WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Serena & Lily, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-0568

1. The Parties

The Complainant is Serena & Lily, Inc., United States of America (“United States”), represented by RegitzMauck PLLC, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <serenaaandlily.com>, <serenaandilily.com>, and <serenaanndlily.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021, with regards the Disputed Domain Names listed above and two other domain names. On February 24, 2021, the Center transmitted by email to the Registrars requests for registrar verifications in connection with the five domain names. On February 24 and 25, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact information for the five domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 2, 2021, including the Disputed Domain Names and withdrawing the Complaint as it related to the other two domain names. On March 3, 2021, the Center informed the Parties and Registrars of the withdrawal of the Complaint as it related to the other two domain names.

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 the Respondent of the Complaint, and the proceedings commenced on March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.

The Center appointed John Swinson as the sole panelist in this matter on March 30, 2021. 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

The Complainant is Serena & Lily, Inc., a company incorporated in the United States. According to the Complaint, the Complainant operates the website at <serenaandlily.com> where it offers a large range of homeware products for sale.

The Complainant owns a number of United States trade mark registrations for SERENA & LILY, including trade mark number 3241729, registered on May 15, 2007 (the “Trade Mark”).

The Disputed Domain Names <serenaaandlily.com>, <serenaandilily.com>, and <serenaanndlily.com> were created on November 23, 2020, February 11, 2021, and December 4, 2020, respectively.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, located in Panama. The Respondent did not submit a Response so little information is known about the Respondent.

The Disputed Domain Names <serenaaandlily.com> and <serenaandilily.com> do not currently resolve to active websites. The Disputed Domain Name <serenaanndlily.com> redirects to various websites operated by third parties that offer a range of goods and services for sale.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Complainant owns the Trade Mark. The Disputed Domain Names are all identical to the Trade Mark apart from typographical errors.

Rights or Legitimate Interests

The Disputed Domain Names constitute bad faith typosquatting and are designed to redirect consumers from the Complainant’s website at the domain name <serenaandlily.com> for malicious, fraudulent or criminal purposes. Due diligence has uncovered no evidence of a bona fide offering of goods and services. Accessing the Disputed Domain Name <serenaanndlily.com> enables malware to be downloaded onto the user’s computer and the other two Disputed Domain Names are currently parked.

Registered and Used in Bad Faith

As set out above in relation to rights or legitimate interests.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (section 1.9, WIPO Overview)

The Disputed Domain Names all consist of obvious misspellings of the Trade Mark. The fact that the Disputed Domain Names all include the word “and” in place of the ampersand “&” in the Trade Mark does not prevent the Trade Mark from being recognisable in the Disputed Domain Names. Moreover, it is not possible to register domain names that incorporate ampersands and the Complainant’s domain name <serenaandlily.com> also features the word “and” in place of an ampersand.

Similarly, the fact that the Disputed Domain Names <serenaaandlily.com>, <serenaandilily.com>, and <serenaanndlily.com> all incorporate an additional letter (“a”, “i”, and “n”, respectively) does not prevent a finding of confusing similarity. The Trade Mark is recognizable in all of the Disputed Domain Names.

It is well established that where there is “typosquatting”, the domain name in question can be considered to be confusing similarly to the trade mark (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272, and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201). The Panel considers this to be a clear case of typosquatting.

The Disputed Domain Names are confusingly similar to the Trade Mark.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names <serenaaandlily.com> and <serenaandilily.com> do not currently resolve to active websites. The Disputed Domain Name <serenaanndlily.com> redirects to various websites operated by third parties that offer a range of goods and services for sale.

- There is no evidence that the Complainant has authorised or otherwise given the Respondent permission to use the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, or has registered or common law trade mark rights in relation to these names.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names. As mentioned above, the Respondent does not appear to have made any use of the website at the Disputed Domain Names <serenaaandlily.com> and <serenaandilily.com> and the Disputed Domain Name <serenaanndlily.com> redirects to various websites operated by third parties that offer a range of goods and services for sale.

- As previous UDRP panels have found, typosquatting does not constitute a legitimate use of the Disputed Domain Names (see, e.g., Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694, and Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537).

In addition, the Respondent has been involved in a large number of previous UDRP cases and been described as a serial cybersquatter who has registered numerous domain names incorporating well-known trade marks (see Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018).

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant is successful on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

Registered in bad faith

The Complainant registered the Trade Mark and began selling homewares via its website at the domain name <serenaandlily.com> years before the first Disputed Domain Name was registered. The Disputed Domain Names all consist of obvious misspellings of the Trade Mark. In these circumstances, the Panel can reasonably infer that the Respondent knew or should have known that its registrations would be confusingly similar to the Trade Mark.

The Respondent also has a history of registering domain names to target well-known trade marks (see Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018).

In these circumstances, the Panel is satisfied that the Disputed Domain Names were registered in bad faith.

Used in bad faith

The Panel notes that although the Disputed Domain Names <serenaaandlily.com> and <serenaandilily.com> do not resolve to an active website, this non-use does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The particular circumstances of this case which lead to a conclusion of bad faith use are:

- the Trade Mark was registered 13 years before the first Disputed Domain Name and has been widely used by the Complainant in connection with its homewares business;

- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use;

- the Disputed Domain Names consist of obvious misspellings of the Trade Mark; and

- the Respondent has a history of registering domain names to target well-known trade marks (see Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018).

The factors outlined above also apply in relation to the Disputed Domain Name <serenaanndlily.com>. In addition, this Disputed Domain Name redirects users to websites operated by various third parties that offer a range of goods and services for sale. In doing so, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to this Disputed Domain Name, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name or the products on the websites to which the Disputed Domain Name redirects.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

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 Names <serenaaandlily.com>, <serenaandilily.com>, and <serenaanndlily.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 13, 2021