The Complainant is TL IP Company Pty Ltd. of Sydney, Australia, represented by Media Arts Lawyers, Australia.
The Respondent is Melanie Smith, Tiger Lily Floral Design of Brisbane, Australia.
The Disputed Domain Name <tigerlily.com.au> (the “Disputed Domain Name”) is registered with NetRegistryPty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2018, NetRegistryPty Ltd. 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 August 24, 2018 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 August 27, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 28, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2018.
The Center appointed John Swinson as the sole panelist in this matter on September 21, 2018. 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.
The Complainant is TL IP Company Pty Ltd, a company incorporated in Australia. According to the Complaint, the Complainant is a household name for its swimwear brand “Tigerlily” in Australia and has a reputation both within Australia and globally. The Complainant has operated its business since 2000 and operates 26 Tigerlily Swimwear stores across Australia.
The Complainant owns several registered trade marks in Australia for TIGER LILY, the earliest of which is Australian registered trade mark number 784399, filed on February 2, 1999 and entered on the register on October 6, 1999 (the “Trade Mark”).
The Respondent is Tiger Lily Floral Design. The Respondent did not file a Response, and consequently little information is known about the Respondent. According to the Complaint, the Respondent registered the Disputed Domain Name sometime prior to 2005. The Complainant has provided evidence that the Respondent is no longer operating a business under the name “Tiger Lily Floral Design” and the registered business name “Tiger Lily Floral Design” was not renewed, and therefore cancelled, in 2005.
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has long established rights in the Trade Mark. The Disputed Domain Name incorporates the entire Trade Mark and is therefore identical to the Trade Mark.
Rights or Legitimate Interests
The Respondent registered its business name on May 10, 1999. However, on August 12, 2005 the Respondent’s business name was deregistered. Between June 11, 2008 and October 24, 2008 the website at the Disputed Domain Name was noted as being “Under Construction”. From about April 12, 2009 to August 14, 2018 the website at the Disputed Domain Name displayed an error message. A Google search shows that the Respondent’s business is permanently closed.
The Respondent does not hold any registered trade mark rights in TIGERLILY and the Respondent is not operating a legitimate business associated with the Disputed Domain Name. Therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Registered or Used in Bad Faith
The Complainant recognizes that the Respondent had rights to register the Disputed Domain Name between May 10, 1999 and August 12, 2005. However, since the Respondent has ceased to operate the business and has not renewed the business name, the Respondent’s representations and warranties as to the connection of the Disputed Domain Name to a trading name at each subsequent renewal were false and misleading and in breach of Schedule C of the Domain Name Eligibility and Allocation Rules for the Open 2LDs.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or has subsequently been used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059).1 However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview”)). In this case the Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional words have been added.
In this case, the generic Top-Level Domain “.com” and the country code Top-Level Domain “.au” do nothing to detract from this similarity. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant has provided evidence that there has not been any active website at the Disputed Domain Name for approximately nine years.
- The Complainant has not licensed or otherwise authorised the Respondent to use the Disputed Domain Name.
- Whilst the Respondent may have been commonly known by the Disputed Domain Name at one point, she no longer appears to be running a business associated with the Disputed Domain Name. The Complainant has provided evidence that the Respondent’s business name, Tiger Lily Floral Design, was deregistered in 2005. As such, under the Domain Name Eligibility and Allocation Rules for the Open 2LDs the Respondent is not eligible to hold the Disputed Domain Name. (See Supre Pty Ltd v. Paul King, WIPO Case No. DAU2004-0006).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith. While the Policy sets out instances of bad faith registration and use, these circumstances are not exhaustive.
Unlike the equivalent provision in the UDRP, the word “and” is not used in the Policy and therefore the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise. In this case there is no evidence that the Respondent initially registered the Disputed Domain Name in bad faith, and the Complainant admits that the Respondent had rights to register the Disputed Domain Name between May 10, 1999 and August 12, 2005. However, after this time the Respondent’s business name was deregistered.
Under 4(b)(v) of the Policy a domain name will have been registered and used in bad faith where the representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner. In this case, the Respondent does not operate as an Australian registered company and is no longer the owner of an Australian business name. The Panel has not been provided with any evidence of registered trade marks owned by the Respondent, corresponding with the Disputed Domain Name. It is open for the Panel to conclude that the Respondent no longer meets the eligibility requirements set out in Schedule C of the au Domain Name Eligibility and Allocation Rules for the Open 2LDs.
The Complainant has been operating for 18 years and has developed a strong reputation in Australia, becoming a household name. Previous panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the relevant domain name, the likelihood of confusion is such that bad faith may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein).
In the circumstances, the Respondent’s passive holding of the Disputed Domain Name does not prevent a finding of bad faith. In light of the above, and in the absence of a Response and any evidence rebutting bad faith use, the Panel finds that the Complainant has succeeded on the third element of the Policy.
For all 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, <tigerlily.com.au>, be transferred to the Complainant.
Date: October 5, 2018
11. The Panel notes that the Policy is largely based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), and accordingly the Panel will refer to its jurisprudence where instructive.
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