Lord & Taylor IP LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2301002027932
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lordandaylor.com>, <lordandtalor.com>, <loedandtaylor.com>, registered with Media Elite Holdings Limited.
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 Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 17, 2023, Media Elite Holdings Limited confirmed by e-mail to Forum that the <lordandaylor.com>, <lordandtalor.com>, <loedandtaylor.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 January 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@lordandaylor.com, postmaster@lordandtalor.com, postmaster@loedandtaylor.com. Also on January 23, 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 February 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Lord & Taylor IP LLC, is a clothing and accessories retailer. Complainant has rights in LORD & TAYLOR mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,960,413, registered March 5, 1996). The disputed domain names are confusingly similar to the LORD & TAYLOR mark as they merely misspell the mark by eliminating a letter or exchanging a letter and then adding a generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s LORD & TAYLOR mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent seeks to trade off of Complainant’s goodwill and pass themselves off as Complainant. Further, the disputed domain names either redirect users to Complainant’s legitimate website or host pay-per-click hyperlinks. Lastly, the disputed domain names are an example of typosquatting.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business by confusing Internet users and diverting them to Respondent’s site, which contains pay-per-click hyperlinks. The disputed domain names are also an example of typosquatting. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the LORD & TAYLOR mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were registered on the following dates:
<lordandaylor.com>: May 31, 2004.
<lordandtalor.com>: November 27, 2005.
<loedandtaylor.com>: December 20, 2022.
2. Complainant has established rights in LORD & TAYLOR mark through numerous trademark registrations, including with the USPTO (e.g., Reg. No. 1,960,413, registered on March 5, 1996).
3. The disputed domain names <lordandaylor.com> and <lordandtalor.com> direct users back to Complainant’s legitimate site.
4. The disputed domain name <loedandtaylor.com> hosts a pay-per-click link farm.
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 claims rights in the LORD & TAYLOR mark through multiple trademark registrations, including with the USPTO (e.g., No. 1,960,413, which was registered on March 5, 1996). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the LORD & TAYLOR mark with the USPTO, the Panel finds that Complainant has established rights in the LORD & TAYLOR mark per Policy ¶ 4(a)(i).
Complainant argues that the <lordandaylor.com>, <lordandtalor.com>, and <loedandtaylor.com> domain names are confusingly similar to its LORD & TAYLOR mark since they all misspell the mark by dropping a letter (the “t” in <lordandaylor.com>; the “y” in <lordandtalor.com>) or changing a letter (“e” for “r” in <loedandtaylor.com>). They then append the “.com” gTLD. Misspelling a mark, either by eliminating or changing letters, has been found insufficient to defeat a finding of confusing similarity when the disputed domain name otherwise includes the entire mark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent only misspells the LORD & TAYLOR mark and adds a gTLD to each disputed domain name, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark under 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 disputed domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the LORD & TAYLOR mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA 1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for the disputed domain names merely list a privacy service as the registrant: “Domain Administrator” with the organization “Fundacion Privacy Services LTD.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the LORD & TAYLOR mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that the use of two of the domain names (<lordandaylor.com> and <lordandtalor.com>) to direct users back to Complainant’s legitimate site encourages consumer confusion and is not a legitimate use of the domain name. Past panels have agreed that when a disputed domain name merely redirects users back to a complainant, such use does not confer rights or legitimate interests. See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant provides screenshots showing that these disputed domain names bring users back to Complainant’s legitimate website. The Panel therefore finds that Respondent failed to use the domain names <lordandaylor.com> and <lordandtalor.com> for a bona fide offering of goods or services as contemplated by the Policy.
Complainant further contends that the <loedandtaylor.com> domain name hosts a pay-per-click link farm. A respondent’s use of a disputed domain name to promote commercial advertising links, whether related or unrelated to a complainant, has been held not to qualify as a bona fide or legitimate use under the Policy. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Complainant provides a screenshot of the resolving site, which shows hyperlinks titled, for example, “Department Store Credit Cards” and “Shipment Tracking Software.” Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name <loedandtaylor.com> under Policy ¶¶ 4(c)(i) and (iii).
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 names.
Complainant argues that Respondent registered and uses the <loedandtaylor.com> domain name in bad faith by confusing Internet traffic and then hosting pay-per-click hyperlinks. Previous panels have determined that a respondent’s use of a confusingly similar domain name to attract Internet traffic to a site that contains commercial advertising hyperlinks evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). As noted above, Respondent uses the <loedandtaylor.com> domain name for a page that displays hyperlinks. The Panel thus finds that Respondent registered and uses the disputed domain name <loedandtaylor.com> in bad faith according to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent is typosquatting, which is further evidence of bad faith. Panels have agreed, finding that typosquatting indicates registration and use in bad faith. 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.”). The Panel notes that the disputed domain names all misspell Complainant's mark LORD & TAYLOR by dropping a letter (the “t” in <lordandaylor.com>; the “y” in <lordandtalor.com>) or changing a letter (“e” for “r” in <loedandtaylor.com>). Therefore, the Panel finds that Respondent is typosquatting, and thus Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had constructive and/or actual knowledge of Complainant’s rights in the LORD & TAYLOR mark when registering the disputed domain names. UDRP precedent has generally declined to find bad faith on the basis of constructive knowledge. However, the Panel may find that Respondent had actual knowledge, as actual knowledge is adequate to show a Respondent’s bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). In addition to its trademark registrations, Complainant points to the slight differences between the disputed domain names and the LORD & TAYLOR mark and the fact that <lordandaylor.com> and <lordandtalor.com> redirect users to Complainant’s own website to support this claim. The Panel infers, due to the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights at the time of its registering the disputed domain names, and thus it finds that Respondent registered the disputed domain names in bad faith under 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 <lordandaylor.com>, <lordandtalor.com>, and <loedandtaylor.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 22, 2023
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