Lillian Vernon Corporation v. Domain Proxies, LLC
Claim Number: FA0709001082414
Complainant is Lillian Vernon Corporation (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lilianvernon.com>, registered with DotRegistrar.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2007.
On September 28, 2007, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <lilianvernon.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lilianvernon.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Lillian Vernon is a 56-year-old national catalog and online retailer that markets gift, household, children’s, and fashion accessory products.
Complainant regularly publishes three catalog titles: Lillian Vernon, Lilly’s Kids and The Big Sale Catalog.
Last year, Complainant mailed more than 80 million catalogs in 17 editions.
Complainant registered the LILLIAN VERNON service mark with the United States Patent and Trademark Office (“USPTO”) on December 5, 1978 (Reg. No. 1,108,270).
Respondent is not affiliated with or sponsored by Complainant, and thus is not authorized to use the LILLIAN VERNON mark
Respondent registered the <lilianvernon.com>
domain name
on February 19, 2004.
Respondent is using the domain name to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with Complainant’s business.
Respondent’s <lilianvernon.com> domain name is confusingly similar to Complainant’s LILLIAN VERNON mark.
Respondent does not have any rights to or legitimate interests in the <lilianvernon.com> domain name.
Respondent registered and uses the <lilianvernon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent 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."
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(e), 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 (Nat. Arb. Forum July 31, 2000) (holding that a 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s service mark registration with the USPTO establishes its rights to the LILLIAN VERNON mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <lilianvernon.com>
domain name
is confusingly similar to Complaiant’s LILLIAN VERNON mark. The disputed domain name differs from Complainant’s
mark by the exclusion of a single letter “l”. This exclusion is insufficient to distinguish
the disputed domain name from the Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try
Harder &
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights to and legitimate interests in the <lilianvernon.com> domain name. Complainant has the burden of establishing a prima facie showing that Respondent has no rights to or legitimate intersts in the disputed domain name. Once Complainant has met this intitial burden, the burden of proof shifts to Repondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant
has made a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain
name. And, because Respondent has
failed to respond, we may presume that Respondent has no rights or legitimate
interests in the <lilianvernon.com> domain name. See BIC Deutschland GmbH & Co. KG v.
By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name.
See also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name because that respondent never submitted a response or provided a panel with evidence to suggest otherwise). However, the Panel will now examine the record to determine if there is any basis for determining that Respondent has rights under Policy ¶ 4(c).
In this connection, we first note that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <lilianvernon.com> domain name. Further, Respondent makes no effort to contrvene Complainant’s allegation that Respondent is not affiliated with or sponsored by the Complainant, and thus is not authorized to use the LILLIAN VERNON mark. Indeed, Respondent’s WHOIS information does not indicate that Respondent has ever been commonly known by the <lilianvernon.com> domain name. We are therefore comfortable in concluding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark).
Moreover, it appears from the evidence that Respondent is not using the disputed domain name for a noncommercial or fair use, but is instead attempting to benefit commercially from its use of Complainant’s LILLIAN VERNON mark in the disputed domain to redirect Internet users to websites featuring links to third-party websites, including some competing with the business of Complainant. This is not a bona fide use pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <lilianvernon.com>
domain name
to gain commercially by redirecting Internet users to Complainant’s competition
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that a respondent acted in bad faith by
attracting Internet users to a website that competed with a complainant’s
business).
Moreover, Respondent’s <lilianvernon.com> domain name, which which we
have concluded is confusingly similar to Complainant’s LILLIAN VERNON mark, is
likely to confuse customers searching for Complainant’s products. Therefore, Respondent’s registration and use
of the <lilianvernon.com> domain name is in bad faith purusant to
Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <lilianvernon.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 6, 2007
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