WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. dba Pottery Barn v. Party Night Inc.
Case No. D2003-0788
1. The Parties
The Complainant is Williams-Sonoma, Inc. dba Pottery Barn, San Francisco, California, United States of America, represented by Deborah Klaus, United States of America.
The Respondent is Party Night Inc., Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <pottarybarn.com>; <pottreybarn.com> and <pottrybarn.com> were registered with Key-Systems GmbH dba domaindiscount24.com between March 10 and 17, 2002.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003. On October 8, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On October 14, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 7, 2003.
The Center appointed Cecil O.D. Branson as the Sole Panelist in this matter on November 13, 2003, with a decision date set as November 27, 2003. 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
4.1 The Complainant has registered the following U.S. Trademark and Service Mark Registrations: 655,819 in international class 21 for the mark THE POTTERY BARN and Design; 959,383 in international class 21 for the mark THE POTTERY BARN; 976,194 in international class 21 for the mark THE POTTERY BARN; 976,344 in international class 8 for the mark THE POTTERY BARN and Design; 984,693 in international class 42 for the mark THE POTTERY BARN; 2,021,077 in international class 42 for the mark POTTERY BARN; and 2,022,234 in international class 21 for the mark POTTERY BARN and Design. Complainant also owns trademark and service mark registrations for the POTTERY BARN mark in Australia, Canada, Hong Kong, Japan, Korea and New Zealand and has several trademark and service mark applications for the mark pending in other countries. Complainant is also the owner of the domain name registration for <potterybarn.com>.
4.2 The Complainant operates over 100 retail stores throughout the U.S. and Canada under the POTTERY BARN service mark and brand concept. Complainant offers various products through POTTERY BARN stores, sends its POTTERY BARN catalogs to millions of U.S. homes every month with dollar sales of products under the POTTERY BARN mark totaling in the hundreds of millions.
4.3 Little is known about the Respondent as it failed to file a Response; although, it is known that it registered the domain names in question between March 10 and 17, 2002.
5. Partiesí Contentions
5.1 Complainant asserts that Respondentís domain names are virtually identical to Complainantís POTTERY BARN mark as, if one removes the ".com," one is left simply with "pottrybarn," "pottreybarn" and "pottarybarn." Thus, in each case a single letter is either removed or transposed and, given that typos, including dropped, transposed or errant letters are common when typing a URL, the consumer accidentally inputs identical letters to those of Respondentís domain names.
5.2 Complainant says it has never authorized or licensed any use of the POTTERY BARN mark by Respondent nor has it authorized any use of the mark by Respondent, and therefore Respondent cannot be said to have legitimately chosen the <pottrybarn.com>, <pottreybarn.com> and <pottarybarn.com> domain names unless it was seeking to create an impression of an association with Complainant. Since there is no such authorized association, the Complainant states that the Respondentís interests in the <pottrybarn.com>, <pottreybarn.com> and <pottarybarn.com> cannot be said to be legitimate.
5.3 Further, the Complainant asserts that there being no evidence that Respondent is making a legitimate noncommercial or fair use of the domain names "without intent for commercial gain to misleadingly divert consumers" pursuant to paragraph 4(c)(iii) of the Policy, but is rather taking advantage of consumersí known disposition to misspell or mistype domain names to divert Internet traffic by hyper-linking the domain names in question by offering consumers sexually-oriented materials, and giving consumers a "pop-up" window which results in offers of various services such as gambling, personal ads, etc. The Complainant is not aware of any evidence demonstrating that Respondent has ever been commonly known by the mark or domain names.
5.4 Complainant pleads that Respondent registered the domain names in question and is using them in bad faith contrary to paragraph 4(a)(iii) of the Policy due to the following circumstances:
(i) The POTTERY BARN 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," and that it is similarly inconceivable that Respondent chose these domain names, which are identical to Complainantís inherently distinctive and highly publicized POTTERY BARN mark, without prior knowledge of such mark.
(ii) Complainant relies specifically on paragraph 4(b)(iv) of the Policy, and says that the Respondent has used the domain names in an attempt "to attract, for commercial gain, Internet users to [Respondentís] website 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] website or location."
(iii) Complainant further asserts that the Respondent, by maintaining a "hyperlink" site under the <pottrybarn.com>, <pottreybarn.com> and <pottarybarn.com> domain names, exploits consumer misspelling and mistyping of Complainantís trademark to misdirect web traffic to another online commercial location, which Complainant asserts amounts to bad faith.
5.5 The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
6.1 The Rules provide in paragraph 5(e):
If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
6.2 "A party which has within its power reasonable access to evidence of material facts is subject to having an adverse inference drawn from its failure to produce such evidence. This principle is subject to the requirement that for the Complainant to succeed, it must prove each such material fact on the preponderance of the evidence. In addition, it is the view of this Panel that factual assertions made by the Complainant may be used against the Respondent, but a Panel ought not to draw any inferences from a default other than those which have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence."
6.3 In order to obtain the relief requested under the Policy, the Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) of the Policy are present:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
A. Identity or Confusing Similarity to a Trademark
6.4 The Panel finds that there is identity or confusing similarity as contended by the Complainant in paragraph 5.1 above.
B. Rights or Legitimate Interests
6.5 While paragraph 4(a) of the Policy requires the Complainant to prove each of the three material elements, including that the Respondent has no legitimate interest in respect of the domain name, this presents problems as here where the Respondent does not participate in the proceedings, as Complainant will have no way of knowing what particular rights or legitimate interests will be advanced. It is now generally accepted that the interaction between paragraph 4(a)(ii) and 4(c) is such that the obligation is on the Complainant to make a prima facie case and that having been done, it is for the Respondent to demonstrate the contrary. It has also been said that failure of a Respondent to come forward with such evidence is tantamount to admitting the truth of Complainantís assertions in this regard. This Panel finds that it is appropriate to adopt this reasoning, given the circumstances of this case, and finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name.
C. Registered and Used in Bad Faith
6.6 This Panel finds that there is a likelihood of confusion created through the use of the domain names in question and that it has been done "to attract, for commercial gain, Internet users to Respondentís website or other on-line location, creating a likelihood of confusion of the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís website or location," contrary to paragraph 4(b)(iii) of the Policy.
6.7 Hyper-linking and misdirection of web traffic has been found to constitute bad faith pursuant to the Policy.
6.8 The practice of registering and using slight misspellings of the Complainantís trademarks and deriving economic benefit therefrom, either by attracting users to Respondentís website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to these sites constitutes bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy.
6.9 For the above reasons, this Panel finds that the domain names <pottarybarn.com>, <pottreybarn.com> and <pottrybarn.com> have been registered and are being used in bad faith.
7.1 For the foregoing reasons, the Panel finds that the Complainant has satisfied the applicable standard of proof which must be met by it, which is a preponderance of the evidence.
7.2 The ruling of this Panel is that the registration of the domain names <pottarybarn.com>, <pottreybarn.com> and <pottrybarn.com> be transferred to the Complainant.
Cecil O.D. Branson, Q.C.
Dated: November 21, 2003