Lord & Taylor IP LLC v. Qunxing Li
Claim Number: FA2301002027925
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Qunxing Li (“Respondent”), Henan, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lordandytaylor.com>, registered with Hong Kong Juming Network Technology Co., Ltd.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 27, 2023, Hong Kong Juming Network Technology Co., Ltd confirmed by e-mail to Forum that the <lordandytaylor.com> domain name is registered with Hong Kong Juming Network Technology Co., Ltd and that Respondent is the current registrant of the name. Hong Kong Juming Network Technology Co., Ltd has verified that Respondent is bound by the Hong Kong Juming Network Technology Co., Ltd 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 February 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@lordandytaylor.com. Also on February 6, 2023, 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 March 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a retail department store. Complainant has rights in the LORD & TAYLOR mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1.960,413, registered March 5, 1996) and other international trademark authorities. See Amend. Compl. Exs. B and C. Respondent’s <lordandytaylor.com> domain name is identical or confusingly similar to Complainant’s LORD & TAYLOR mark as it merely adds the letter “y” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <lordandytaylor.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the LORD & TAYLOR mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a website with pay-per-click links. Furthermore, Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is typosquatting on Complainant’s mark.
Respondent registered and uses the <lordandytaylor.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent diverts users to the disputed domain name which uses pay-per-click links for Respondent’s financial gain. Additionally, Respondent uses a typosquatted version of Complainant’s mark to disrupt Complainant’s business. Respondent demonstrates bad faith by using a privacy shield to conceal its identity. Finally, Respondent had actual knowledge of Complainant’s rights to the LORD & TAYLOR mark prior to registering the disputed domain name.
See Amend. Compl. Ex. A.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the department store business.
2. Complainant has established its rights in the LORD & TAYLOR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1.960,413, registered March 5, 1996) and other international trademark authorities.
3. Respondent registered the <lordandytaylor.com> domain name on May 14, 2022.
4. Respondent has caused the disputed domain name to be used for typosquatting on Complainant’s LORD & TAYLOR mark so as to direct internet visitors to a website that has no clear relationship to the domain name and is intended to be used to pass Respondent off as Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the LORD & TAYLOR mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 1.960,413, registered March 5, 1996) and other international trademark authorities. See Amend. Compl. Exs. B and C. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the LORD & TAYLOR mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LORD & TAYLOR mark. Complainant argues Respondent’s <lordandytaylor.com> domain name is identical or confusingly similar to Complainant’s LORD & TAYLOR mark as it merely adds the letter “y” and the “.com” gTLD to form. The addition of a letter and a gTLD fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LORD & TAYLOR mark and to use it in its domain name;
(b Respondent registered the <lordandytaylor.com> domain name on May 14, 2022;
(c) Respondent has caused the disputed domain name to be used for typosquatting on Complainant’s LORD & TAYLOR mark so as to direct internet visitors to a website that has no clear relationship to the domain name and is intended to be used to pass Respondent off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <lordandytaylor.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the LORD & TAYLOR mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Qunxing Li” and Complainant submits that there is no other evidence to suggest that Respondent was authorized to use the LORD & TAYLOR mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <lordandytaylor.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to a website offering pay-per-click links. Using a confusingly similar domain name for the purpose of diverting users to a pay-per-click website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage featuring multiple pay-per-click links. See Amend. Compl. 7(b). The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the <lordandytaylor.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name is a typosquatted version of Complainant’s mark. Using a confusingly similar domain name to take advantage of user’s common typographical errors may show evidence of respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation 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).”). The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <lordandytaylor.com> domain name in bad faith as Respondent registered the disputed domain name to confuse users and disrupt Complainant’s business by diverting users to a website with pay-per-click links. Registration of a confusingly similar domain name with the intent to disrupt business for commercial gain can evince bad faith registration and use per Policy ¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As mentioned above, Complainant provides a screenshot of the disputed domain name’s resolving website showing multiple pay-per-click links. See Amend. Compl. 7(b). Complainant argues that Respondent is disrupting Complainant’s business by confusing users looking for Complainant’s products and Respondent achieves financial gain through the pay-per-click links. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered and uses the <lordandytaylor.com> domain name in bad faith as Respondent registered a confusingly similar domain name with a deliberate misspelling of Complainant’s mark. Using a typosquatted domain name may be evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Complainant argues that adding the letter “y” to the Complainant’s mark is a deliberate typographical error that takes advantage of confused users. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <lordandytaylor.com> domain name in bad faith since Respondent used a privacy shield to conceal its identity. Use of a privacy registration service to conceal a respondent’s identity may be evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent registered and uses the <lordandytaylor.com> domain name with actual knowledge of Complainant’s rights in the LORD & TAYLOR mark. Use of a mark to divert Internet traffic to a website where a respondent sponsors pay-per-click links demonstrates actual knowledge of a complainant’s rights in a mark at registration and shows bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues the LORD & TAYLOR mark is complex and that it is no accident that the small misspelling of the mark was registered as part of the disputed domain name. Respondent must therefore have had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. As the Panel agrees, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lordandytaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 9, 2023
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