Lilly A/S v. yiyi chen
Claim Number: FA1611001704586
Complainant is Lilly A/S (“Complainant”), represented by Sofie Beiter Arreskov of Plesner Law firm, Denmark. Respondent is yiyi chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lillykleid.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2016; the Forum received payment on November 25, 2016.
On November 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lillykleid.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lillykleid.com. Also on November 30, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a notification of Respondent Default.
On December 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on Complainant's registered trademark rights to LILLY <w>. The trademarks are registered for the following goods (among others); "Clothing, footwear, headgear" in class 25, and "Hair ornaments, brooches (clothing accessories), artificial flowers" in class 26, and for services (among others) in class 35 "Retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridal wear and bridal goods", and in class 42 "Fashion design services and fashion information services regarding religious and festive occasions clothing, footwear and headgear, hair ornaments, brooches (clothing accessories) and artificial flowers".
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
(a) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (UDRP Rule 3(b)(ix)(1); UDRP Policy 4(a)(i)).
Complainant is a bridal store chain based in Denmark that was founded in 1946. Complainant has stores in Denmark, Norway, and Sweden. Complainant offers four collections of bridal gowns that are marketed and sold under the following four brands; LILLY, PASSIONS by LILLY, DIAMONDS by LILLY, and pure white by LILLY. Complainant's headquarters is situated in Vejle, Denmark. Alongside the bridal wear, Complainant also offers eveningwear, a bridesmaid collection, as well as a collection of communion dresses and christening gowns.
Complainant is the owner of the EU trademark registration LILLY <w> EUTM 000580282 registered in class 9 for "Carriers of sound and/or image records, especially sound and image recordings on compact disc and tape", class 14 for "Jewellery, bijouterie", class 16 for "Printed matter, stationary, especially printed cards and envelopes", class 25 for "Religious and festive occasions clothing, footwear and headgear", class 26 for "Hair ornaments, brooches (clothing accessories), artificial flowers", and class 42 for "Fashion design services and fashion information services regarding religious and festive occasions clothing, footwear and headgear, hair ornaments, brooches (clothing accessories) and artificial flowers". Furthermore, Complainant is the owner of the EU trademark registration LILLY <w> EUTM 004892782 registered in class 35 for "Retail services in the field of clothing, footwear and headgear for religious events and festive occasions, as well as in connection with bridal wear and bridal goods".
The above-mentioned trademarks have been applied for and are registered prior to the registration date of the disputed domain name, which was on 3 February 2016.
Complainant is also the owner of the domain name lilly.dk and the domain name lilly.eu.
The disputed domain name fully incorporates Complainant's registered trademark LILLY with the addition of the descriptive word "KLEID", which is German for "dress".
The addition of merely descriptive wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy. Since Complainant is a bridal house selling, e.g., dresses, the word "KLEID" (in English: dress) is purely descriptive and is therefore not capable of overcoming a claim of confusing similarity. Reference is made to BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Ltd v. Cameron Jackson, D 2008-1338 (WIPO, Nov. 24, 2008), finding that "the addition of the words "diamond mine" to the mark EKATI is merely descriptive and doesn't distinguish the Disputed Domain Name from the Complainants' mark". Moreover, reference is made to Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (NAF, Apr. 11, 2003), finding that a respondent's domain names, which incorporated a complainant's entire mark and merely added the descriptive terms "traffic school", "defensive driving", and "driver improvement", did not add any distinctive features capable of overcoming a claim of confusing similarity.
Further, the addition of ".com" to a registered mark is insignificant to its confusing similarity. As the dot-com element is functional, the domain name lillykleid.com is confusingly similar to Complainants' name and trademark LILLY. Reference is made to Isleworth Land Co. v. Lost in Space, FA 02080001 17330 (NAF, Sept. 27, 2002) ("[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy(a)(i) analysis"); and Pomellato S.P.A v. Tonetti, D 2000-0493 (WIPO July 7, 2000), finding <pomellato.com> identical to Complainant's mark because the generic top-level domain (gTLD) ".com" after the name POMELLA TO was not relevant.
Consequently, Complainant believes to have satisfied Paragraph 4(a)(i)of the Policy.
[b] The Respondent has no rights or legitimate interests in respect of the domain name that is subject of the complaint (UDRP Rule 3(b)(ix)(2); UDRP Policy 4(a)(i i)).
As described by the Panel in AOL LLC v. Gerberg, FA 780200 (NAF, Sept. 25, 2006), "Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names".
Respondent has created a website from where similar goods to those of Complainant's are marketed, namely bridal wear, and Respondent has called its business "LILLY BRAUT ONLINE SHOP". The word "BRAUT" is German for "bride". Respondent is therefore not only using Complainant's trademark LILLY in the disputed domain name lillykleid.com, but is also using the trademark in connection with its business name "LILLY BRAUT ONLINE SHOP".
Furthermore, it appears Respondent is using the marks PASSIONS BY LILLY, DIAMONDS BY LILLY, and PUREWHITE BY LILLY in connection with the marketing of the bridal wear. Complainant has registered the trademarks PASSIONS <w> (EUTM 004931812 and EUTM 01 1963469), DIAMONDS BY LILLY <w> (EUTM 012808309), and pure white BY LILLY <fig> (EUTM 009055013).
Respondent is therefore using similar or confusingly similar variations of these trademarks on the website of the disputed domain name.
Further, Respondent is using Complainant's copyright protected images of models in bridal wear on the website of the disputed domain name, which images are also used by Complainant on the websites lilly.dk and lilly.eu, which are screen dumps with examples of the pictures used by Respondent that are similar to those of Complainant's. Furthermore, Respondent refers to specific item numbers in relation to each picture of the bridal wear. "CR" refers to the fact that the colour of the dress is cream. These item numbers are identical to the item numbers used by Complainant.
The above clearly shows that Respondent is passing itself off as Complainant by using Complainant's trademarks, copyright protected images of the bridal wear, and by referring to item numbers for each bridal wear that are identical to the item numbers used by Complainant. The fact that Respondent is passing itself off as Complainant and is misleading consumers into believing that Complainant's authentic bridal wear is shown on the disputed domain name's website is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
Furthermore, the fact that Respondent uses the same trademarks and copyright protected pictures as Complainant makes it difficult for internet users to realize that Respondent's site is not an official site sponsored by Complainant. Panels have determined that imitating the look and feel of a complainant's web offerings, cannot establish rights and legitimate interests. Reference is made to Kmart of Mich., Inc. v. Cone, FA 655014 (NAF, Apr. 25, 2006) where the Panel found the respondent's attempt to pass itself off as the complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant's website". See also Dream Horse Classifieds v. Mosely FA 381256 (NAF, Feb. 8, 2005), finding that the respondent's attempt to pass itself off as the complainant by implementing a colour scheme identical to the complainant's was evidence that the respondent lacked rights and legitimate interests in the domain name. see also Am. Int'l Group, Inc. v. Busby, FA 156251 (NAF, May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online was a blatant unauthorized use of the complainant's mark and was evidence that the respondent had no rights or legitimate interests in the disputed domain name.
Moreover, the fact that Respondent uses the trademark LILLY in the disputed domain name is not a legitimate non-commercial or fair use of the disputed domain name, since Complainant has not authorized, licensed, or otherwise permitted Respondent to use this trademark either in the disputed domain name nor in the business name. Reference is made to LEGO JURIS AIS v. Ningbo LEGO Culture Communication Co., Ltd, D 2013-1208 (WIPO, Aug. 28, 2013), where the respondent had used the famous LEGO trademark in the disputed domain name <legole.net> without authorization from the complainant, which the Panel found was not a legitimate fair use. Furthermore, reference is made to Hoffmann-La Roche Inc. v. Rajendra Mumbai, D 2008-0674 (WIPO, June 23, 2008), where the complainant had exclusive rights to the trademark ACCUTANE and no license, permission, authorization, or consent was granted to use ACCUTANE in the disputed domain name. The Panel found that the respondent had no rights or legitimate interests in the domain name.
Consequently, Complainant believes to have satisfied Paragraph 4(a)(ii)of the UDRP.
[c] The domain name was registered and is being used in bad faith (UDRP Rule 3(b)(ix)(3); UDRP Policy 4(a)(iii)).
Respondent's choice of a confusingly similar variation of Complainant's trademark LILLY and copyrighted materials on the website lillykleid.com supports a finding that Respondent was specifically targeting Complainant's business partners, products, and customers, showing actual knowledge of Complainant's brand LILLY and therefore also the registered mark.
The facts of the case clearly demonstrate that Respondent was well aware of Complainant, Complainant's mark, and the goodwill surrounding that mark when it registered the disputed domain name. Registration of a domain name with actual knowledge of a trademark holder's rights in a mark is strong evidence that the domain name was registered in bad faith, as found by the Panel in Amer. Int'l Group, Inc. v. Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (NAF, May 30, 2003). See also Albrecht v. Natale , FA 95465 (NAF, Sept. 16, 2000), finding registration in bad faith as there was no reasonable possibility and no evidence that the domain name was selected at random, since it fully incorporated Complainant's name.
The disputed domain name lillykleid.com redirects internet users to a website that copies the layout, look and feel, and copyrighted images from Complainant's official website. Respondent's attempt to pass itself off as Complainant creates a strong likelihood of confusion as to Complainant's association with, or sponsorship of, the resolving site and pictures of bridal wear. The fact that Respondent's primary purpose appears to be to disrupt Complainant's customers is evidence of bad faith use. See St. Thomas University, Inc. v. Silvana Carpintero I Sky Gaming LLC, FA 1609001692967 (NAF, Oct. 24, 2016), finding that the fact that Respondent had produced a counterfeit version of Complainant's website at <stu.edu>, including Complainant's septagram logo design, to mislead Complainant's customers (and potential customers) constituted bad faith registration and use. See also Am. Int'l Group, Inc. v. Busby, FA 156251 (NAF, May 30, 2003), where the Panel found that the disputed domain name was registered and used in bad faith, where the respondent hosted a website that "duplicated Complainant's mark and logo, giving every appearance of being associated or affiliated with Complainant's business". Reference is also made to World Wrestling Fed 'n Entm't, Inc. v. Ringside Collectibles, 02000-1306 (WIPO, Jan. 24, 2001), concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith, because the name resolved to a website that the complainant's customers were likely to confuse with the source of the complainant's products, especially because of the respondent's prominent use of the complainant's logo on the site.
Consequently, Complainant believes to have satisfied Paragraph 4(a)(iii) of the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the LILLY mark based on its registration with European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 000580282, registered Aug. 31, 1997). Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum February 18, 2015) (“The Panel concludes that Complainant’s valid registration of LYCA with [EUIPO] sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”). Policy ¶4(a)(i) does not require Complainant to register its mark in Respondent’s home country. Complainant is only required to show some rights some where to satisfy Policy ¶4(a)(i). Complainant’s registration sufficient to establish rights in its mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <lillykleid.com> is confusingly similar to Complainant’s mark. The domain name includes Complainant’s mark in its entirely with the addition of the descriptive word “kleid”—which is German for “dress”—and the gTLD “.com.” There is no space between lilly and kleid. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. The addition of generic or descriptive words does not adequately distinguish a domain name from a complainant’s mark in Policy ¶4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Respondent’s domain name is confusingly similar to the LILLY mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in <lillykleid.com> because it is not commonly known by the disputed domain name. Respondent has not been authorized by Complainant to use the LILLY mark for any purpose. The WHOIS information of record identifies Respondent as “yiyi chen.” There is no obvious relationship between Respondent’s name and the disputed domain name. WHOIS information and the lack of information contrary information from Respondent is an adequate basis for determining Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Where there is no evidence in the record to indicate Respondent had been authorized to register a domain name using a complainant’s mark adequately supports a finding Respondent lacks rights or legitimate interests in a disputed domain name. See Navistar Int’l Corp. v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s passing off behavior evidences a lack of rights or legitimate interests in <lillykleid.com>. Using a domain name to pass off as someone else is neither a bona fide offering of goods or services nor a noncommercial or fair use under the Policy. This means Respondent has no rights or legitimate interests in the disputed domain name. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Respondent’s <lillykleid.com> uses Complainant’s marks and copyright protected images. Respondent uses item numbers to refer to certain products that are identical to the item numbers assigned to the products by Complainant. This behavior constitutes an attempt to pass itself off as Complainant. Therefore, Respondent has no rights or legitimate interests in the disputed domain name because it is not using the domain for a bona fide offering of goods or services under Policy ¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain name in bad faith by creating a strong likelihood of confusion as to Complainant’s association with or sponsorship of the resolving site. Confusing Internet users for commercial gain is sufficient evidence of Policy ¶4(b)(iv) bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Respondent’s <lillykleid.com> redirects Internet users to a website that copies the layout, look and feel, and copyrighted images from Complainant’s official website in an attempt to sell products. The Panel may agree with Complainant’s claim and find Respondent engaged in bad faith registration and use under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the LILLY mark. This seems obvious in light of Respondent’s actual use of the domain name. Respondent chose a confusingly similar variation of Complainant’s mark. Respondent put copyrighted materials on Respondent’s website. Respondent just happens to use Complainant’s dress numbers. This makes it pretty clear Respondent actually knew about Complainant’s mark and rights. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lillykleid.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, January 5, 2017
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