Lord & Taylor LLC v. Privacy.co.com, Inc Privacy ID# 937761
Claim Number: FA1807001796646
Complainant is Lord & Taylor LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Privacy.co.com, Inc Privacy ID# 937761 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lordntaylor.com>, registered with Sea Wasp, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2018; the Forum received payment on July 13, 2018.
On July 16, 2018, Sea Wasp, LLC confirmed by e-mail to the Forum that the <lordntaylor.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lordntaylor.com. Also on July 18, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
i) Complainant, Lord & Taylor LLC, markets and sells a variety of clothing for men, women, and children; as well as handbags, accessories, jewelry, makeup, and home goods under the LORD & TAYLOR mark at retail stores and through its website at <lordandtaylor.com>. Complainant has rights in the LORD & TAYLOR mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 222,001, registered Dec. 21, 1926). See Compl. Annex E. Respondent’s <lordntaylor.com> is confusingly similar to Complainant’s LORD & TAYLOR mark as it incorporates the mark in its entirety and is differentiated only by the substitution of the “&” for the phonetically similar letter “n” and the addition of the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <lordntaylor.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the LORD & TAYLOR mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a webpage containing hyperlinks to competitors of Complainant. Further, Respondent uses the disputed domain name to engage in typosquatting.
iii) Respondent registered and is using the <lordntaylor.com> domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, users to the disputed domain name’s website which hosts competing hyperlinks. Finally, Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in the LORD & TAYLOR mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name <lordntaylor.com> domain name was registered on August 30, 2000.
2. Complainant has established rights in the mark LORD & TAYLOR through the registration with the USPTO (e.g. Reg. No. 222,001, registered Dec. 21, 1926).
3. The disputed domain name’s resolving website shows hyperlinks to competitors of Complainant such as Macy’s.
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."
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.
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(f), 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 (Forum July 31, 2000) (holding that the 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.”).
Complainant claims rights in the LORD & TAYLOR mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the LORD & TAYLOR mark (e.g. Reg. No. 222,001, registered Dec. 21, 1926). See Compl. Annex E. Therefore, the Panel holds that Complainant’s registration of the LORD & TAYLOR mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <lordntaylor.com> domain name is confusingly similar to Complainant’s LORD & TAYLOR mark as it incorporates the mark in its entirety and is differentiated only by the substitution of the “&” for the phonetically similar letter “n” and the addition of the “.com” gTLD. Although not mentioned in Complainant’s contentions, the spaces between the words are also eliminated. Changes to a complainant’s mark such as a substitution of a phonetically similar letter, the addition of a gTLD, and the elimination of spaces between words do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). Therefore, the Panel determines the <lordntaylor.com> domain name is confusingly similar to the LORD & TAYLOR mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <lordntaylor.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <lordntaylor.com> domain name lists the registrant as “Privacy.co.com, Inc Privacy ID# 937761” and no information on the record indicates that Respondent is authorized or licensed to use the LORD & TAYLOR mark. See Amend. Compl. Annex A. The Panel therefore finds that Respondent has not been commonly known by the <lordntaylor.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues Respondent fails to use the <lordntaylor.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent uses the disputed domain name to host hyperlinks to competitors of Complainant. Use of a disputed domain name to host competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides a screenshot of the disputed domain name’s resolving website which shows hyperlinks to competitors of Complainant such as Macy’s. See Compl. Annex. H. Therefore, the Panel may agree that Respondent failed to use the <lordntaylor.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Complainant also argues Respondent lacks rights and legitimate interests in the <lordntaylor.com> domain name because of Respondent’s act of typosquatting. Typosquatting provides evidence that a respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Complainant contends Respondent engages in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s <lordandtaylor.com> website but mistakenly misspell Complainant’s mark by typing the letter “n” instead of the word “and.”
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name per ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <lordntaylor.com> domain name in bad faith. Specifically, Complainant argues Respondent intentionally attempts to attract, for commercial gain, users to the disputed domain name’s website which hosts competing hyperlinks. Use of a domain name to intentionally attempt to attract, for commercial gain, users to a disputed domain name’s website which hosts competing hyperlinks can demonstrate bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The Panel recalls that Complainant provides a screenshot of the disputed domain name’s resolving website which shows hyperlinks to competitors of Complainant such as Macy’s. See Compl. Annex. H. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lordntaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 13, 2018
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