WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sugartown Worldwide, LLC v. Registration Private, Domains by Proxy, LLC / ICS Inc
Case No. D2014-1536
1. The Parties
The Complainant is Sugartown Worldwide, LLC of Atlanta, Georgia, United States of America ("USA"), represented by Kilpatrick Townsend & Stockton LLP, USA.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, USA / ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <lillypuitzer.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2014, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 16, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2014.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on March 14, 2014. 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 has 26 separate registrations of the LILLY PULITZER trade mark with the USPTO, including for "clothing, namely, jeans, pants, slacks, shirts, belts, skirts and shorts" (Registration No. 1,157,374) registered since June 9, 1981.
The disputed domain name was registered on January 20, 2013.
5. Parties' Contentions
The Complainant is a designer, marketer and distributor of women's and girls' dresses, sportswear and other products, including furniture and bedding. The Complainant's LILLY PULITZER brand was originally created as an apparel line in the late 1950's, and has been, according to the Complainant, in continuous use at least since 1961 in relation to apparel and an expanding range of other goods such as furniture, stationary and eyewear. The Complainant sells goods under the relevant brand via seventy-two of its own stores and also in a number of department stores in the USA. It has in recent years attained a turnover in branded goods in excess of USD 100 million and by its own assertion expended considerable resources on advertising and promotion.
The Complainant owns the registered trademark LILLY PULITZER in the USA and numerous other jurisdictions, including the European Union, Turkey and Japan. The Complainant asserts that to its knowledge no other entity anywhere in the world has a legitimate right to use the LILLY PULITZER trademark.
According to the Complainant, the disputed domain name is nearly identical and/or confusingly similar to the Complainant's relevant trademark. The only difference lies in the omission of the "L" in the second word of the mark, a typical example of typosquatting the Complainant asserts. By the deliberate misspelling the Respondent intends to have Internet users who are looking for the Complainant, but make a typographical error, arrive at its own website. Because the disputed domain name is based on a slight and immaterial variation of the Complainant's trademark, the disputed domain name should be presumed confusingly similar to the Complainant's LILLY PULITZER trademark. The Complainant cites numerous Panel decisions concerning typosquatting cases to support its contentions in this regard.
The Complainant asserts that its rights in the LILLY PULITZER trademark predate the registration of the disputed domain name by the Respondent by many decades and that therefore the Respondent had constructive knowledge of the Complainant's rights at the time the disputed domain name was registered. According to the Complainant, since its rights predate the registration of the disputed domain name by so many years, the onus is on the Respondent to establish its rights or legitimate interests, something it has in no way done.
The Complainant also asserts that there is no relationship between it and the Respondent and thus no license or authorization to use the Complainant's trademark in any manner. The Complainant also asserts that the use of the disputed domain name by the Respondent is not associated with any bona fide offering of goods or services. The Respondent's website is a portal site that links to such websites as <lillypulitzer.com>, <saksfifthavenue.com>, <zulily.com>, <nordstrom.com>, <zappos.com> and <lollicouture.com>. According to the Complainant the structure of the website indicates that it is intended to serve to generate click-through license fees for the Respondent. Such practice does not amount to a bona fide attempt to offer goods or services to the public, all the more so since no distinguishing material is included in the disputed domain name. No non-commercial or fair use purpose for the Respondent's adoption and use of the disputed domain name is identifiable. In any case, according to the Complainant, the fact that the disputed domain name was registered so long after the Complainant had made extensive use of the LILLY PULITZER trademark indicates the absence of any legitimate interest in the Respondent.
The Complainant also asserts that the bad faith of the Respondent is established by the fact that the disputed domain name intentionally incorporates the allegedly well-known trademark LILLY PULITZER and was registered long after it became so known to consumers. This amounts, according to the Complainant, to opportunistic bad faith. Further, the practice of offering links to third party sites has repeatedly been held by Panels to amount to use in bad faith, allowing the Respondent to profit from goodwill the Complainant has accumulated in the relevant trademark over the years. In conclusion, bad faith is also established by the fact that the Respondent is offering the disputed domain name for sale via the web, according to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not strictly speaking identical to the Complainant's LILLY PULITZER trademark. However, the difference is very slight in that only the "L" in PULITZER is omitted. This has little effect either visually, aurally or in terms of the meaning or impression generated by the mark as incorporated in the disputed domain name. The latter represents the typical result of an inadvertent mistyping or misspelling of the Complainant's complex trademark by an Internet user entering terms into a search engine. Undoubtedly it was intended as such by the Respondent. The Complainant's trademark is highly distinctive and has no primary meaning, and the slight and irrelevant variation of the disputed domain name cannot and does not do anything other than evoke the Complainant's trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Complainant's trademark LILLY PULITZER is a highly distinctive mark and according to the Complainant's assertions has been in use for a number of decades, on a range of goods sold through a substantial number of outlets and online. The mark is registered in many jurisdictions. The Complainant has a well-established web presence. There is no reason why a party not authorized by the Complainant to do so would acquire the disputed domain name considered here which so closely resembles the Complainant's trademark. It is apparent that this is a typical case of typosquatting where the intention of the Respondent is to earn revenue resulting from Internet users' occasional misspelling of the Complainant's trademark while searching the Internet for its goods. Such practice does not vest rights or reflect the legitimate interests of the registrant of a disputed domain name. It is a not a bona fide practice which might legitimate the incorporation of a trademark in a domain name registered by a party other than the trademark owner or its licensee.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name incorporates what to all intents and purposes amounts to the highly distinctive and unusual trademark of the Complainant. The Complainant has traded under its LILLY PULITZER trademark for many years prior to the registration of the disputed domain name. It has attained a very considerable turnover and by its own assertion expended considerable funds on advertising and promotion of a broad range of goods by reference to the LILLY PULITZER trademark. It is unimaginable that the Respondent would not have been aware of the Complainant's trademark upon registration of the disputed domain name. The terms incorporated in it have no inherent or primary meaning, and the slight misspelling indicates deliberation and full knowledge and awareness of the Complainant's trademark rights. Further, the inclusion of hyperlinks to websites with competing and unrelated goods from the webpage to which the disputed domain name resolves, indicates nothing other than an intention to profit from Internet users mistakes and confusion by gaining click-through license fees. All this amounts to a classic case of typosquatting and thus bad faith use.
Therefore the Panel holds that the disputed domain name was registered and is being 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 <lillypuitzer.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: October 26, 2014