Lord & Taylor IP LLC v. lei gao
Claim Number: FA2301002027889
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri. Respondent is lei gao (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com>, registered with GMO Internet, Inc. d/b/a Onamae.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 17, 2023; The Complaint was submitted in both Japanese and English. Forum received payment on January 17, 2023.
On January 17, 2023, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 January 24, 2023, Forum served the Complaint and all Annexes, including a Japanese language 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@lordandttaylor.com, postmaster@lordandtaaylor.com, postmaster@lordandtaylorr.com. Also on January 24, 2023, the Japanese 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 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 names be transferred from Respondent to Complainant.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in Japanese, thereby making the language of the proceedings in Japanese. However, Rule 11 (a) enables a Panel to specify a different language that is more appropriate in all the circumstances.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that in all the circumstances the remainder of the proceedings may be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant submits that it has rights in the LORD AND 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). See Compl. Exhibit B. Respondent’s <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names are virtually identical and confusingly similar to Complainant’s mark because they incorporate the LORD AND TAYLOR mark in its entirety and adds a letter and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the LORD AND TAYLOR mark. Further, Respondent engages in typosquatting. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names are used to pass off as Complainant
Respondent registered and uses the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names in bad faith. Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Additionally, Respondent engaged in typo-squatting. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the LORD AND TAYLOR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in offering a broad range of prestigiously branded clothes, accessories and related goods and services.
2. Complainant has established its rights in the LORD AND 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).
3. Respondent registered the <lordandtaylorr.com> domain name on May 15, 2019 and the <lordandttaylor.com> and <lordandtaaylor.com> domain names on June 17, 2021.
4. Respondent has caused the disputed domain names to be used to pass itself off as Complainant and to engage in passive holding of the domain names.
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 AND TAYLOR mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,960,413 registered March 5, 1996). See Compl. Exhibit B. Registration of a mark with the USPTO is a valid showing of rights in a mark. See 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).”). Since Complainant provides evidence of registration of the LORD AND TAYLOR mark with the USPTO, the Panel finds that the Complainant has established it rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s LORD AND TAYLOR mark. Complainant argues that Respondent’s <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names are virtually identical and confusingly similar to Complainant’s LORD AND TAYLOR mark as they contain the LORD AND TAYLOR mark in its entirety, adding or a letter to the mark and adding the “.com” gTLD. The addittion of a single letter in a disputed domain and the addition of a gTLD fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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.”) Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s LORD AND TAYLOR 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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show that 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 AND TAYLOR mark and to use it in its domain names, making different spelling alterations in the case of each domain name;
(b) Respondent registered the <lordandtaylorr.com> domain name on May 15, 2019 and the <lordandttaylor.com> and <lordandtaaylor.com> domain names on June 17, 2021;
(c) Respondent has used the disputed domain names to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the LORD AND TAYLOR mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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)”). The WHOIS information for the disputed domain name lists the registrant as “lei gao,” and there is no other evidence to suggest that Respondent was authorized to use the LORD AND TAYLOR mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f)Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names to pass itself off as Complainant. Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain names’ resolving page. See Compl. Exhibit C. As the Panel agrees, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent lacks rights and legitimate interests because it has engaged in typosquatting. Typosquatting may act as evidence of a lack of rights or legitimate interests pursuant to 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).”) Complainant argues that Respondent’s addition of a variety of single letters in the LORD AND TAYLOR mark constitutes typosquatting. As the Panel agrees, it finds that Respondent lacks rights or legitimate interests in the domain names 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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”) Complainant provides screenshots of the disputed domain names’ resolving pages. See Compl. Exhibit C. As the Panel agrees, it finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Secondly, Complainant argues that Respondent’s inactive holding of the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names are evidence of bad faith registration and use. Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (FORUM Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, Complainant provides screenshots of the disputed domain names’ resolving pages. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the LORD AND TAYLOR mark at the time of registering the <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names. The Panel will determine whether, as Complainant submits, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names as actual knowledge can adequately demonstrate bad faith under 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).”). To support this submission, Complainant points to its trademark registrations as well as its commercial presence and reputation. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark that supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel now makes.
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 <lordandttaylor.com>, <lordandtaaylor.com>, and <lordandtaylorr.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC,
Panelist
Dated: February 28, 2023
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