Lord & Taylor IP LLC v. xiao hong wang
Claim Number: FA2205001997500
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is xiao hong wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lordentaylor.com>, registered with Gname 043 Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2022; the Forum received payment on May 23, 2022.
On May 26, 2022, Gname 043 Inc confirmed by e-mail to the Forum that the <lordentaylor.com> domain name is registered with Gname 043 Inc and that Respondent is the current registrant of the name. Gname 043 Inc has verified that Respondent is bound by the Gname 043 Inc 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 June 1, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 21, 2022 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@lordentaylor.com. Also on June 1, 2022, the Chinese and English language 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 June 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Complaint was submitted in English. The Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
The Deficiency Notice is explained by the facts that (i) under Rule 11(a), the language of the proceedings is Chinese since the registration agreement is in Chinese, and (ii), under the Rules the Panel has discretion to allow the proceedings to continue in a language other than Chinese if, for example, it is shown that a respondent can read and understand that other language and it is expeditious for the matter to so proceed.
Complainant elected to modify the Complaint. In the modified Complaint it (wrongly) stated that the registration agreement is written in both English and Chinese and went on to assert that “Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
In support of that assertion the modified Complaint states that:
“[t]he Domain Name … appears in all English characters which form the English language words “lord” and “taylor” separated by the letters “en” replacing the word “and” or the ampersand in the English-language trademarks. The word “lord” is simple and widely-used English word (sic), and both the English words “lord” and “taylor” are identical to the English-language words contained in various trademarks owned by Complainant in the United States Patent and Trademark Office and in several other countries around the world. Complainant’s marks are used world-wide, but the owner company is headquartered in the United States, where English is the official and primary language.”
To put those submissions into context, Complainant asserts trademark rights in LORD & TAYLOR. That said, the Panel does not find the submissions to be at all clear. They are not evidence that Respondent is capable of understanding English. Nevertheless, UDRP panelists have on the whole set a low bar with respect to this language proficiency requirement and the Panel notes elsewhere in the Complaint the submission that “‘en’ sounds like ‘and’”, from which the Panel has read into the Complaint a submission that Respondent has a degree of facility in English since it understood the ampersand to signify “and” and further comprehended that “and” is frequently slurred by English speakers as “en”.
Whilst the submissions might have been better composed, the Panel determines on balance that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in LORD & TAYLOR. Complainant holds national registrations for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the owner of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 1,960,413, from March 5, 1996, for LORD & TAYLOR;
2. the disputed domain name was registered on April 6, 2022, and resolves to a webpage which appears to promote sports betting services (contrary to Complainant’s assertion that there is no use); and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark LORD & TAYLOR with the USPTO, a national trademark authority.
The disputed domain name takes the family names of the trademark, in their correct order, simply replaces the ampersand by “en” as discussed, and appends the gTLD. The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Pullman & Comley, LLC v. JONATHAN REICH., FA 1703742 (Forum Dec. 13, 2016) (”Respondent arrives at the disputed domain name by merely eliminating spacing between words of the mark, the addition of the “.com” generic top-level domain (“gTLD”), and the incorporation of “and” in place of the ampersand. These are not alterations that distinguish the disputed domain name from the Complainant’s trademark.”).
The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
The domain name holder is “xiao hong wang”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
Complainant states that the disputed domain name “points to a blank page” whilst at the same time exhibiting the resolution page which appears to promote sports betting services. The Panel again finds the Complaint unclear. However, what is clear from countless prior UDRP decisions is that misdirection of Internet users away from the business and services of a complainant by misuse of that complainant’s trademark is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Complainant’s submissions on bad faith are – again and without obvious reason – premised on the assertion that the domain name points to a blank page. The Complaint cites cases which consider so-called “passive holding” in bad faith which have little relevance. The plain analysis, based on the exhibited evidence, is that the disputed domain name does, or at least did, direct Internet users to an online location which promotes services having no relationship with Complainant or its business under the trademark and does so for commercial gain. In that regard, paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <lordentaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 7, 2022
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