Lord & Taylor IP LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2205001998317
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lordetaylor.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2022; the Forum received payment on May 27, 2022.
On May 31, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lordetaylor.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 1, 2022, the Forum served the Complaint and all Annexes, including a 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@lordetaylor.com. Also on June 1, 2022, 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 June 27, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the LORD & TAYLOR trademark and service mark established by its ownership of its United States registered trademark and service mark registrations described below and its use of the mark in the name and content of its online retail website at <www.lordandtaymor.com>.
Complainant alleges that the disputed domain name is confusingly similar to, and fully incorporates all of, or the majority of, its LORD & TAYLOR mark, only changing the ampersand to the letter “e” and adding the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant submits that the substitution of the letter “e”, which may mean “and” in Spanish, for the ampersand in the LORD & TAYLOR mark allows a finding that the disputed domain name is confusingly similar to Complainant’s mark. In support of this argument Complainant cites the decisions in Cox & Kings Ltd. v. Mr. Manoj, WIPO Case No. D2011-0349, the panel found that the substitution of the word “and” for the ampersand in the complainant’s trademark allowed a finding that the disputed domain name confusingly similar to the COX & KINGS mark and the decision in Am. Online, Inc. v. Villanueva, FA 236589 (Forum Apr. 2, 2004) where the panel held the addition of generic French and Spanish words to be insufficient to distinguish the domain names in issue from the complainant’s marks.
Furthermore, Complainant argues that the misspelling of the LORD & TAYLOR trademark in the disputed domain name does not alleviate confusing similarity. See Victoria's Secret et al v. Zuccarini, FA 95762 (Forum Nov. 18, 2000) (finding "victoriasecerets.com", "victoriasecretes.com", "victoreasecret.com", "victoriasecerts.com" and other variations thereof are confusingly similar to VICTORIA'S SECRET).
Finally, Complainant adds that the addition of the gTLD extension <.com> has no bearing on a comparative analysis under Policy ¶ 4(a)(i) because gTLDs are required in domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name <lordetaylor.com> and has shown no bona fide intention to use the disputed domain name for any reason other than to impersonate Complainant or disrupt Complainant’s business.
Complainant asserts that it has not provided Respondent with permission to register its trademark as a domain name or otherwise use the LORD & TAYLOR mark.
Complainant claims to be known by its LORD & TAYLOR trademark as shown in a screenshot from Complainant’s website exhibited in an annex to the Complaint, and submits that it is virtually impossible to conceive of any plausible, actual or contemplated, active use of the disputed domain name by Respondent that would not be illegitimate.
Complainant refers to a further screen capture of Respondent’s website to which the disputed domain name resolves shows and contends that it shows that it only offers links to various third- party websites. Complainant submits that this use, described in the Complainat as a “linkfarm” is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) - holding that the respondent had no rights or legitimate interests under Policy 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant.
Complainant further contends that because the disputed domain name is almost identical to its LORD & TAYLOR mark, Respondent is using the disputed domain name in an act of typosquatting which panels have held demonstrates a lack of rights or legitimate interests in a disputed domain name under Policy 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Forum Aug. 14, 2003) (holding that the intentional misspellings in ltdcommadities.com, ltdcommmodities.com, and ltdcommodaties.com of complainant's LTD COMMODITIES mark was typosquatting, which is evidence that respondent lacked rights or legitimate interests in the disputed domain names”).
Complainant adds that Respondent registered the disputed domain name using a privacy service, concealing Respondent’s identity on the WhoIs record, which would not have been required if Respondent planned to become commonly known by the disputed domain name.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that its rights in its LORD & TAYLOR mark predated the registration of the disputed domain name, thus, Respondent had constructive notice of Complainant’s rights in the mark when the disputed domain name was registered in bad faith.
Complainant adds that the evidence shows that Respondent has engaged in a pattern of abuse by registering many domain names that infringe on third party marks and that Respondent, “Carolina Rodrigues” has been the named respondent in a total of 218 Forum decisions calling for transfer of domain names in issue, as shown in a list annexed to the Complaint. Complainant submits that pursuant to Policy ¶ 4(b)(ii), a pattern of bad faith registrations may be demonstrated by past adverse decisions under the Policy. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Complainant contends that in these previous cases, panels have found that Respondent is engaged in a pattern of bad faith registration of domain names incorporating third party trademarks. See Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2204001991732 (Forum May 17, 2022) (finding that this Respondent has engaged in a pattern of abuse, citing 214 adverse UDRP decisions issued by past NAF and/or Forum panels.).
Complainant adds that Respondent registered the disputed domain name using a privacy service, concealing Respondent’s identity as shown in a copy of Whois information relating to the registration of the disputed domain name attached to the Complaint. Complainant contends that the fact that the disputed domain name has been registered using a privacy service to obscure the identity of the beneficial registrant supports the Complainant’s submission that the disputed domain name has been registered in bad faith, See Ascend Capital, LLC v. Emily MUHLEMAN / Ascend Capital Partners, FA1711001757853 (Forum December 12, 2017) (finding that where a respondent used a WHOIS privacy service to register the disputed domain name, such an act raises a rebuttable presumption of bad faith registration and use).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a retailer of clothing and accessories and operates a business using the LORD & TAYLOR trademark with its main website at <www.lordandtaylor.com>.
Complainant holds a portfolio of United States trademark and service mark registrations for the LORD & TAYLOR mark which includes:
· United States registered trademark LORD & TAYLOR, registration number 1, 960, 413, registered on the Principal Register on March 5, 1996 for services in international class 42;
· United States registered trademark LORD & TAYLOR, registration number 3,488,206, registered on the Principal Register on March 5, 1996 for services in international classes 1, 25 and 28.
The disputed domain name was registered on May 4, 2022 and resolves to a website with links to third party websites.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
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 WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant has provided strong, uncontested evidence to prove that on the balance of probabilities it has rights in the LORD & TAYLOR mark, established by its ownership of its portfolio of trademark and service mark registrations described above and extensive use of the mark in its business as a retailer of clothing and accessories.
The disputed domain name <lordetaylor.com> consists of the words “lord” and “taylor” linked with the letter “e” and followed by the gTLD extension <.com>.
The words “lord” and “taylor” combine to form the dominant and distinctive elements of both Complainant’s LORD & TAYLOR mark and the disputed domain name.
When compared, the disputed domain name and Complainant’s mark are confusingly similar and almost identical. The replacement of the ampersand in Complainant’s mark by the letter “e” in the domain name
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s LORD & TAYLOR mark.
This Panel finds therefore that the disputed domain name <lordetaylor.com> is confusingly similar to the LORD & TAYLOR mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name <lordetaylor.com>, and has shown no bona fide intention to use the disputed domain name for any reason other than to impersonate Complainant or disrupt Complainant’s business;
· Complainant has not provided Respondent with permission to register its trademark as a domain name or otherwise use the LORD & TAYLOR mark;
· Complainant is known by its LORD & TAYLOR trademark as shown in a screenshot from Complainant’s website exhibited in an annex to the Complaint and it is virtually impossible to conceive of any plausible, actual or contemplated, active use of the disputed domain name by Respondent that would be legitimate;
· a screen capture of the website to which the disputed domain name resolves, which contains only links to various third-party websites shows that Respondent is not using the disputed domain name to make a bona fide offering of goods or services;
· because the disputed domain name is almost identical to Complainant’s LORD & TAYLOR mark, Respondent’s registration and use of the disputed domain name constitutes typosquatting which panels have held demonstrates a lack of rights or legitimate interests in a disputed domain name under Policy;
· Respondent registered the disputed domain name using a privacy service, concealing Respondent’s identity on the WhoIs record, which would not have been required if Respondent planned to become commonly known by the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is implausible that the disputed domain name was registered without the registrant being aware of Complainant, its rights and its mark. When the disputed domain name was chosen and registered on May 4, 2022, Complainant had already an established international reputation in the use of the LORD & TAYLOR mark as a consequence of its use in its retail clothing and accessories business and its pre-existing website at <lordandtaylor.com>.
The disputed domain name is a misspelling of Complainant’s LORD & TAYLOR mark which is a distinctive combination of two family names, and in the same order as they occur in Complainant’s mark. It is most improbable that these elements, separated in each case, by a conjunctive element, would have been chosen by coincidence.
On the balance of probabilities therefore, this Panel finds that the combination of elements was intentionally chosen and registered, to create a domain name that is a misspelling of Complainant’s mark, and further finds that the disputed domain name was registered in bad faith to target and take predatory advantage of Complainant’s mark and goodwill in the LORD & TAYLOR mark
The uncontested evidence shows that Respondent is using the disputed domain name to resolve to a website that purports to offer links to third party websites and Respondent appears to have no other purpose in maintaining the website.
On the balance of probabilities therefore this Panel finds that Respondent is using the disputed domain name in an act of typosquatting and is using the disputed domain name to create confusion among Internet users, and divert and mislead them away from Complainant’s website to Respondent’s website.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This Panel also accepts Complainant’s contention that Respondent is engaged in a pattern of registering the marks of unassociated trademark owners to take predatory advantage of their goodwill for commercial gain which constitutes bad faith use under the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lordetaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 29, 2022
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