Westmore · UDRP DecisionNlyscandinavia.com
The Panel ordered transfer of <nlyscandinavia.com>. It found the domain confusingly similar to the Complainant’s NLY mark because it incorporated the mark in full with the geographically descriptive term “scandinavia.” The Complainant made an unrebutted prima facie showing that the Respondent lacked rights or legitimate interests. Bad faith was established because the Respondent was unlikely to have been unaware of the earlier NLY rights and used the domain for a pay-per-click website linking to the Complainant’s competitors for commercial gain through likely confusion.
The timeline behind nlyscandinavia.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind nlyscandinavia.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a conventional trademark-plus-geographic-term and pay-per-click fact pattern. Complete incorporation of NLY remained confusingly similar despite adding “scandinavia,” while competitor-directed commercial links supported bad faith under paragraph 4(b)(iv). The case also shows that respondent default does not eliminate the Complainant’s burden, although an unrebutted prima facie case can satisfy the second element.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NLY Scandinavia AB v. Ready Asset – Nish Patel Case No. D2014-0473 1. The Parties Complainant is NLY Scandinavia AB of Borås, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden. Respondent is Ready Asset - Nish Patel of Xiamen, China. 2. The Domain Name and Registrar The disputed domain name <nlyscandinavia.com> is registered with Above.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 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 Complainant on April 1, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 2, 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 Respondent of the Complaint, and the proceedings commenced on April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2014. On April 29, 2014, the Center sent a communication to the Registrar to request the restoring of the registrant information in the WhoIs. On May 2, 2014, the Registrar confirmed that “the contact details have been adjusted back and the domain is still under the legal holding account.” On the same date, the Center noted that it still appeared in the WhoIs information the incorrect registrant details and informed the Registrar that given the Registrar’s response confirmation, the Center would proceed under the assumption that Nish Patel is the registrant of the disputed domain name. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 2, 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. According to paragraph 10(c) of the Rules, the decision due date was extended to May 26, 2014. 4. Factual Background Complainant is a Swedish company that sells fashion items online and ships them internationally. All products sold to women are sold at “www.nelly.com” and products directed to men are sold at “www.nlyman.com”. The Complainant owns the following trademarks: NLY – Community Trademark Reg. No. 010495943 with an application date of December 15, 2011; NLY – Community Trademark Reg. No. 010642023 with an application date of February 14, 2012; NLY TREND – Community Trademark Reg. No. 010495802 with an application date of December 15, 2011; and NLY SHOES- Community Trademark Reg. No. 010495901 with an application date of December 15, 2011. The disputed domain name was registered by Respondent on March 24, 2013. 5. Parties’ Contentions A. Complainant Complainant alleges that it has trademark rights in the NLY, NLY TREND and NLY SHOES marks as evidenced by the above listed registrations, that the disputed domain name is confusingly similar to its marks and that the geographic term “Scandinavia” does not distinguish the disputed domain name. Complainant states that Respondent has no rights or legitimate interests in the disputed domain name since Respondent is not a licensee of the Complainant, does not have permission to use the disputed domain name, has not provided evidence that it is commonly known by the domain name and is not making a legitimate non-commercial or fair use of the disputed domain name. Specifically, Complainant states that the “site is being used for hosting a number of sponsored links with some of the links to sites with adult online dating and some to competitors of the Complainant who also sell fashion products. This suggests that the domain name was registered to commercially profit from misleading consumers.” Regarding registration and use in bad faith, Complainant states that it was bad faith for the Respondent to have registered the disputed domain name since Respondent must have been aware of Complainant’s registration of NLY and its use of the NLY trademark. The disputed domain name contains Complainant’s company name in its entirety, which also suggests that Respondent had knowledge of Complainant’s rights prior to registering the disputed domain name. Respondent is using the disputed domain name in bad faith since Respondent is using sponsored links on the website in order to commercially profit from the Complainant’s mark. Some of the links are to competitors of Complainant who are offering fashion items for sale. Further, a cease and desist letter was sent to Respondent on February 19, 2014 and no answer was received. After the letter was sent, the contact information in the WhoIs data changed. B. Respondent The Respondent did not file a Response to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Given Complainant’s trademark registrations and its online uses of its NLY registrations, the Panel finds that Complainant has trademark rights in the NLY mark. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s NLY mark since it incorporates Complainant’s entire registered trademark with the addition of only the geographically descriptive term “scandinavia”. Therefore, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc ., WIPO Case No. D2010-1141 . The evidence of record supports the Complainant’s unrebutted allegations and, accordingly, finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent did not contest Complainant’s allegations of bad faith registration and use. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on March 24, 2013, since Complainant had trademark registrations in the NLY mark prior to said date and was using the marks on its website prior to the domain name registration. The evidence shows that Respondent’s website has been used as a pay-per-click site with links to Complainant’s competitors’ websites. Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy. For the reasons set forth above, the Panel finds that Respondent registered and used the disputed Domain Name in bad faith. 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 <nlyscandinavia.com> be transferred to the Complainant. Lawrence K. Nodine Sole Panelist Date: May 26, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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