Milly LLC of New York, New York, just won control of the domain name Milly.com in a UDRP which was owned by Mrs. Jello, LLC which of course the company owned by the late Igal Lichtman.
Sadly no one responded to the UDRP on behalf of Mrs. Jello, LLC, although someone apparently rejected an offer presented sometime this year by the Complaintant and changed the parked page from adult links to links to the Complainant
Milly LLC has been using the domain name MillyNy.com for its website since 2001
Here are the relevant facts and findings of the three member panel:
“”Complainant has used the trademark MILLY (the “MILLY Mark”) in the United States since at least as early as 2001, and has since used the MILLY Mark in many other countries.
Complainant owns six United States trademark registrations for the MILLY Mark, as well as United States registrations for the MILLY Mark (stylized) and the MILLY formative marks MILLY CABANA, MILLY MINIS and MILLY NY.
Complainant also owns trademark registrations for the MILLY Mark in Turkey, Malaysia, the United Arab Emirates, Egypt, Kuwait, Canada, Japan, the Republic of Korea, Bahrain, Australia, Singapore, the Russian Federation and Switzerland. In addition, C
The complainant has and has operated the MILLY website at millyny.com this address since 2001. C
Complainant also purchases keywords and adwords so that it its website appears as a sponsored ad in Google search results.
For many years, the Disputed Domain Name resolved to a pornographic website.
In February of 2014, due to the continued harm caused to Complainant from Respondent’s use of the Disputed Domain Name for pornographic purposes, Complainant attempted to purchase the Disputed Doman Name, but Complainant’s offer was rejected. Following the rejection of Complainant’s offer, the Disputed Domain Name ceased to resolve to a pornographic website, and instead resolve to a parked domain for a website that posts sponsored links to other websites, almost all of which link to “www.millyny.com”, its competitors’ and other websites that sell clothing, handbags and accessories.
Respondent has not contested these allegations or offered any explanation of why it might have rights or legitimate interests in the Disputed Domain Name. The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The factual record as presented in this proceeding is sparse regarding the original registration of the Disputed Domain Name and its early uses.
The Panel notes that the Registrar’s reply to the Center’s request for information states the domain name record was created on December 2, 1999 but is silent as to the date this Respondent registered or acquired the Disputed Domain Name.
The Disputed Domain Name contained little or no content for some undefined period of time. The Disputed Domain Name was then re-directed to a pornographic website and contained this content for a significant period of time.
After rejecting Complainant’s offer to purchase the Disputed Domain Name in 2014, Respondent re-directed the Disputed Domain Name to a pay-per-click (“PPC”) website focused on the fashion industry including Complainant’s products and those of Complainant’s competitors.
Respondent has not contested Complainant’s allegations surrounding registration and use of the Disputed Domain Name.
Both the former and present use of the Disputed Domain Name show Respondent’s intent, namely, opportunistic bad faith evidenced by Respondent’s knowing abuse of Complainant’s mark. Respondent, a sophisticated domainer, had Complainant’s business and the MILLY Mark in mind when it re-directed the Disputed Domain Name to a PPC website and intended to attract confused consumers by hosting links targeting Complainant’s competitors for commercial gain.
Without the need to discuss various approaches referenced by Complainant, the Panel finds that the present evidence establishes the necessary elements of bad faith under the Policy, paragraph 4(b)(iv). The fact that Respondent may have registered the Disputed Domain Name prior to Complainant’s acquisition of trademark rights does not per se preclude a finding of bad faith under the circumstances of this case for the purposes of paragraph 4(a)(iii).
The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to Policy, paragraph 4(a)(iii).
I was the original registrant and I traded that domain to Ms. Jello several years ago. I actually offered to buy/trade to get it back now that I operate MillyBitcoin.com but it was right around the time he passed away and I never got a reply.
If this domain can be recovered via lawsuit I would still trade for it. I have a registered TM for “Milly Bitcoin” so I don’t think the Milly TM would be an issue for me.
I am surprised this was a 3 member panel as usually complainants seem to go for 1 panelist. Noted also they call “Mrs Jello” a “sophisticated domainer” (hmm that sounds familiar !) in a disparaging way as if it is a crime to even register more than 1 domain. @help.org, not sure how you could get involved in lawsuit at this stage with no interest in the domain ?
Nat Cohen says
Milly.com was originally registered in 1999, before the trademark owner started using its trademark. The panel therefore transferred the domain contrary to UDRP requirements that there be evidence that the domain was registered in bad faith to target the Complainant.
WIPO assigned two panelists, RIchard Page and Andrew Christie, to this dispute who are well known for adopting a discredited minority interpretation of the UDRP that they believe allows them to disregard the “registered in bad faith” requirement. Strange that WIPO would assign two such panelists to a dispute that turns on this exact issue.
Andrew Allemann had this to say about Christie:
“If you ever need to point a finger at UDRP panelists that are trying to pervert the entire system, one of those should be Andrew Christie.
I awarded Christie a “Domain Dunce” award in 2009 for his attempts to change the plain language and thousands of cases of precedent of UDRP. He did it by circularly referencing his own cases.
David Castello made this comment about Richard Page, in which he quotes someone else’s comment as well-
After reading about the LomaLinda.net and LomaLinda.org decisions, I felt a closer review of Mr Richard W Page was warranted. I did a quick search and was immediately met with domainers on forums calling this guy every name in the book.
From DNForum in 2007: “For some valuable domains ALWAYS go for 3-member panel. The biggest SOB panelist is Richard W. Page. He is an example of why one should go for 3-member panel. Because to get this panelist = you lost the domain. Wouldn’t surprise me one day some “accident” happens to this SOB when he strips of valuable generic domain someone who does not like to get f**ked…”
After digging a little deeper I believe this guy represents a genuine problem for domainers. He was the sole dissenting panelist on the SuperSupplements.com decision (Respondent won), he handed BudgetSaver.com to Budget$aver, Crew.com to J Crew International, IHateGunBroker.com to Gun Broker…and those are just the first few I checked.
Domain Observer says
Judging from the fact that the domain was used as a pornographic website for quite a long time from the beginning, I don’t think it was acquired/registered in bad faith.
The UDRP rules no longer seem to apply to decisions and they are making up any old excuses to take domains from “Domainers” as the “Corporate World” hates them because they have something that they want (for free). I have NEVER used any of my domains for Pay Per Click or any other commercial purpose but still I have been told I have registered and used domains in bad faith. Only thing to do is make sure you take matter to Court rather than wait for UDRP decisions.
The majority of unfair or unjust decisions against the respondent are considerably fewer than the proper ones. Daily, the WIPO/NAF reports are full of decisions regarding obvious tm violations.
Michael Berkens says
Well moving it from Porn to PPC page full of links to the TM holder was fatal
Domain Observer says
Yes, but it is bad faith use, not bad faith registration. IMO. Both elements should be fulfilled, shouldn’t it? The panelists had no idea when the domain was acquired by the Respondent. It could have been acquired by the Respondent before the Complainant obtained its trademark.
Domain Observer says
“Bad faith use” mentioned in my comment above does not include any PPC ads provided by advertising companies (such as Google,etc) via their own algorithms. Just to clarify my opinion. Thanks.
Igal was a great mentor to me and his estate clearly needs some expert advice over predatory UDRPs such as this one.
In the domain investing link that Nat Cohen kindly refers to above, it states that Geo Locations are NOT trade markable . Unfortunately, or fortunately depending what angle you are coming from, this is not entirely correct. Infact I myself have trade marks for geo locations and I know of others, although I do not intend using them to attack…
@johnuk – What I am saying is if the domain can be recovered via a lawsuit from whoever is in charge of Ms. Jello’s estate I would be interested in obtaining the domain. There is nothing I can do from my end and I could not get involved with the lawsuit. I regged that domain around 1998 originally. I traded it in 2006.
@HELP.org Ah ok in that case you should move quickly as the complainants will be chomping at the bit to get it transferred before someone does issue a Court proceeding. Maybe try calling them and offer to fund litigation in return for your being sold domain ?.
Michael Berkens says
Mrs Jello, LLC has 10 days to file a federal lawsuit to stop the transfer
I’m curious how Igal’s family decided that ponying up the extra cost for a 3 member panel was a good idea (it was) yet failing to file a response of any kind was a good plan also (it wasn’t).
Regardless of the bad panelists assigned – even though they could have had a say in that- the respondents failed to actually “respond”. This gives the panelists permission to accept, at face value, any/all of the Complainant’s assertions – no matter how egregiously false they may be. That is just UDRP 101.
What are the chances the family will actually follow through with a Federal filing when they couldn’t be bothered to even form a response to the initial UDRP?
Obviously, the three member panel was requested by the Complainant.