Lord & Taylor IP LLC v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2212002024603
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lordandtaylo.com>, <lordandtyalor.com>, <lordndtaylor.com>, and <ordandtaylor.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on December 19, 2022; Forum received payment on December 19, 2022.
On December 20, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <lordandtaylo.com>, <lordandtyalor.com>, <lordndtaylor.com>, and <ordandtaylor.com> domain names (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 17, 2023 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@lordandtaylo.com, postmaster@lordandtyalor.com, postmaster@lordndtaylor.com, postmaster@ordandtaylor.com. Also on December 27, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The Complaint relates to four Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant did not address this issue but all four Domain Names were registered with the same registrar, and all were registered to the named Respondent, Domain Admin / TotalDomain Privacy Ltd (WHOIS information furnished to Forum by registrar). Screenshots of the websites resolving from the Domain Names on October 28, 2022 and December 19, 2022 were incorporated into the Complaint. All four websites have the same layout and appearance, at one time offering the relevant Domain Names for sale and at other times featuring links for clothing and accessories, which are the types of goods distributed by Complainant. This persuades the Panel that all four Domain Names are registered to the same person or entity or are under common control, and the Panel will proceed as to all of them.
A. Complainant
Complainant has rights in the LORD & TAYLOR mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <lordandtaylo.com>, <lordandtyalor.com>, <lordndtaylor.com>, and <ordandtaylor.com> Domain Names are virtually identical and confusingly similar to Complainant’s mark because each one incorporates the LORD & TAYLOR mark in its entirety, changes the ampersand to the word “and”, and then adds or omits letters to create minor misspellings. Each Domain Name also includes the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the Domain Names. It is not commonly known by the Domain Names, Complainant has not authorized or licensed Respondent any rights in the LORD & TAYLOR mark, and Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the Domain Names resolve to websites that offer the Domain Names for sale at some times and display pay-per-click links at other times. Respondent engages in typosquatting and makes use of a privacy service.
Respondent registered and uses the Domain Names in bad faith. It registered the Domain Names with constructive and actual knowledge of Complainant’s rights in the LORD & TAYLOR mark, the Domain Names contain typosquatted versions of Complainant’s mark, and Respondent disrupts the business of Complainant. Respondent offers the Domain Names for sale, is using them to generate pay-per-click revenues for itself and has engaged in a pattern of bad faith registration and use. Finally, Respondent makes use of a privacy service.
B. Respondent
Respondent did not submit a Response in 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 a complainant to prove each of the following four elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”); WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The LORD & TAYLOR mark was registered to Lord & Taylor LLC with the USPTO (Reg. No. 3,488,206) on August 19, 2008 (USPTO registration certificate included in Complaint Exhibit B). Lord & Taylor LLC is not the named Complainant, but because the LORD & TAYLOR mark is incorporated verbatim into the name of both companies the Panel infers that they are sufficiently related and affiliated to enable Complainant to bring and maintain this proceeding on behalf of Lord & Taylor LLC, especially since Complainant’s name, including the “IP” designation, reasonably implies that Complainant manages the intellectual property operations of Lord & Taylor LLC. DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <lordandtaylo.com>, <lordandtyalor.com>, <lordndtaylor.com>, and <ordandtaylor.com> Domain Names are identical or confusingly similar to Complainant’s LORD & TAYLOR mark. They all fully incorporate the mark, albeit with subtle misspellings, omit spaces, substitute the word “and” for the ampersand in Complainant’s mark, and add a gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “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.”); Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)), .”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the LORD & TAYLOR mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Names, (ii) Complainant has not authorized or licensed Respondent any rights in the LORD & TAYLOR mark, (iii) Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Names resolve to websites that offer the Domain Names for sale at some times and display pay-per-click links at other times, (iv) the Domain Names consist of typosquatted versions of Complainant’s mark, and (v) Respondent makes use of a privacy service. These allegations are addressed as follows:
The information furnished to Forum by the registrar lists “Domain Admin / TotalDomain Privacey Ltd” as the registrant of the Domain Names. Neither of these names bears any resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it did not authorize or permit Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Screenshots of the websites resolving from the Domain Names on two different dates are incorporated into the Complaint. According to the undisputed allegations in the Complaint, as of December 19, 2022 all four sites advertised their respective Domain Names for sale. According to the undisputed allegations in the Complaint, as of October 28, 2022 the <lordandtaylo.com> and <lordndtaylor.com> Domain Names featured hyperlinks to clothing and accessories. The Complaint states that the other two Domain Names featured similar links on December 19, 2022 as well. The information about these dates may be mistaken but in any event it is undisputed that the websites resolving from all four Domain Names advertised their respective Domain Names for sale and featured what are obviously pay-per-click links at various times. Using a confusingly similar domain name to attract Internet traffic to a webpage that offers pay-per-click links to goods and services, whether related or unrelated to a complainant’s business, is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Likewise, making a general offer to sell a domain name is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
By registering the Domain Names with subtle misspellings of Complainant’s mark, e.g., omitting the “r” in “taylor,” reversing the order of the “a” and “y” in “taylor,” omitting the “a” in “and,” and omitting the “l” in “lord,” Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Engaging in typosquatting is inconsistent with rights or legitimate interests in a domain name. Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”); Chegg Inc. v. yang qijin, FA1503001610050 (Forum April 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Respondent here obtains commercial gain from its use of the Domain Names and the resolving websites to generate pay-per-click revenues. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO Oct. 12, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links); Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO Dec. 12, 2007) (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Names is commercial also because the sponsors of the various web sites forwarded from Respondent’s web site benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO Oct. 12, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Complainant asserts that Respondent had constructive notice of Complainant and its LORD & TAYLOR mark when it registered the Domain Names. Arguments of bad faith based on constructive notice are generally rejected, and Panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names. There is no evidence before the Panel as to when Respondent registered the Domain Names,[i] but the USPTO registration certificate demonstrating Complainant’s rights in the LORD & TAYLOR mark cited above shows a first use of that mark in 1981, well before the Internet was in general use, and it can be presumed that Respondent did not register them before then. The LORD & TAYLOR mark has been well-known throughout the U.S. and Canada for many years and Complainant was sufficiently aware of it to structure its pay-per-click links to refer to products similar to those distributed by Complainant. There is no question that Respondent had actual knowledge of Complainant and its rights in the LORD & TAYLOR mark when it registered the Domain Names. This may not fit within any of the circumstances described in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., Case No. D-2004-0955 (WIPO Jan. 5, 2005); Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii); Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant asserts that Respondent’s conduct disrupted its business. There is no allegation that Respondent’s conduct fits within the circumstances described in Policy ¶ 4(b)(iii), but using a confusingly similar domain name to host a website offering that domain name for sale and featuring hyperlinks for goods similar to those promoted by a complainant is disruptive of a complainant’s business and is evidence of bad faith, independent of the provisions of Policy ¶ 4(b)(iii). Both types of the websites hosted by Respondent give the false impression to an Internet user looking for Complainant that something is wrong with Complainant or its website and thereby harm Complainant’s reputation and goodwill. Again, none of these effects is described in Policy ¶ 4(b) as evidencing bad faith registration and use, but Respondent knew or should have known that its actions would have these effects. The fact that it undertook them regardless is, in and of itself, persuasive evidence of bad faith registration and use. Unanet, Inc. v. Jamell Tyson, FA2022602 (Forum Dec. 30, 2022) (holding that passive holding of a confusingly similar domain name wrongfully disrupted the complainant’s business and constituted bad faith).
Next, as discussed above, Respondent is guilty of typosquatting. This also does not fit precisely within any of the circumstances listed in Policy ¶ 4(b) but given the non-exclusive nature of that paragraph, registering a typosquatted domain name has been held to be bad faith for the purposes of Policy ¶ 4(a)(iii). Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein); Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Complainant argues that Respondent registered and uses the Domain Names in bad faith because it offers them for sale to the public. There is no evidence, however, of the price solicited for an actual purchase. In the absence of this information Complainant has not proven that Respondent’s conduct falls within the circumstances described in Policy ¶ 4(b)(i). There is nothing inherently wrong in offering a domain name for sale. Complainant’s argument for a finding of bad faith based upon Respondent’s offering the Domain Names for sale is rejected.
For the reasons first set forth above, however, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lordandtaylo.com>, <lordandtyalor.com>, <lordndtaylor.com>, and <ordandtaylor.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 24, 2023
[i] Complainant submitted two WHOIS printouts but they pertain to domain names which were not registered to Respondent and are not involved in this proceeding.
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