Lord & Taylor IP LLC v. Zhi Chao Yang
Claim Number: FA2306002047604
Complainant is Lord & Taylor IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lrodandtaylor.com>, registered with Cloud Yuqu LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint in both Chinese and English to Forum electronically on June 6, 2023. Forum received payment on June 6, 2023.
On June 7, 2023, Cloud Yuqu LLC confirmed by e-mail to Forum that the <lrodandtaylor.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu LLC registration agreement, which is in Chinese, 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 7, 2023, Forum served the Chinese Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of June 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@lrodandtaylor.com. Also on June 7, 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 June 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Cloud Yuqu LLC registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <lrodandtaylor.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the domain name is a misspelling of the English words, “Lord and Taylor” and that more than one past panel has found that Respondent is proficient in English. In the absence of any Response, these circumstances satisfy the Panel that Respondent is proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Lord & Taylor IP LLC, provides LORD & TAYLOR branded products and services, including apparel, jewelry and accessories. Complainant has rights in the LORD & TAYLOR mark based upon registrations around the world, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <lrodandtaylor.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the typosquatted <lrodandtaylor.com> domain name. Respondent is not licensed or authorized to use Complainant’s LORD & TAYLOR mark and is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host pay-per-click hyperlinks that directly compete with Complainant. Complainant’s main website is at “www.lordandtaylor.com”.
Respondent registered the typosquatted <lrodandtaylor.com> domain name in bad faith with actual knowledge of Complainant’s rights in the LORD & TAYLOR mark and uses it in bad faith to host pay-per-click hyperlinks that directly compete with Complainant. Respondent has shown a pattern of bad faith through prior UDRP proceedings. See Gulfstream Aerospace Corporation v. YangZhiChao FA2211002021352 (<gulfsrteam.com> and others); Oracle International Corporation v. Yang Zhi Chao FA2211002019543 (<oraclelcoud.com>); State Farm Mutual Automobile Insurance Company v. Zhichao Yang FA2211002019966 (<statefarmcreditcardoffers.com>); Beachbody, LLC v. Zhi Chao Yang FA2211002018997 (<beachbodykndemand.com) and others); and Mediacom Communications Corporation v. Zhi Chao Yang FA2210002017533 (<mediacomc.com>). Furthermore, Respondent’s use of a privacy shield shows bad faith registration and use. One can assume that Respondent registered the domain name with the express intent to disrupt Complainant’s business or profit from the fame of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights to the LORD & TAYLOR mark based upon registrations with the USPTO (e.g., Reg. No. 1,960,413, registered on March 5, 1996) and other trademark agencies worldwide. The Panel finds Respondent’s <lrodandtaylor.com> domain name to be confusingly similar to Complainant’s LORD & TAYLOR mark because it comprises a misspelled version of the mark. The inconsequential generic top-level domain (“gTLD”) “.com” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <lrodandtaylor.com> domain name was registered on October 5, 2022, many years after Complainant has shown that its LORD & TAYLOR mark had become famous. It resolves to a website with pay-per-click links to third party websites.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <lrodandtaylor.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous LORD & TAYLOR mark and its “www.lordandtaylor.com” website when Respondent registered the <lrodandtaylor.com> domain name and that Respondent has intentionally attempted 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 website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Respondent’s bad faith registration and use are further demonstrated by the clearly typosquatted nature of the domain name and Respondent’s history of cybersquatting.
Complainant has established this element.
DECISION
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 <lrodandtaylor.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 30, 2023
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