WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Annco, Inc. v. Domain Administrator - Fundacion Private Whois
Case No. DCO2014-0041
1. The Parties
The Complainant is Annco, Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain Administrator - Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <anntaylorloft.co> is registered with CCI REG S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2015.
The Center appointed Martine Dehaut as the sole panelist in this matter on February 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant and its affiliated entities comprise a specialty retailer focused on fashionable women’s clothing and accessories. Complainant’s ANN TAYLOR brand originated in 1954, when the first store was opened under the sign ANN TAYLOR in New Haven, Connecticut. As an extension of the ANN TAYLOR brand, the Complainant launched in the mid-1990 LOFT brand under the name ANN TAYLOR LOFT, still used in Complainant’s LOFT stores. Complainant operates approximately, 1000 retail stores, including ANN TAYLOR, ANN TAYLOR FACTORY, LOFT, and LOFT OUTLET stores, in 47 U.S. states, the District of Columbia, Puerto Rico, Canada and Mexico. Complainant operates commercial Internet websites, “www.anntaylor.com” and “www.loft.com”, offering their branded products in more than 100 countries around the world. The Complainant’s websites together received in 2013 over 160 million visitors from around the world. The Complainant invests a substantial amount of money for advertising and promoting the ANN TAYLOR and LOFT Trademarks on social media and networking websites and numerous well-known publications available for the general public relate to the notoriety of the ANN TAYLOR LOFT Marks which have built up enormous goodwill. In 2014 Complainant’s net sales of ANN TAYLOR and LOFT products amount to 2,493,491 USD.
The Complainant is the owner of numerous Trademark registrations for ANN TAYLOR, ANN TAYLOR LOFT and LOFT in the United States and in many countries around the world including Panama and Colombia, in relation in particular to clothing-related goods and services. This trademark portfolio includes a U.S. Federal registration no. 3,202,185 in class 25 for ANN TAYLOR LOFT, and a Colombian registration no. 362125 for the same sign and in the same class.
The Respondent registered the disputed domain name <anntaylorloft.co> through a proxy service located in Panama, on July 20.2010. The disputed domain name redirected visitors to a parked website containing links to competing companies and websites in order to generate pay-per-click revenue.
The Complainant sent a claiming letter to the Respondent on July 3, 2014, which was delivered by email (the hard copy was returned as undeliverable). The Respondent responded neither to this letter nor to the present complaint.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks ANNTAYLOR, ANN TAYLOR LOFT and LOFT registered in many jurisdictions all over the world. Furthermore the Complainant states that it has used its Trademarks separately and also jointly in the United States and in a few other countries in relation to clothes and related accessories.
The Complainant alleges that the disputed domain name incorporates its trademarks ANN TAYLOR, LOFT and ANN TAYLOR LOFT and consequently is to be considered as identical or confusingly similar.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name. Indeed, registration of the domain name occurred after Complainant had made an extensive use of the ANN TAYLOR LOFT Marks and after registrations for ANN TAYLOR LOFT marks had been obtained. The Complainant points out that it has no relationship with the Respondent and has never authorized the Respondent to use ANN TAYLOR LOFT Marks or any other confusingly similar marks, for any purpose, including as a domain name. The Complainant claims that the Respondent is using the disputed domain name mainly to misdirect Internet traffic to competing companies and websites, for commercial gain.
According to the Complainant, the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not make its contact information available in the Whois and purposefully concealed its true identity to make it difficult for interested third parties to locate him. Furthermore, the Complainant points out that the Respondent is using the disputed domain name to create unfairly an association with the Complainant’s famous brand and thus misdirect Internet traffic to competing companies and websites to generate pay-per click revenue. The Complainant summarizes its arguments by stating that “there can be no dispute that the ANN TAYLOR LOFT Marks are an immediately recognizable and famous group of trademarks that exclusively identify Complainant. Respondent’s adoption and use of the ANN TAYLOR LOFT Marks shows both Respondent’s familiarity with the marks and Respondent’s recognition of the fame of the marks. Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use or register the Domain Name, the very fact that Respondent has registered the Domain Name establishes opportunistic bad faith use and registration”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the paragraph 4(a) of the policy, and notwithstanding the default of the Respondent, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
This is a straightforward case of cybersquatting, with an unidentified Respondent who takes advantage of the reputation of the trademarks ANN TAYLOR LOFT of the Complainant for per-per-click revenue. The Complainant has made a strong case, supported by all the necessary evidence.
A. Identical or Confusingly Similar
Having taken into consideration the list of trademark registrations submitted by the Complainant, the Panel finds that the Complainant has duly proved its rights in the trademarks ANN TAYLOR, LOFT and ANN TAYLOR LOFT. This includes registrations obtained in Comlainant’s home country, the U.S., and also in Colombia, the country of the extension under which the litigious domain name was registered.
The confusing similarity between the disputed domain names and the trademarks of the Complainant is evident. The litigious domain name solely reproduces the trademarks ANN TAYLOR LOFT of the Complainant, followed by the county code extension “.co”.
Based on the foregoing, the Panel holds that the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy lists numerous, although unbounded, circumstances likely to demonstrate that the Respondent has rights or legitimate interests in a domain name, namely:
(i) Before any notice to [the respondent] of the dispute, use by [the 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is that “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See paragraph 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”
In the present case, the Complainant asserts not to have granted to the Respondent any authorization to use the trademark ANN TAYLOR LOFT, nor to have granted any license giving the right to the Respondent to use the disputed domain name. Besides the Complainant states that the Respondent has never been known by the disputed domain name. The Complainant is in no way associated or affiliated with the Respondent.
The Respondent is using the disputed domain name as a pay-per-click pages. As the Complainant argues, the Panel finds out that the Respondent is not making a bona fide offering of goods or services especially whereas the disputed domain name links to goods competitive with those of the Complainant.
Absent any defense on this point by the Respondent, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith. Those conditions are cumulative.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In the Panel’s view, it is undisputable that the Respondent has registered and is using the disputed domain name <anntaylorloft.co> in bad faith.
Firstly, the choice of the disputed domain name strongly suggests prior knowledge of the trademarks of the Complainant, which enjoy strong and longstanding reputation in the U.S. and neighboring countries.
Secondly, the disputed domain name is used as a parking page, which offers in particular links to third parties’ websites in the same field of activity. In practice, the Respondent is attracting Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark, with the objective of generating revenues through pay-per-click.
Moreover, the Respondent, who did not reply to the Complainant in any way and did not participate to this proceeding, also decided to register the disputed domain name by using a proxy service.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <anntaylorloft.co> be transferred to the Complainant.
Date: March 2, 2015