The Complainant is Sugartown Worldwide, LLC of United States of America, represented by Kilpatrick Townsend & Stockton LLP of United States of America.
The Respondent is Ravi Kiran of India.
The disputed domain name <lillypulitzerfurniture.com> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On February 8, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.
The Center appointed Antony Gold as the sole panelist in this matter on March 15, 2012. 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.
The Complainant, Sugartown Worldwide, LLC, is a limited liability company based in Delaware, USA. In the Complaint, it is stated that the “Lilly Pulitzer” brand was originally created in the 1950’s as a clothing brand. Today, the Complainant designs, markets and distributes women’s and girl’s dresses, sportswear and other products, including furniture. Amongst other matters, the Complainant operates 16 retail outlets in the US under the name “Lilly Pulitzer” and it has also established a further 70 of what it terms “signature stores”. It also sells products to a number of US-based stores, including Bloomingdales and Saks Fifth Avenue and operates what it describes as a “heavily-trafficked interactive website” at <www.lillypulitzer.com>.
The Complainant owns a large number of US trade mark registrations for the name LILLY PULITZER, including trade mark number 1,157,374 which was registered in 1981 in connection with items of clothing. The Complainant also has registered its LILLY PULITZER mark in numerous other territories, including India, Brazil and the European Union.
The disputed domain name was registered by the Respondent on 25 November 2011. The Complainant claims that the disputed domain name initially resolved to a website which contained links to third party websites relating to the Complainant’s goods through which the Respondent generated pay-per-click revenue. Copies of the original web pages were not annexed to the Complaint although a statement has been filed by a member of the law firm representing the Complainant attesting to such use. More recently, the Complainant claims that the Respondent’s website was restructured so that it contained a link to Amazon.com. The Complainant has annexed copies of some web pages to which the Domain Name resolved prior to the filing of the Complaint. These pages purport to contain information and commentary about the Complainant’s goods and services under the heading “Lilly Pulitzer Furniture. Your #1 Resource for Lilly Pulitzer Furniture”.
The Panel does not have any detailed information about the Respondent. However, the Complainant states that the Respondent is not licensed to use any domain name which incorporates the LILLY PULITZER mark. There is no indication that the Complainant took any steps to contact the Respondent prior to the filing of the Complaint and no Response has been filed to the Complaint.
The Complainant alleges that:
(i) the Domain Name is confusingly similar to a trade mark in which the Complainant has rights;
The Complainant states that the only difference between the LILLY PULITZER mark and the disputed domain name is the addition of the generic term “furniture”. The Complainant contends that the combination of the LILLY PULITZER mark and the word “furniture” increases the likelihood of confusion arising from the use of the LILLY PULITZER mark by the Respondent as the Complainant sells furniture under the name “Lilly Pulitzer”. The Complainant argues that in cases such as this confusing similarity must be presumed and that the likelihood of confusion between a mark and a domain name is not eliminated, or necessarily reduced, by the addition of generic terms. In this case, it says that the addition of “furniture” to the LILLY PULITZER mark actually increases the risk of confusion; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
The Complainant asserts that, as a result of the long-standing use which it has made of the LILLY PULITZER mark, the Respondent has constructive knowledge of the Complainant’s use and rights in the LILLY PULITZER mark.
The Complainant states that the burden is on the Respondent to establish that he has rights or a legitimate interest in the disputed domain name. The Complainant states that it has not permitted the Respondent to use the LILLY PULITZER mark and that there is no evidence to suggest that the Respondent is known by the name “Lilly Pulitzer”.
The Complainant further contends that the Respondent’s use of the disputed domain name is not a bona fide offering of goods and services. To support its contention, the Complainant asserts that the initial use of the disputed domain name as a “portal website” to generate pay-per-click revenue was not a bona fide offering. Moreover, it asserts that the use of the disputed domain name to purportedly provide information about the Complainant’s furniture products also does not amount to a legitimate commercial or fair use of the disputed domain name. In particular, the Complainant states that the content of the posts on the site feature “stock” text which has little to do with the Complainant”. The Complainant refers to a number of UDRP decisions which, it states, support its assertion that the Respondent’s current use of the disputed domain name do not establish a legitimate right or interest; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that that the Respondent registered and is using the disputed domain name in bad faith for commercial gain to benefit from the goodwill associated with the LILLY PULITZER mark. The Complainant contends that bad faith registration and use can be established as the disputed domain name incorporates the LILLY PULITZER mark and it was registered “long after” the LILLY PULITZER mark became well known to consumers.
The Complainant also claims that the Respondent’s use of the disputed domain name as a resource for information about Lilly Pulitzer furniture is an attempt to trade on the Complainant’s goodwill and reputation. In particular, the Complainant asserts that the Respondent’s use of the LILLY PULITZER mark in the disputed domain name is designed to divert Internet users to the Respondent’s website and intentionally creates a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant asserts that the Respondent’s initial use of the disputed domain name in connection with a “portal page” offering links to third party sites is a practice which “has been viewed repeatedly as evidence of bad faith”. It draws attention in this respect to the decision in Bang & Olufsen v. Unasi Inc, WIPO Case No. D2005-0728.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 14(b) of the Policy provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests with respect to the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith.
The Complainant has shown that it owns trade mark registrations in numerous territories throughout the world for the word mark LILLY PULITZER.
For the purpose of assessing whether the disputed domain name is confusingly similar to a name in which the Complainant has rights, a comparison must be made between the disputed domain name (<“lillypulitzerfurniture>) and the LILLY PULITZER mark. It is widely accepted that the .com suffix is disregarded for the purpose of making such a comparison.
In this case, the distinctive element of the disputed domain name is clearly the name LILLY PULITZER which is identical to the Complainant’s registered trade marks. The word “furniture” is merely descriptive of products sold by the Complainant under its LILLY PULITZER mark. The disputed domain name incorporates the Complainant’s mark in its entirety and the addition of a generic word which describes products sold by the Complainant does not prevent the disputed domain name from being confusingly similar to the mark LILLY PULITZER.
As a result, the Panel concludes that Paragraph 4(a)(i) of the Policy is satisfied and that the disputed domain name is confusingly similar to the Complainant’s LILLY PULITZER mark.
The Respondent has not replied to the Complaint. Further, there is nothing in the material submitted by the Complainant to suggest that there is evidence that the Respondent is known by the name, LILLY PULITZER or any basis by which the Respondent might be entitled to use the “Lilly Pulitzer” brand, whether in connection with the sale of furniture or at all. Accordingly, the Panel finds that the Respondent has no rights in the disputed domain name.
Moreover, the Panel also does not consider that the Respondent has a legitimate interest in the disputed domain name as he is not using it in connection with a bona fide offering of goods or services. In the absence of any response from the Respondent, the Panel accepts that the disputed domain name initially had been used to simply display sponsored links to third party websites. This did not amount to a bona fide offering. Moreover, the more recent use of the disputed domain name to resolve to a website which only purports to provide information about the Complainant’s goods is also not a bona fide offering of goods or services and does not constitute a legitimate, noncommercial or fair use of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
As a result, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied and the Respondent has no rights or legitimate interest in the disputed domain name.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith. The various UDRP decisions cited by the Complainant in support of its contentions were, in the main, not particularly apposite to the facts of this case. However, there are many UDRP decisions which have concluded that sites which pretend to be, in effect, tribute sites but which have evidently been registered for commercial motives, will often be found to have been registered and used in bad faith: see, for example, University of Notre Dame v 24/7 WIPO Case No. D2001-1288.
Accordingly, the Panel agrees with the Complainant’s contention that the Respondent is using the disputed domain name in the manner as described in paragraph 4(b)(iv) of the Policy and that the disputed domain name has been both registered and used in bad faith.
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 <lillypulitzerfurniture.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Dated: March 23, 2012