The Complainant is Sugartown Worldwide, LLC of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (USA).
The Respondent is Dragan Platic of Zagreb, Croatia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 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 May 12, 2014 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 May 15, 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 May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on July 18, 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 is a USA company and owner of the LILLY PULITZER trade mark. This trade mark was originally created in the late 1950’s as an apparel line, but its range has since expanded to include accessories, stationery, furniture and alike. The Complainant operates 26 LILLY PULITZER retail stores throughout the USA. There exist, in addition, 72 LILLY PULITZER signature stores that operate under licence of the Complainant. The Complainant’s 2013 fiscal year showed net sales of LILLY PULITZER goods and services of approximately USD 137 million. For the fiscal years 2012, 2011 and 2010 the Complainant’s net sales of LILLY PULITZER goods and services approximated USD 122 million, USD 94 million and USD 72 million respectively.
The Complainant first registered the trade mark LILLY PULITZER in USA in June 1981. It currently owns 26 separate registrations for the LILLY PULITZER mark in that territory. The Complainant also owns numerous registrations for its LILLY PULITZER mark in 35 other countries around the world, including international and community trade mark registrations. The Complainant furthermore owns the domain name , registered in February 1997.
The Disputed Domain Name was registered on April 13, 2006. Apart from a short period between April 18, 2014 and April 21, 2014 when the Respondent directed the website at the Disputed Domain Name to a department store which sold LILLY PULITZER branded clothing, the website has been used as a classic pay-per-click site, featuring sponsored links to a number of products including women and children apparel, stationery and textiles. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has acquired rights in the LILLY PULITZER trade mark as a consequence of:
a. the registration of its mark LILLY PULITZER, first in the USA in 1981, and subsequently in a substantial number of other countries worldwide; and
b. its significant use of the LILLY PULITZER trade mark through global promotion and sales.
The Complainant contends that its LILLY PULITZER trade mark is recognised worldwide and is exclusively associated with the Complainant.
The Complainant also argues that the Disputed Domain Name is confusingly similar to its LILLY PULITZER trade mark, with the only difference between the Complainant’s trade mark and the Disputed Domain Name being the addition of a third letter “l” in the word “Lilly”.
The Complainant contends that the Respondent lacks rights and legitimate interests in the Disputed Domain Name in that:
a. the Complainant has used and registered its trade mark extensively, many years prior to the registration of the Disputed Domain Name and the Respondent should have been aware of the Complainant’s trade mark.
b. the Respondent is neither authorised, nor licenced, by the Complainant to use the Complainant’s trade mark, or to use or register any domain name incorporating its trade mark.
c. the Respondent’s use of the Disputed Domain Name primarily in connection with a pay-per-click website, with links to content related to the Complainant’s goods and services, does not amount to a bona fide offering of goods or services.
d. the Respondent’s use of the Disputed Domain Name simply for the purpose of redirecting traffic to the Respondent’s website and to other websites, causing confusion with respect to the Complainant’s business, does not constitute a right or legitimate interest in the Disputed Domain Name.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent has registered and is using the Disputed Domain Name for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s LILLY PULLITZER trade mark. The Complainant submits that the Respondent’s bad faith registration and use of the Disputed Domain Name are demonstrated by the fact that the Disputed Domain Name was purposefully registered to incorporate the well known LILLY PULITZER trade mark and that it was registered long after the trade mark of the Complainant became well known to the consumers. The Complainant also argues that the Respondent’s use of the Disputed Domain Name in connection with a pay-per-click site, offering sponsored links to third party sites connected with the Complainant’s goods and services, constitutes evidence of bad faith.
The Complainant submits, lastly, that the Respondent’s attempt to sell the Disputed Domain Name for an amount of USD 4,750 constitutes evidence of bad faith.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has furnished evidence of its registration of the LILLY PULITZER trade mark in many countries worldwide and as international and community trade marks and furthermore, use of that mark in commerce. Either suffices to establish rights in the mark for Policy purposes.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s LILLY PULITZER trade mark. The only difference between the Complainant’s trade mark and the Disputed Domain Name is the addition of a third letter “l” in the word “Lilly” in the Disputed Domain Name which, taking into account sound, sight and overall impression, does not assist the Respondent in escaping a finding of confusing similarity.
The first requirement of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods and services, such as to confer on the Respondent’s rights or legitimate interests for the purpose of the Policy. On the contrary, its use of the Disputed Domain Name takes unfair advantage of the extensive reputation of the Complainant’s LILLY PULITZER trade mark and of the Disputed Domain Name’s identity to, or confusing similarity with that trade mark in order to divert Internet users seeking information about the Complainant and its goods and services to the Respondent’s website. The Panel further finds that the Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name, that it is not authorised by the Complainant to use the Disputed Domain Name and that there is no other basis on which it could claim to have rights or legitimate interests in the Disputed Domain Name in this case.
The second requirement of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that by using the Disputed Domain Name, the Respondent is intentionally attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website. In the Panel’s view, Internet users seeking information about the Complainant’s goods or services are liable to be diverted by confusion between the Disputed Domain Name and the Complainant’s mark, to the Respondent’s website, where there are provided sponsored links to goods and services associated with the Complainant. This allows the Respondent to profit from, and exploit the goodwill associated with the Complainant’s LILLY PULITZER trade mark, a classic form of cyber squatting.
The Complainant has also referred to the Respondent’s bad faith conduct in offering the Disputed Domain Name for sale. Paragraph 4(b)(i) of the Policy provides that such conduct constitutes use of the Disputed Domain Name in bad faith if the offer for sale was for a consideration in excess of the Respondent’s out of pocket costs. The Complainant did not submit evidence in connection with the Respondent’s likely out of pocket costs, but the amount indicated as the sale amount, namely USD 4,750, in the opinion of the Panel, does appear to be excessive and, as such, an amount much larger than the likely out of pocket cost incurred by the Respondent. In any event it is unlikely that the Disputed Domain Name would have been put up for sale if the intention of the Respondent was not to profit from it.
The Respondent had an opportunity in this administrative proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take this up.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and (iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Date: July 2, 2014
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