WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Annco, Inc. v. Private Registrations Aktien Gesellschaft

Case No. D2015-0165

1. The Parties

The Complainant is Annco, Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, of Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain name <loftcreditcard.com> is registered with FrontStreetDomains.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2015. On February 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain namе. On February 4, 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 Registrar also informed the Center that its principal office is located in Florida, United States of America. In view of this information, on February 5, 2015, the Center invited the Complainant to amend its Complaint in its Mutual Jurisdiction section to reflect the location of the Registrar. On the same date the Complainant amended its Complaint accordingly.

The Center verified that the Complaint together with the amendment to 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 February 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2015.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 4, 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 is a retail entity focused on women’s fashions and accessories. The ANN TAYLOR brand originated in 1954, when the Complainant’s founder Richard Liebeskind opened his first shop called “Ann Taylor” in New Haven, Connecticut, United States. The Complainant’s LOFT brand was developed as an extension of the ANN TAYLOR brand in the mid-1990s. The Complainant currently operates more than 500 LOFT store locations and more than 125 LOFT OUTLET stores in the United States of America, the District of Columbia, Puerto Rico, Canada and Mexico. The Complainant also offers its products globally through its website at “www.loft.com”, which has one million unique visitors per month from the United States alone. The Complainant’s total revenues from its LOFT business exceeded USD 5.3 billion for the period 2010-2013.

Since 2008, the Complainant has offered a LOFT-branded store credit card that customers can use at Complainant’s stores and website, and a LOFT-branded MasterCard credit card that customers can use anywhere MasterCard is accepted.

The Complainant is the owner of the following trademark registrations for “LOFT” (the “LOFT trademark”):

- The word trademark LOFT with registration number 3434715, registered in the United States of America on May 27, 2008 for goods in International Class 26;

- The word trademark LOFT with registration number 3700020, registered in the United States of America on October 20, 2009 for services in International Class 36;

- The word trademark LOFT with registration number 3703017, registered in the United States of America on October 27, 2009 for goods in International Classes 09, 14 and 18;

- The word trademark LOFT with registration number 3488664, registered in the United States of America on August 19, 2008 for goods in International Class 25; and

- The word trademark LOFT with registration number 3359615, registered in the United States of America on December 25, 2007 for services in International Class 35.

The disputed domain name was registered on March 21, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LOFT trademark. The disputed domain name incorporates this trademark in its entirety. The addition of the terms “credit” and “card” does not distinguish the disputed domain name from the LOFT trademark, and these terms only exacerbate the confusion, as the Complainant offers credit card services to its customers.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization of the Respondent to register or use the disputed domain name. The Complainant has never authorized the Respondent to use the LOFT trademark for any purpose. The registration of the disputed domain name occurred after the Complainant had made extensive use of the LOFT trademark and had obtained trademark registrations for it.

The Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith. The Complainant asserts that the use of the disputed domain name which includes the Complainant’s LOFT trademark in connection to a website containing links to other websites that offer credit cards for Complainant’s products shows that the Respondent is fully aware of the Complainant. The disputed domain name contains the phrase “credit card”, which describes a product and service that the Complainant offers under the LOFT brand. For a period of time, the disputed domain name was being used to redirect visitors to a parked website containing links to third-party websites all relating to credit card services and credit scores. The disputed domain name currently redirects visitors to a dynamic set of third-party websites that directly compete with the Complainant, including a malware attack website. Included in this rotation of websites is a parked site where the Respondent is using the LOFT trademark to attract users to its website so that the Respondent can generate “pay-per-click” revenue. The parking website contains links to websites of entities not associated with the Complainant, many of which advertise goods and services in competition with the Complainant. According to the Complainant, these circumstances show that the Respondent is using the LOFT trademark to intentionally confuse consumers, to trade on the Complainant’s rights and reputation, and to drive traffic to its website all for its own commercial benefit.

The Complainant contends that the ownership of the disputed domain name has changed two times since April 7, 2014. The Complainant’s counsel has written to each entity listed as registrant of the disputed domain name, but has received no response.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify 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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v.Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its trademark rights in the LOFT trademark.

The Panel notes that there is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name that has to be analyzed is its “loftcreditcard” section, which is a combination of the elements “loft”, “credit” and “card”. The first of these elements is identical to the Complainant’s LOFT trademark. The second and third elements are descriptive of a product and service offered by the Complainant under the LOFT trademark, and thus do not render the disputed domain name dissimilar to the LOFT trademark. Rather, it is more likely that Internet users would mistakenly regard the disputed domain name as related to the Complainant’s business and to the credit cards it offers to customers.

For these reasons, the Panel finds that the disputed domain name is confusingly similar to the LOFT trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it is not authorized or licensed to use the LOFT trademark and that there is no relationship between the Complainant and the Respondent. Thus, the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.

In this situation, the only information available about the Respondent is the contentions of the Complainant and the evidence submitted with the Complaint, the WhoIs information for the disputed domain name, provided by the Registrar and the content of the website at the disputed domain name.

The WhoIs information for the disputed domain name contains no indication that the Respondent is or has been commonly known by the disputed domain name. The disputed domain name itself is confusingly similar to the LOFT trademark of the Complainant, which was registered and used long before the registration of the disputed domain name. The disputed domain name includes the term “credit card”, which describes a product and a service offered by the Complainant. As contended by the Complainant and undisputed by the Respondent, the Respondent has used the disputed domain name for a parked website containing links to third-party websites relating to credit card services and links to third party websites which advertise goods and services in competition with the Complainant. In this situation, it is more likely than not that Internet users may be confused as to the source of goods and services offered on the Respondent’s website or led to wrongly believe that the Respondent’s website is related to or endorsed by the Complainant.

In the Panel’s view, these circumstances show that the Respondent must have been well aware of the Complainant and of its LOFT trademark when the disputed domain name was registered. The registration and use of the disputed domain name took place without the consent of the Complainant. The Panel finds it more likely than not that this registration was made in an attempt to benefit from the reputation of the LOFT trademark to attract customers to the Respondent’s website and then offer them services that compete with the Complainant’s products and services. The Panel is of the opinion that such conduct cannot give rise to rights or legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The Complainant has provided evidence of the scope of its activities internationally. The disputed domain name is confusingly similar to the LOFT trademark and was registered without the consent of the Complainant, and the Respondent has failed to show any rights or legitimate interests in it. The disputed domain name is confusingly similar to the LOFT trademark of the Complainant, which was registered and used long before the registration of the disputed domain name, and includes the term “credit card”, which describes a product and a service offered by the Complainant. In these circumstances, the Panel is satisfied that the disputed domain name was registered in view of the popularity of the Complainant and its LOFT trademark and the goodwill attached to it. Therefore, the Panel accepts that the disputed domain name was registered in bad faith.

The disputed domain name is linked to a website that contains links to third-party websites relating to credit card services and links to third party websites which advertise goods and services in competition with the Complainant, and does not feature a disclaimer for the lack of relation with or endorsement by the Complainant. The Panel does not regard such conduct as being made in good faith. Rather, it appears that the Respondent, by using the disputed domain name, attempts to attract to its own website the consumers that are looking for the products and services offered by the Complainant by creating a likelihood of confusion with the Complainant’s LOFT trademark as to the source or affiliation of the Respondent’s website, so that the Respondent can generate “pay-per-click” revenue.

Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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 <loftcreditcard.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: March 27, 2015