Complainant is Milly LLC of New York, New York, United States of America (“United States”), represented by Dentons US, United States.
Respondent is Domain Admin, Mrs. Jello, LLC of Livingston, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2014. On March 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 8, 2014.
The Center appointed Richard W. Page, Andrew F. Christie and Robert A. Badgley as panelists in this matter on May 2, 2014. The Panel finds that it was properly constituted. Each member of 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
Complainant is a fashion company which designs and sells women’s clothing, handbags and accessories, and has operated under the name “Milly” since its launch in 2001. Complainant’s products are sold in high-end department and specialty stores throughout the United States and elsewhere, including stores such as Bergdorf Goodman, Neiman Marcus, Saks Fifth Avenue, Bloomindales, Harrods, Takashimaya and Isetan. Complainant also operates an online retail store, which ships to 170 countries worldwide. In addition, Complainant currently operates one boutique in Tokyo and two in New York, and is scheduled to launch four free-standing boutiques in the Middle East. Complainant receives considerable attention from the press and has presented its collections during New York Fashion Week, an event reserved for well-known fashion brands.
Complainant has used the trademark MILLY (the “MILLY Mark”) in the United States since at least as early as 2001, and has since used the MILLY Mark in many other countries. Complainant owns six United States trademark registrations for the MILLY Mark, as well as United States registrations for the MILLY Mark (stylized) and the MILLY formative marks MILLY CABANA, MILLY MINIS and MILLY NY.
Complainant also owns trademark registrations for the MILLY Mark in Turkey, Malaysia, the United Arab Emirates, Egypt, Kuwait, Canada, Japan, the Republic of Korea, Bahrain, Australia, Singapore, the Russian Federation and Switzerland. In addition, Complainant owns trademark registrations in jurisdictions outside the United States for the MILLY Mark as the formative marks MILLY BY MICHELLE SMITH, MILLY & Design (in the Japanese script katakana), MILLY MINIS, MILLY MINIS BY MICHELLE SMITH, MILLY (stylized), and M MILLY & Design.
Complainant expends significant time, effort and money on promoting and marketing the Milly fashion brand. For example, Complainant is the registrant of the domain name and has operated the MILLY website at this address since 2001. Complainant also purchases keywords and adwords so that it its website appears as a sponsored ad in Google search results.
For many years, the Disputed Domain Name resolved to a pornographic website. In February of 2014, due to the continued harm caused to Complainant from Respondent’s use of the Disputed Domain Name for pornographic purposes, Complainant attempted to purchase the Disputed Doman Name, but Complainant’s offer was rejected. Following the rejection of Complainant’s offer, the Disputed Domain Name ceased to resolve to a pornographic website, and instead resolve to a parked domain for a website that posts sponsored links to other websites, almost all of which link to “www.”, its competitors’ and other websites that sell clothing, handbags and accessories. 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns numerous, worldwide trademarks for the MILLY Mark. In addition, Complainant alleges that as a consequence of its commercial activities, Complainant has acquired a substantial reputation and goodwill associated with the common law name MILLY as well as registered rights in the MILLY Mark.
Complainant further alleges that the Disputed Domain Name is confusingly similar to the MILLY Mark because it consists of the entire MILLY Mark with the inclusion of “.com” as an indicator of a generic Top-Level Domain which is non-distinctive.
Complainant further alleges that Respondent is not, and never was, a licensee or business associate of Complainant or any of Complainant’s affiliates, nor is Respondent otherwise authorized by Complainant to use the MILLY Mark in any manner, including as a domain name.
Complainant further alleges, on information and belief, that Respondent is not and never was known by, or was doing business that related to fashion, clothing, handbags, accessories or related goods or services under the name “Milly.”
Complainant further alleges that Respondent is not making any legitimate commercial, noncommercial or fair use of the Disputed Domain Name. Respondent has no interest in the MILLY Mark other than reaping commercial gain from misleading consumers seeking Complainant’s website and diverting these consumers to Respondent’s website or websites to which it links this diverted traffic. Complainant further alleges that Respondent’s use of the Disputed Domain Name improperly trades on Complainant’s substantial goodwill and creates a likelihood of confusion among the public by falsely suggesting that the Complaint or its Milly fashion brand is the source, sponsor, affiliate or endorser of Respondent and/or any of Respondent’s websites that may be offered at or linked to the Disputed Domain Name.
Complainant further alleges that since Respondent ceased using the Disputed Domain Name in connection with pornographic websites, Respondent is deliberately using the Disputed Domain Name to create confusion and to mislead consumers into falsely believing that a relationship of source, sponsorship, affiliation or endorsement exists between Complainant and the website to with the Disputed Domain Name resolves.
Complainant alleges that panels presiding over previous UDRP proceedings have described Respondent and its business as follows:
“The Respondent is in the business of acquiring domain names and the subsequent exploitation of those domain names by means of click through revenues and, if possible, sale at a profit. Respondent does not deny that it has a very large number of domain names. In Gigglesworld Corporation v. Mrs. Jello,WIPO Case No. D2007-1189, it was said that Respondent had acquired approximately 30,000 domain names and in A.V.M. Software Inc. d/ba Paltalk v. P and Igal Lictman a/ka/ Mrs. Jello LLC a/k/a E a/ka ,WIPO Case No. D2005-0917, it was said that the Respondent has registered over 6,000 domain names using one or more alias.”
See, Yara International ASA v. undefined, Domain Admin, Mrs. Jello LLC,WIPO Case No. DTV2008-0015.
Upon information and belief and as other UDRP panels have concluded, the individual I. Lichtman uses the names , Mrs. Jello. LLC, P and as aliases.
Complainant further alleges Respondent’s use of the Disputed Domain Name is an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s MILLY Mark.
Complainant further alleges that Respondent was aware of Complainant’s MILLY Mark when it ceased using the Disputed Domain Name to operate a pornographic website and commenced use of the Disputed Domain Name as a parked domain for a website that posts sponsored links to other websites, almost all of which link to “www.”, its competitors or other websites that sell clothing, handbags, and accessories.
Complaint further alleges that Respondent was familiar with Complainant’s business and trademark rights because Complainant had made an offer to purchase the Disputed Domain Name while the Disputed Domain Name was still being used for a pornographic website.
Complainant further alleges that Respondent cannot avoid responsibility for the content appearing on the website of the Disputed Domain Name by claiming that the sponsored links were served automatically by third parties. Respondent is responsible for the content displayed on its website, whether Respondent hand-selected the content or entered into an agreement that designates others to select such content.
Complainant requests the Panel to consider various approaches under the third element considered in previous UDRP cases, such as retroactive bad faith or the unified concept approach as discussed in Country Inns & Suites By Carlson, Inc. v. Shuai Niam Qin, La Duzi,WIPO Case No. D2009-1313; Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001; City Views Limited v. Moniker privacy services/ Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no legitimate interests in respect of the Disputed Domain Name; and,
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant alleges that it owns numerous, worldwide trademarks for the MILLY Mark. In addition, Complainant alleges that as a consequence of its commercial activities, Complainant has acquired a substantial reputation and goodwill associated with the common law name MILLY as well as registered rights in the MILLY Mark. Respondent has not contested these facts. The Panel finds that Complainant has enforceable trademark rights for the purposes of this proceeding.
Complainant further alleges that the Disputed Domain Name is confusingly similar to the MILLY Mark because it consists of the entire MILLY Mark with the inclusion of “.com” as an indicator of a Top Level Domain name which is non-distinctive. Respondent has not contested these facts. The Panel finds that the Disputed Domain Name is confusingly similar to the MILLY Mark pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy, paragraph 4(c) allows three non-exclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant alleged that Respondent is not, and never was, a licensee or business associate of Complainant or any of Complainant’s affiliates, nor was Respondent otherwise authorized by Complainant to use the MILLY Mark in any manner, including as a domain name.
Complainant further alleged, on information and belief, that Respondent is not and never was known by, or was doing business that related to fashion, clothing, handbags, accessories or related goods or services under, the name “Milly.”
Complainant further alleges that Respondent is not making any legitimate commercial, noncommercial or fair use of the Disputed Domain Name. Respondent has no interest in the MILLY Mark other than reaping commercial gain from misleading consumers seeking Complainant’s website and diverting these consumers to Respondent’s website or websites to which it links this diverted traffic. Complainant further alleges that Respondent’s use of the Disputed Domain Name improperly trades on Complainant’s substantial goodwill and creates a likelihood of confusion among the public by falsely suggesting that the Complaint or its Milly fashion brand is the source, sponsor, affiliate or endorser of Respondent and/or any of Respondent’s websites that may be offered at or linked to the Disputed Domain Name.
Complainant has sustained its burden of putting forth a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.
Respondent has not contested these allegations or offered any explanation of why it might have rights or legitimate interests in the Disputed Domain Name. The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The factual record as presented in this proceeding is sparse regarding the original registration of the Disputed Domain Name and its early uses. The Panel notes that the Registrar’s reply to the Center’s request for information states the domain name record was created on December 2, 1999 but is silent as to the date this Respondent registered or acquired the Disputed Domain Name.
The Disputed Domain Name contained little or no content for some undefined period of time. The Disputed Domain Name was then re-directed to a pornographic website and contained this content for a significant period of time.
After rejecting Complainant’s offer to purchase the Disputed Domain Name in 2014, Respondent re-directed the Disputed Domain Name to a pay-per-click (“PPC”) website focused on the fashion industry including Complainant’s products and those of Complainant’s competitors.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
Complainant contends, among other grounds, that Respondent has violated the Policy, paragraph 4(b)(iv):
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
Respondent has not contested Complainant’s allegations surrounding registration and use of the Disputed Domain Name. Both the former and present use of the Disputed Domain Name show Respondent’s intent, namely, opportunistic bad faith evidenced by Respondent’s knowing abuse of Complainant’s mark. Respondent, a sophisticated domainer, had Complainant’s business and the MILLY Mark in mind when it re-directed the Disputed Domain Name to a PPC website and intended to attract confused consumers by hosting links targeting Complainant’s competitors for commercial gain. Without the need to discuss various approaches referenced by Complainant, the Panel finds that the present evidence establishes the necessary elements of bad faith under the Policy, paragraph 4(b)(iv). The fact that Respondent may have registered the Disputed Domain Name prior to Complainant’s acquisition of trademark rights does not per se preclude a finding of bad faith under the circumstances of this case for the purposes of paragraph 4(a)(iii). The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to Policy, paragraph 4(a)(iii). 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 Name be transferred to Complainant.
Richard W. Page
Presiding Panelist
Andrew F. Christie
Panelist
Robert A. Badgley
Panelist
Date: May 25, 2014
Full & Egal Universal Law Academy