WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. v. Polanski
Case No. D2001-0236
1. The Parties
The Complainant is Williams-Sonoma, Inc., 3250 Van Ness Avenue, San Francisco, California 94109 United States of America.
The Respondent is Polanski, Ul. Dietla 13/2, Krakow, PL 31-031, Poland. Administrative and billing contact for the domain name: Victor Lashenko.
2. The Domain Name and Registrar
The domain name in issue is <william-sonoma.com> (hereafter "the domain name").
The domain name was registered with BulkRegister, 7 East Redwood Street, Third Floor, Baltimore, Maryland, 21202, United States of America.
The domain name was registered on or about September 10, 2000.
3. Procedural History
(1) The Complaint in Case No. D2001-0236 was filed in email form on February 13, 2001, and in hardcopy on February 15, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint was not filed;
- The Respondent was appropriately served with a Notice of Default; and that
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.
(5) The date scheduled for issuance of a decision is: April 5, 2001.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its marks
The Complainant, Williams-Sonoma, Inc., is an American retailer of cookware and associated products. The Complainant operates nearly 200 retail stores throughout the United States under the "Williams-Sonoma" brand. Various housewares and kitchenware products are offered through the Complainantís stores. The Complainant also offers many products for sale through a mail-order catalog business, that sends out catalogs to approximately 2.5 million U.S. homes every month. Annual dollar sales of products total in the hundreds of millions of dollars.
The Complainant is the registered proprietor of a number of United States trademarks and service marks, all for the mark "WILLIAMS-SONOMA"; including No. 1777864 (class 16); No. 2292343 (classes 30 and 31); No. 2294193 (classes 30 and 31); No. 2375190 (class 25); No. 2383426 (class 24); 2353758 (class 35); No. 2410528 (class 35). The Complainant also owns trademark and service mark registrations for the WILLIAMS-SONOMA mark in Australia, Hong Kong, Japan, Korea, Singapore, the European Community and New Zealand and has several trademark and service mark applications for the mark pending in other countries. (Hereafter all of the registrations will be referred to as "the Complainantís marks")
B. The Respondent
According to the Whois database of the concerned registrar, BulkRegister, the Respondent in this administrative proceeding is "Polanski", of the address given above. No Response was filed and so no further information is known about the Respondent.
C. The Domain Name
The <william-sonoma.com> domain name resolves to a site located at <http://www.centerfind.com/foo/> which offers commercial services such as credit card enrolment, domain registration and sports betting.
5. Partiesí Contentions
A. The Complainantsí assertions
The Respondent's domain name is identical or confusingly similar to the Complainantís mark. The Complainant asserts:
(1) The domain name is virtually identical to the Complainantís mark.
(2) The fact that the Respondentís domain name does not have an Ďsí at the end of "WILLIAM" is of no consequence. Many consumers are unaware that there is an Ďsí at the end of "WILLIAM" because there is an Ďsí immediately following, at the beginning of the next word. Thus, when inputting the Complainantís well-known mark and store name WILLIAMS-SONOMA as a domain name or in a search, the consumer may input <williams-sonoma.com> or <william-sonoma.com>. Thus, the Complainantís WILLIAMS-SONOMA mark and the domain name at issue are virtually identical.
The Respondent has no legitimate interest or rights in the domain name. The Complainant asserts:
(1) WILLIAMS-SONOMA is an arbitrary mark and therefore distinctive and unique;
(2) WILLIAMS-SONOMA is a composite mark which combines two completely unrelated terms, thereby making the mark even more arbitrary and distinctive. The distinctiveness of the WILLIAMS-SONOMA mark is further buttressed by the great consumer awareness of the mark resulting from its long and extensive use;
(3) The Complainant has never authorized or licensed any use of the WILLIAMS-SONOMA mark by the Respondent. Since the WILLIAMS-SONOMA mark is unique to the Complainantís stores and products, and the Complainant has never authorized any use of the mark by the Respondent, the Respondent cannot be said to have legitimately chosen the <william-sonoma.com> domain name unless he was seeking to create an impression of an association with the Complainant. Since there is no such authorized association, the Respondentís interests in <william-sonoma.com> cannot be said to be legitimate;
(4) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name "without intent for commercial gain to misleadingly divert consumers" pursuant to Paragraph 4(c)(iii) of the Policy. In fact the reverse is true, on the basis of the information detailed in section 4.C. supra.
The Respondent registered the domain name and is using it in bad faith. The Complainant asserts:
(1) The Complainant possesses various service mark and trademark registrations for the WILLIAMS-SONOMA mark. Furthermore, the WILLIAMS-SONOMA mark is inherently distinctive and as a result of its long and extensive use has acquired distinctiveness among consumers such that it is one of the most well known retail store and catalog brands. In light of this, it is "not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name." (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). It is similarly inconceivable that Respondent chose this domain name, which is virtually identical to Complainantís inherently distinctive and highly publicized WILLIAMS-SONOMA mark, without prior knowledge of such mark. This evidences that Respondent registered <william-sonoma.com> in bad faith;
(2) Under paragraph 4(b)(iv) of the Policy, bad faith registration and use of a domain name may also be found where the Respondent has used the domain name in an attempt "to attract, for commercial gain, Internet users to [respondentís] web site or other on-line location, by creating a likelihood of confusion of the complainantís mark as to the source, sponsorship, affiliation or endorsement of [respondentís] web site or location." Respondent has engaged in such behavior;
(3) It appears that the Respondent in this matter has also engaged in similar behavior in the past. See Marriott International, Inc. v. Polanski, FA0009000095647, (Nat. Arb. Forum October 24, 2000) The Respondent, Polanski, registered the domain MARIOTTREWARDS.COM that hyperlinked to another webpage that offered hotel and travel services. Victor Lashenko, the listed administrative and technical contact for the WILLIAM-SONOMA.COM domain name registration, appears to have also been involved in a similar proceeding where the disputed domain name hyperlinked to a web site with a pop-up dialog box with a message similar to the pop up dialog box which appears when one is hyperlinked from the WILLIAM-SONOMA.COM domain name. See Geoffrey, Inc. v. Babys Russian, WIPO Case No. D2000-1011. Thus, the Respondent has acted in bad faith as exemplified by his "prior history of registering domain names consisting of misspellings of widely-known marks."
Accordingly the Panel should order that the domain names be transferred to the Complainant.
B. The Respondentís assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its WILLIAMS-SONOMA marks, in multiple classes within the US and internationally. I conclude that the Complainant Ė as registered proprietor of the WILLIAMS-SONOMA marks Ė has established the first requirement of this paragraph.
The second requirement is that the domain name be identical or confusingly similar to the marks. Here the Complainant asserts that the domain name is "virtually identical" to its marks. However, "virtually identical" is not a term of art in UDRP administrative proceedings, and the requirements under Paragraph 4.a.(i) are that the domain name be identical or confusingly similar. The domain name is not identical, but it is similar. The only difference between the name and the mark is the deletion of the "s" prior to the hyphen in the domain name. Does this amount to a confusingly similar name? The Complainantís assertions go to this point: it argues that "Many consumers are unaware that there is an Ďsí at the end of "WILLIAM" because there is an Ďsí immediately following, at the beginning of the next word." This is clearly true. The absence of the "s" in this case does not alter the obvious confusing similarity between the domain name and the Complainantís marks. I conclude that the domain name is confusingly similar to the Complainantís marks.
The Complainant has shown that it has rights in trade marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5.
Many of the Complainantís assertions go to the requirements under Paragraph 4.c of the UDRP. This is appropriate, since, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
"(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. In fact, one piece of evidence specifically negatives any assumption of legitimate use by the Respondent. The domain name resolves to a site located at <http://www.centerfind.com/foo/> which offers commercial services such as credit card enrolment, domain registration and sports betting, as described in Section 4.C. supra. Clearly the Respondent is seeking to gain advertising or other revenues from mis-typed domain names. This evidence, together with the absence of other evidence in the Respondentís favor, removes any need to consider more closely whether the Respondent has any rights or legitimate interest in the name.
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
The Respondent registered and is using the domain name in bad faith.
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Paragraph 4.b. of the UDRP provides exemplar scenarios which will be sufficient to establish the requirements of Paragraph 4.a.(iii). Pursuant to paragraph 4.b.(iv) where the Respondent has used the domain name in an attempt "to attract, for commercial gain, Internet users to [the Respondentís] web site or other on-line location, by creating a likelihood of confusion of the complainantís mark as to the source, sponsorship, affiliation or endorsement of [respondentís] web site or location", bad faith will be established. As explained in the previous section, this has occurred here. The Respondent exploits mis-typings of the Complainantís trade mark. This activity falls clearly into the exemplar of Paragraph 4.b.(iv), and no further analysis is necessary.
I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.
The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name <william-sonoma.com> be transferred forthwith to the Complainant.
Dated: April 5, 2001