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Lillian Vernon Corporation v. Horoshiy, Inc. [2004] GENDND 1189 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lillian Vernon Corporation v. Horoshiy, Inc.

Case No. D2004-0611

1. The Parties

The Complainant is Lillian Vernon Corporation, Deleware Corporation, Rye, New York, United States of America, represented by Salter & Michaelson, United States of America.

The Respondent is Horoshiy, Inc., Horoshiy, Curacao, Netherlands Antilles, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <lillieskids.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2004. On August 5, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On August 10, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2004.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on September 8, 2004. 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 Lillian Vernon Corporation from Rye, New York, United States of America. Lillian Vernon is a national (U.S.) catalog and online retailer of gifts, houseware, gardening, seasonal, and children's products. Lillian Vernon Corporation owns service mark and trademark LILLY’S KIDS and uses it in connection with mail order services in the field of children’s toys, games, furniture and clothing.

The Respondent registered the disputed domain name <lillieskids.com>. The Respondent used the domain name at one time to provide links to explicit pornographic content. At the time of this proceeding, there were still signs of pornographic content on the page to which the domain name resolves.

5. Parties’ Contentions

A. Complainant

The Respondent registered and is using a domain name that is identical and confusingly similar to Complainant's mark. The Respondent is using the disputed domain name to provide links to explicit pornographic websites.

The Complainant’s mark is well-known and has been widely used by the Complainant in connection with its service. The Respondent could not have been unaware of the Complainant’s rights in the mark. The disputed domain name is identical and confusingly similar to the Complainant’s mark and was registered and used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.A.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.A.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, 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.

Before making its finding, the Panel notes the poor quality of the Complaint and materials filed by the Complainant. The Panel had to verify some of the information by visiting links and websites referred to in the Complaint, which it has the discretion, but clearly no obligation to do. The Complaint was unecessarily close to the point where it would have been rejected for lack of sufficient evidence. However, as will be discussed below, the facts of this case are clearly of such nature as to warrant this Panel’s consideration.

1. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the wording of paragraph 4(a)(i) in regard to trademark or service mark has been interpreted by numerous Panels in the past to include both registered marks and common law marks. The Complainant’s submission states that the Complainant is the owner of several service marks and trademarks for the mark “LILLY’S KIDS” as well as several pending applications for service mark and trademark for the mark “LILLY’S KIDS”. Therefore, the Panel finds that the Complainant has rights in the mark “LILLY’S KIDS”.

As to the second question, the Panel finds that the domain name is identical and confusingly similar to the Complainant’s mark. The disputed domain name <lillieskids.com> consists of the words “LILLIES” and “KIDS” and the generic top-level domain reference ‘.com’. The only difference between the Complainant’s mark LILLY’S KIDS and the disputed domain name <lillieskids.com> is different spelling of the first word “LILLY’S”.

As a rule, addition of the generic top-level domain (gTLD) reference, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

Numerous Panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark (“typo-squatting”), by reversing the order of or substituting letters in a mark. See, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman's Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Playboy Enterprises International Inc. v. SAND WebNames - - For Sale, WIPO Case No. D2001-0094; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Ziegenfelder Co. v. VMH Enterprises, Inc., WIPO Case No.D2000-0039, Sunglass Hut Corporation v. AAANET, INC., N.A.F. Case No. FA0003000094370. Furthermore, the disputed domain name and the Complainant’s mark are phonetically identical. See Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123, VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303.

Consequently, the Panel finds that the disputed domain name <lillieskids.com> is identical and confusingly similar to Complainant’s mark LILLY’S KIDS.

2. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's rights in the mark LILLY’S KIDS. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(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.

There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark. Users who visit the disputed domain name were offered links to explicit pornographic websites. It has been established by numerous Panels in the past that providing links to pornographic websites, at least without any additional fact to support a finding of legitimate interest, does not constitute a bona fide offering of goods or services. See Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750; Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501; Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Goodrich Corporation v. bfg-fus.com, WIPO Case No. D2003-0477; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

3. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name 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 Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 Respondent's website or location or of a product.

There is evidence of the situation described in paragraph 4(b)(iv). The relevant facts are mentioned below.

The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainant’s marks, the domain name is identical and confusingly similar to the Complainant’s mark LILLY’S KIDS. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. It is difficult to conceive that Respondent chose to register the domain name <lillieskids.com> by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainant’s marks.

The Panel finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lillieskids.com > be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Date: September, 16 2004