. Complainant filed an amended Complaint on February 17, 2023.

The Center verified that the Complaint together with the amended 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 February 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2023. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 20, 2023.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 27, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is an American-based retailer of clothing and accessories established in 1970 and operating for services in class 42, claiming a date of first use in August 1976.
under the “Urban Outfitters” brand with 20,000 employees in more than 200 retail locations in North America,
Europe and the Middle East. It operates a business and e-commerce website at the domain name
<urbanoutfitters.com>. Complainant is the proprietor of several trademarks, including United States

The disputed domain name was registered on October 1, 2022. It does not resolve to an active website. The record contains evidence that mail exchange records have been configured for the disputed domain name, and that it has been used to send e-mails to third parties in which Respondent impersonated an

employee of Complainant. The record contains evidence that the disputed domain name previously resolved

to a website featuring pay-per-click (“PPC”) links related to Complainant’s business.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that its URBAN OUTFITTERS mark has achieved considerable exposure through the commercial success of the business and popularization of the mark on social media, a mobile app, and collaborations with various artists and brands. The disputed domain name is identical to the URBAN OUTFITTERS mark except for the omission of the first letter “t.” The generic Top-Level Domain

(“gTLD”) “.shop” is a standard registration requirement.

Under the second element, Complainant states that Respondent has not registered any trademarks for Complainant to use domain names that feature the URBAN OUTFITTERS mark, or to advertise any commercial service in respect of such. Complainant is in no way affiliated with Respondent. The disputed domain name has been used to send phishing correspondence under the name of one of Complainant’s employees. This correspondence was accompanied by a fake employment contract featuring Complainant’s URBAN OUTFITTERS mark and address, which invited the recipient to provide personal details and identification documents.
‘urbanoufitters’ or any term similar to this. Complainant also cannot find any evidence to suggest

Under the third element, Complainant states that its rights in the URBAN OUTFITTERS mark predate the registration of the disputed domain name by more than 35 years and Complainant has developed substantial goodwill and international recognition in its URBAN OUTFITTERS offerings. Respondent has engaged in typosquatting by registering a domain name that differs from Complainant’s mark by the omission of one letter. The choice of the gTLD “shop” emphasizes the connection to Complainant. The disputed domain name has been used for fraudulent purposes to deceive Internet users. The disputed domain name previously resolved to a website featuring PPC links related to Complainant’s business. Upon Complainant’s request, the registrar disabled the website.

Complainant requests transfer of the disputed domain name.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

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

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

(iii)      Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the URBAN OUTFITTERS
mark through registration in the United States and other jurisdictions. Complainant thereby satisfies the
threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.2.1.

In comparing Complainant’s URBAN OUTFITTERS mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to this mark as the mark is clearly recognizable within the disputed domain name, save for the omission of the first letter “t.” This is clearly a deliberate misspelling of Complainant’s trademark. See WIPO Overview 3.0, section 1.9.

It is the well-established view of UDRP panels that a gTLD such as “.shop” is viewed as a standard
registration requirement and as such is disregarded under the first element confusing similarity test. See

WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i)        before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)       respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii)      respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent
has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by
Complainant and has no rights in the URBAN OUTFITTERS mark.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent has not provided any rebuttal of Complainant’s prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. There is no evidence of legitimate noncommercial use or a bona fide offering of goods or services. Rather, the record reflects that the disputed domain name (incorporating an obvious misspelling of Complainant’s URBAN OUTFITTERS mark) was used by Respondent to impersonate Complainant in an attempt to defraud third parties. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its URBAN OUTFITTERS mark predates the registration of the disputed domain name by more than 30 years. The disputed domain name is an obvious misspelling of Complainant’s trademark. The selection of the gTLD “.shop” is additional evidence that Respondent was targeting Complainant, an established retailer. Accordingly, it is clear that Respondent had Complainant’s mark in mind when registering the disputed domain name. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity, as in this case, can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.

The Panel finds the evidence in the record establishes that Respondent used the disputed domain name in an attempt to pass itself off as Complainant to perpetuate what appears to be a fraudulent scheme to obtain personal data through the offering of purported employment with Complainant. The Panel finds that

Respondent thereby attempted to impersonate Complainant for commercial gain, indicating bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.2.1. The previous use of the disputed domain name to resolve to a website featuring PPC links related to Complainant’s business is further evidence of bad-faith use of the disputed domain name. See WIPO Overview 3.0, section, 3.5.

Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible.

The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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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 <urbanoufitters.shop> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: April 10, 2023