WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BYLI/VY v. Domain Administrator, PrivacyGuardian.org / hudi wenf, yyw bopu
Case No. D2021-1662
1. The Parties
The Complainant is BYLI/VY, France, represented by Cabinet Bouchara, France.
The Respondents are Domain Administrator, PrivacyGuardian.org, United States of America / hudi wenf, yyw bopu, China.
2. The Domain Name and Registrar
The disputed domain name <boutiquelivy.com> <storelivy.com> are registered with NameSilo, LLC., NameSilo, LLC., (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, 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 May 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 31, 2021.
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 Respondents of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 22, 2021.
On June 28, 2021, the Center sent a notification to the Parties in which it granted to the Respondents a ten-day period through July 8, 2021 to submit a response. The Respondents did not submit any response.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 13, 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 a French company operating in the field of design and distribution of underwear, ready-to-wear and swimwear goods for women as well as fashion accessories.
The Complainant and its products enjoy a great reputation in its field of specialty and is the owner of several trademarks duly registered and renewed to designate notably “clothing, underwear, swimwear”, including European Union trademark No. 16498198 LIVY, filed on March 23, 2017, and duly registered on July 28, 2017, for goods and services in classes 18, 25 and 35.
The disputed domain names <boutiquelivy.com> and <storelivy.com> were both registered on April 27, 2021. They do not resolve to any active websites at present, but both disputed domain names previously resolved to similar websites, that purported to offer goods under the Complainant’s LIVY trademark.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s LIVY mark because they reproduce the mark in its entirety and that the addition of the generic or descriptive terms “boutique” and “store” respectively is insufficient to distinguish the disputed domain names from the Complainant’s LIVY trademark.
The Complainant further alleges that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not licensed or otherwise authorized the Respondents to use the Complainant’s LIVY trademark in any way, just as there is no evidence to suggest that the Respondents are commonly known by the disputed domain names.
The Complainant finally alleges that the Respondents have registered and are using the disputed domain names in bad faith. The Complainant thus contends that the Respondents were fully aware of the Complainant’s rights in the LIVY trademark when registering the disputed domain names. The Complainant further contends, that the disputed domain names are used to run websites that imitate the Complainant’s official website “www.li-vy.com”, and such use are clear indications that the disputed domain names are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant requests that although the Complaint is filed against two different Respondents, it shall be consolidated. The Complainant thus notes that the indicated Registrant Organization, is identical, that the disputed domain names target the Complainant's LIVY trademark in a similar fashion, that both disputed domain names resolve to similar, active websites, that the disputed domain names are registered with the same Registrar and on the same date, and that both disputed domain names are hosted on similar name servers. The Complainant therefore claims that the disputed domain names are subject to common control, which justifies that the Complainant can file a single consolidated Complaint.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation
Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure that the Complaint against the two distinct Respondents, may be consolidated.
As it is stated in the first paragraph of section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. Paragraph two of the section then lists several factors that UDRP panels have considered in determining whether a consolidation is appropriate.
According to the available WhoIS information, the two named Respondents share the almost exact same contact details. Furthermore, the disputed domain names were registered on the same date and with the same registrar, and they are both constructed in the same manner, just as they are both used to resolve to very similar websites.
Based on the above, the Panel finds that the Complainant has established a prima facie case that the Complaint can be consolidated. Neither of the two Respondents have rebutted this consolidation.
Consequently, the Panel finds that it is appropriate to consider the Complaint filed against both Respondents in the present proceeding, which will therefore be referred to as the “Respondent” below.
6.2. The substantive matter of the Complaint
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark LIVY, since the disputed domain names contain this mark in its entirety together with the prefixes “boutique” and “store” respectively. See section 1.8 of the WIPO Overview 3.0.
The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such it is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.
B. Rights or Legitimate Interests
It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademark LIVY.
Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted this. Furthermore, the way the Respondent is using the disputed domain names, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain names. Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, including the coined nature of the of the Complainant’s trademark LIVY, the nature of the disputed domain names, and the way that the disputed domain names have been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain names in bad faith.
The disputed domain names have been used for websites, which, inter alia by reproducing the Complainant’s logo, clearly gave the Internet user the impression that the websites were official websites of the Complainant. Not only is this not the case, but the Complainant has furnished evidence that indicates that some of the goods that were offered for sale on the websites were counterfeited LIVY goods. The Panel therefore finds that there can be no doubt that the disputed domain names have been used in bad faith to intentionally attempt “to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website”. The fact that the websites appear to be unavailable at present does not alter this finding.
Noting that the disputed domain names incorporate the Complainant’s trademark LIVY and the gTLD “.com”; that the Respondent has not replied to the Complainant’s contentions; and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <boutiquelivy.com> and <storelivy.com> be transferred to the Complainant.
Date: July 26, 2021