{ "case_number": "CAC-UDRP-104136", "time_of_filling": "2021-11-10 17:01:32", "domain_names": [ "off-whiteoutletstore.com", "otherstoriesoutlet.com", "tedbakerfashionoutlet.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "H & M Hennes & Mauritz AB", "Off-White LLC", "No Ordinary Designer Label Limited t\/a Ted Baker" ], "complainant_representative": "Stobbs IP Ltd", "respondent": [ "Liu Chan Yuan " ], "respondent_representative": null, "factual_background": "A)\tOTHERSTORIESOUTLET.COM\r\n\r\nComplainant no. 1, H&M, owns and controls all rights in relation to the & OTHER STORIES trademark.\r\n\r\nAcross its core brands, the H&M Group offers customers a wealth of styles and trends across fashion, beauty, accessories homeware and food. H&M operate in more than 5,000 stores across 74 markets and as of 2020, employed around 153,000 people. As of 2020, H&M brought in a total of 187 billion Swedish krona (crowns) in net sales.\r\n\r\nThe & OTHER STORIES brand was founded in 2010. The brand is most well-known in relation to its one-stop-shop function for women’s fashion. The brand predominantly operates from the website , which has been active as a commercial website, since 2013.\r\n\r\nThe disputed domain name was registered on 26 January 2021 and is held by the Respondent. \r\n\r\nThe disputed domain name website (i.e. website available under internet address containing the disputed domain name ) is an active website that mimics official website of H&M available at www.stories.com. It contains H&M's trade marks, H&M's copyrighted images and overall is designed to show an association with H&M, the & OTHER STORIES trademark and its business. \r\n\r\n\r\nB)\tOFF-WHITEOUTLETSTORE.COM\r\n\r\nComplainant no. 2, Off-White, is the owner and controller of the OFF-WHITE brand.\r\n\r\nOff-White is a luxury fashion brand created by Virgil Abloh in 2013. Off-White’s products have been widely promoted and sold worldwide and have received a great deal of recognition within the fashion industry and amongst celebrities.\r\n\r\nThe OFF-WHITE brand is internationally recognised as a luxury fashion brand and sold through exclusive retail outlets such as Harrods and Selfridges and via luxury e-commerce platforms such as Farfetch, Mr Porter and Net-a-Porter in the United Kingdom. Customers therefore expect and rely on the extremely high quality of the Off-White products which is reflected in the price point of those products.\r\n\r\nThe disputed domain name was registered on 20 March 2021 and is held by the Respondent.\r\n\r\nThe disputed domain name website (i.e. website available under internet address containing the disputed domain name ) is an active website that mimics official website of Off-White. It contains Off-White 's trade marks, Off-White 's copyrighted images and overall is designed to show an association with Off-White, OFF-WHITE trademark and its business.\r\n\r\n\r\nC)\tTEDBAKERFASHIONOUTLET.COM\r\n\r\nComplainant no. 3, Ted Baker, is a British company founded in 1998, which operates in the clothing retail industry, offering menswear, womenswear and accessories. It has around 2,000 employees, 490 stores and concessions worldwide.\r\n\r\nTed Baker has several stand-alone stores in the UK. The Ted Baker range is also sold by other retailers (which it refers to as Ted Baker Trustees), in stores of the John Lewis Partnership and House of Fraser. Ted Baker also has stores at Bicester Village Retail Outlet, Swindon Designer Outlet, Portsmouth's Gunwharf Quays and Cheshire Oaks Designer Outlet. There is a Ted Baker concession in all Selfridges & Co stores; London, Birmingham, Manchester and the Trafford Centre. Ted Baker also has stores and outlets in Europe, the United States, Canada, Australia, Asia, South Africa and the Middle East.\r\n\r\nTed Baker’s main e-commerce website can be found at www.tedbaker.com.\r\n\r\nThe disputed domain name was registered on 20 April 2021 and is held by the Respondent. \r\n\r\nThe disputed domain name website (i.e. website available under internet address containing the disputed domain name ) is an active website that mimics official website of Ted Baker. It contains Ted Baker’s trademarks, Ted Baker’s copyrighted images and overall is designed to show an association with Ted Baker, TED BAKER trademarks and its business. \r\n\r\n\r\nThe Complainants request the Panel appointed in this administrative proceeding that the Disputed Domain Names be transferred in the following way:\r\n\r\n transferred to Off-White LLC\r\n\r\n transferred to H & M Hennes & Mauritz AB\r\n\r\n transferred to No Ordinary Designer Label Limited t\/a Ted Baker ", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.", "no_response_filed": "The Parties' contentions are the following:\r\n\r\nCOMPLAINANTS:\r\n\r\nCONFUSING SIMILARITY\r\n\r\nThe Complainants state that: \r\n\r\nThe disputed domain names are confusingly similar to the & OTHER STORIES, OFF-WHITE and TED BAKER trademarks.\r\n\r\n\r\nA)\tOTHERSTORIESOUTLET.COM\r\n\r\nThe disputed domain name wholly incorporates OTHER STORIES trademark, along with the generic word ‘OUTLET’, which does nothing to materially alter the overall impression of the domain name in the eyes of the average Internet user. On the contrary, the addition of these terms merely reinforces an association with H&M considering that ‘OUTLET’ is synonymous with the industry in which H&M operates.\r\n\r\nAlso it is widely recognised, that the use of the ampersand ‘&’ cannot be reflected in domain names. The ampersand (present in the Complainant’s trademark but absent from the disputed domain name) is not a valid character for the registration of a domain name.\r\n\r\n\r\nB)\tOFF-WHITEOUTLETSTORE.COM\r\n\r\nOff-White submits that the disputed domain name incorporates OFF-WHITE trademark with the additional terms ‘OUTLET’ and ‘STORE’. As submitted above in relation to H&M, the additional generic terms do not alter the overall impression of the disputed domain name.\r\n\r\n\r\nC)\tTEDBAKERFASHIONOUTLET.COM\r\n\r\nTed Baker submits that the term ‘TED BAKER’ is fully incorporated in the disputed domain name , along with two generic terms ‘FASHION’ and ‘OUTLET’. As stated above, the additional words merely reinforce its association with Ted Baker, who is known for operating in fashion and has products which are sold in designer outlets.\r\n\r\nThe Complainants also argue that the TLD suffix ‘.COM’ is irrelevant when assessing the disputed domain names, as it is merely a technical requirement, used for domain name registrations.\r\n\r\nThe Complainants refer to previous domain name decisions in this regard.\r\n\r\nThus, according to the Complainants the confusing similarity between Complainants' trademarks and the disputed domain names is clearly established.\r\n\r\n\r\nNO RIGHTS OR LEGITIMATE INTERESTS\r\n\r\nThe Complainants state that:\r\n\r\nThe Respondent has not been commonly known by the disputed domain names. \r\n\r\nThe Complainant has not authorized, permitted or licensed the Respondent to use Complainants' trademarks in any manner. The Respondent has no connection or affiliation with any of the Complainants whatsoever. On this record, Respondent has not been commonly known by the any of the disputed domain names.\r\n\r\nOn the contrary, the disputed domain names were used for attracting internet users to goods or services provided by the Respondent and this why it is free riding on reputation of the Complainants' trademarks and their business. This is because all disputed domain names resolve to infringing websites, which in all cases, feature the Complainants’ branding and offer for sale the Complainants’ branded products.\r\n\r\nThe Complainants also refer to \"Oki Data Test\" and its applicability when assessing legitimate use of the disputed domain names (for detail see below). The Complainants submit that the Respondent fails to satisfy the third requirement under Oki Data Test requiring Respondent to accurately disclose its relationship with the Complainants – none of the disputed domain names websites discloses anything that could be construed as a notice to unsuspecting customers about lack of such relationship.\r\n \r\nThe Complainants refer to previous domain name decisions in this regard.\r\n \r\n\r\nBAD FAITH REGISTRATION AND USE\r\n\r\nThe Complainants state that:\r\n\r\nSeniority of the Complainants' Trademarks predates the registration of corresponding disputed domain name. \r\n\r\nFurthermore, the Complainants’ Trademarks have received widespread recognition, supported by their endorsement on social media. Therefore the Respondent must have been aware of such trademarks and their reputation. This clearly indicates bad faith registration of disputed domain names by the Respondent. \r\n\r\nPrior to filing a UDRP complaint against the Respondent, H&M sent the Respondent a cease-and-desist letter on the 25 August 2021. The Respondent did not respond.\r\n\r\nThe disputed domain names were used for attracting internet users to services provided by the Respondent, which are similar to those provided by Complainant, and therefore it is free riding on reputation of the Complainant's trademark and its business. \r\n\r\nThe Complainants refer to previous domain name decisions in this regard.\r\n\r\n\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent has not provided any response to the Complaint.", "rights": "The Complainants have, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy). ", "no_rights_or_legitimate_interests": "The Complainants have, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). ", "bad_faith": "The Complainants have, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). ", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nConsolidation of Cases: \r\n\r\nPanel determines that the Complainants should be permitted to have their Complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. Overall this is clearly a case fitting within the “common conduct” category in which it would be equitable and fair to permit consolidation.\r\n\r\nFirstly, the Respondent is intending to cause confusion in the fashion industry by targeting the fashion consumers. There is a clear common pattern in registering the disputed domain names i.e. combining a trademark well-known in a fashion business with generic terms. \r\n\r\nAlso the arguments related to each of the domain names in question are the same, so filing separate complaints and reiterating the same arguments for each brand would be inefficient.", "decision": "Accepted", "panelists": [ "JUDr. Jiří Čermák" ], "date_of_panel_decision": "2022-01-03 00:00:00", "informal_english_translation": "A)\tOTHERSTORIESOUTLET.COM\r\n\r\nThe Complainant no. 1, H&M Hennes & Mauritz AB (\"H&M\"), is a registered owner of a following trademark containing a word element '& OTHER STORIES':\r\n\r\n(i) & OTHER STORIES (word), EU Trademark, priority (filing) date 14 January 2011, registration date 23 June 2011, trademark application no. 9659848, registered for goods and services in the international classes 3, 9, 14,16, 18, 21,24, 25, 28, and 35. (referred to as \"& OTHER STORIES trademark\").\r\n\r\n\r\nB)\tOFF-WHITEOUTLETSTORE.COM\r\n\r\nThe Complainant no. 2, Off-White, LLC (\"Off-White\"), is inter alia a registered owner of a following trademark containing a word element 'OFF-WHITE':\r\n\r\n(i) OFF WHITE (word), EU Trademark, priority (filing) date 20 December 2013, registration date 15 July 2014, trademark application no. 12450466, registered for goods and services in the international classes 18, 25, and 35. (referred to as \"OFF-WHITE trademark\").\r\n\r\n\r\nC)\tTEDBAKERFASHIONOUTLET.COM\r\n\r\nThe Complainant no. 3, No Ordinary Designer Label Limited t\/a Ted Baker (\"Ted Baker\"), is inter alia a registered owner of a following trademark containing a word element 'TED BAKER':\r\n\r\n(i) TED BAKER (word), EU Trademark, priority (filing) date 20 January 2016, registration date 29 August 2016, trademark application no. 15022064, registered for goods and services in the international classes 11, 16, and 35. (referred to as \"TED BAKER trademark\").", "decision_domains": { "OFF-WHITEOUTLETSTORE.COM": "TRANSFERRED", "OTHERSTORIESOUTLET.COM": "TRANSFERRED", "TEDBAKERFASHIONOUTLET.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }