WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Living Spaces Furniture, LLC v. Theone Shat
Case No. D2011-0030
1. The Parties
The Complainant is Living Spaces Furniture, LLC of Rancho Cucamonga, California, United States of America, represented by Wood, Herron & Evans, LLP, United States of America.
The Respondent is Theone Shat of Srimahapot, Saraburee, Thailand.
2. The Domain Name and Registrar
The disputed domain name <livingspacesfurniture.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 7, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 7, 2011, GoDaddy.com, Inc. 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 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 11, 2011. 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 disputed domain name was registered on July 17, 2010.
The Complainant is a furniture retailer operating online and at onsite premises in a number of places in the United States of America (“US”). It is the registered owner of US Trademark No. 3,101,463 LIVING SPACES and is the applicant for registration in two pending applications for trademarks comprising the words “living spaces furniture” and a logo. In each case the Complainant claims first use in commerce from September 11, 2003. The Complainant is the owner of the domain name <livingspaces.com> and has operated an online retail furniture business at that domain name since 2007.
The disputed domain name resolves to a website headed “Living Spaces Funiture” (sic) and “Welcome to Living Spaces Furniture Online Shop”. The site advertises and depicts items of furniture for sale at <amazon.com> with links to the website at <amazon.com> and to the individual sites of furniture retailers offering items of furniture similar to those offered by the Complainant at its website.
The Panel notes that the Center has sent the Complaint to the Respondent by courier and by email to the postmaster at the disputed domain name and to the email address given for the Respondent and for the Administrative and Technical Contact for the disputed domain name. (No Billing Contact was supplied by the Registrar). The Center is therefore deemed to have discharged its responsibility under paragraph 2 of the Rules notwithstanding that none of those attempted deliveries was successful.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark LIVING SPACES and to the trademark LIVING SPACES FURNITURE in which it has common law, and pending registration rights. It contends that the inclusion of the word “furniture” in the domain name tends to further increase the likelihood of confusion with the Complainant's LIVING SPACES trademarks which it uses in connection with its trade in furniture.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that it has never assigned or licensed any rights in its trademarks to the Respondent and that the Respondent is not commonly known by the disputed domain name.
With respect to the Respondent's use of the disputed domain name, the Complainant submits that it is not legitimate noncommercial nor fair, and that its use is not a bona fide use.
The Complainant contends that as the owner of 32 domain name registrations the Respondent is an experienced domain name registrant and exhibits a pattern of registering domain names to prevent the owner of the respective trademark from reflecting the mark in a corresponding domain name. Complainant further contends that as at the date of registration of the disputed domain name in July 2010 the Respondent either had actual knowledge of the Complainant's rights in the LIVING SPACES trademarks or was willfully blind to such rights. The Complainant contends that a routine Internet search in 2010 would have disclosed its rights and reputation in the trademark LIVING SPACES:
The Complainant adopts the words of the panel in V&S Vin & Spirit AB v. Ooar Supplies, WIPO Case No. D2004-0962: “an experienced domain name registrant who does not conduct at least a basic search prior to registering a domain name is generally considered to [be] assume the risk of any knowledge such a search would produce.”
As evidence of the Respondent’s bad faith use of the disputed domain name, the Complainant points to its use in connection with a portal site linked to a website of one of the Complainant's competitors and contends that such use not only diverts traffic as a result of the likelihood of confusion but also benefits the Respondent by generating click-through commissions.
The Complainant further contends that the Respondent may have used false contact information in connection with the registration of the disputed domain name. It points to the Respondent's listed address and produces evidence tending to show that there is no place in Thailand corresponding to the address and postcode given for the Respondent in the WhoIs details for the disputed domain name. Further, it produces evidence to show that the phone number listed does not correspond to a number for either landline or mobile phone numbers in Thailand.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered rights in the trademark LIVING SPACES and has common law and pending registration rights in trademarks including the words “living spaces furniture”. The disputed domain name incorporates in their entirety both the LIVING SPACES trademark and the LIVING SPACES FURNITURE trademarks, the latter being distinguished from the former only by the addition of the descriptive word “furniture”.
The Panel therefore finds that the disputed domain name is substantially identical and/or confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has demonstrated that it has rights in the LIVING SPACES trademarks which were well established, known and readily discoverable from a time well prior to the date of registration of the domain name. The Panel accepts the Complainant's assertion that it has not assigned, licensed or otherwise authorized use of its trademarks by the Respondent and that the Respondent is not commonly known by the disputed domain name. Although the trademark LIVING SPACES may be said to carry some descriptive reference to the sale of furniture, in the light of the Complainant's demonstrated rights and reputation in its trademarks there is no apparent reason why the Respondent should choose to register a domain name incorporating the Respondent's trademarks other than to capitalize upon and trade off the Complainant's reputation in its trademarks.
As to the Respondent's use of the domain name prior to notice of the dispute, it is apparent from the screen shots annexed to the Complaint that the website at the disputed domain name provides links to a website offering furniture in competition with the Complainant. The only reasonable assumption which can be drawn from that evidence is that the use is commercial and that the Respondent derives revenue either by way of commission or pay-per-click payments from persons linked to the website. It is also apparent that persons are likely to be attracted to the Respondent's website as a result of confusion caused by the substantial identity of the disputed domain name to the Complainant's trademarks. Such use of the disputed domain name cannot be regarded as use in connection with a bona fide offering of the goods or services offered at the website. Such use is clearly in contravention of the Complainant's common law and statutory rights and, as stated by the learned panel in Hoffmann-La Roche Inc. v. US Online Pharmacies, WIPO Case No. D2006-0348, “[t]he unlawful use of another's trademark cannot be considered bona fide with respect to the offering of goods”.
The Complainant has therefore demonstrated a strong prima facie case of the absence of the Respondent's rights or legitimate interests in the disputed domain name and the Respondent has made no attempt to rebut that prima facie showing.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the reasons discussed in paragraph 6.B above, neither the registration of the disputed domain name nor its subsequent use can be regarded as being in good faith. The only reasonable conclusion to be drawn from the contents of the Respondent's website is that the Respondent has knowingly or recklessly registered the disputed domain name in disregard for the Complainant's rights and has, in the words of paragraph 4(b)(iv) of the Policy, “intentionally attempted to attract, for commercial gain, internet users to [the] web site …, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of [the] web site”.
As further evidence of bad faith registration of the disputed domain name, the Complainant has made a documented showing of the Respondent's use of a false address and telephone number in the registration of the disputed domain name. The Panel also notes that both courier delivery and electronic transmission of the Complaint to the Respondent were unsuccessful, further indicating that the addresses given by the Respondent were fictitious.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <livingspacesfurniture.net> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: February 17, 2011