WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. v. Williams Onoma
Case No. D2001-0462
1. The Parties
The Complainant is Williams-Sonoma Inc., a corporation organised and existing under the laws of the State of California with its principal business located at 3250 Van Ness Avenue, San Francisco, California 94109, U. S. A.
The Respondent is, according to contact details from the Registrantís WHOIS database, Williams Onoma, Sirenevii Bylvar 23, St Petersburg, RU 201332, Russia.
2. The Domain Name
The domain name at issue is <williamsonoma.com>, registered with BulkRegister.com, 7 East Redwood Street, Third Floor, Baltimore, MD21202, U.S.A., on October 10, 2000.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 30, 2001. Its receipt was acknowledged to the Complainant by the WIPO Center on April 3, 2001, and it was there received in hardcopy form on April 5, 2001. On the day before, the WIPO Center requested and received a Registrar Verification issued by BulkRegister. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), a Notification of Complaint and Commencement of Administrative Proceeding to the parties and BulkRegister was issued on April 9, 2001, followed by a Response Default Notification on April 30, 2001.
The Complainant chose to have the dispute decided by a single-member Administrative Panel. There having been no response to the complaint, the Panel was properly constituted on May 8, 2001, the formal date set for commencement of this administrative proceeding. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated May 7, 2001. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on May 8, 2001, indicating as single panelist Mr. G. Karnell.
When reviewing the case file the Panel noticed that the Respondent had been incorrectly named as "Serenevii Bylvar 23", whereas, according to the Registrar Verification, the registrant is "Williams Onoma", "Serenevii Bylvar 23" being the street address of the registrant. The date scheduled for the issuance of the Panelís decision had originally been set to be May 21, 2001. Now, the Panel was obliged to request the Complainant to amend its complaint on May 15 at the latest. Accordingly, the Panel issued on May 11, 2001, a Procedural Order, with a request as mentioned and instructions to the Complainant, the WIPO Center and the Respondent about the further handling of communicative matters and resetting, pursuant to Rule 10 (c), the deadline for issuing a decision in the case to June 16, 2001. The Order, together with appropriate documents, was duly expedited to the Complainant and the Respondent. The latest day for a response was set to be June 3, 2001.
The Complainant duly amended its complaint as requested on May 14, 2001. This First Amended Complaint was transmitted to the Respondent and to the Registrar by e-mail from the Complainant on May 14, 2001, and further communicated in accordance with the Rules on May 15, 2001. It contains also some additions to the Legal Grounds mentioned in the initially registered complaint. These parts have been included in the summary of Complainantís contentions under 5. A. here below.
4. Factual Background
In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the courts where the Registrar has its principal office.
The Registrar Verification states that the Uniform Policy applies to the domain name at issue.
5. Partiesí Contentions
The Respondentís domain name <williamsonoma.com> is virtually identical with Complainantís mark WILLIAMS-SONOMA. The sole differences are the gTLD .com and that Respondentís domain name does not have an "s" at the end of "WILLIAM" and a hyphen between the two words.
WILLIAMS-SONOMA is the combination of the founderís of WILLIAMS-SONOMA Inc. last name, Williams, and the location where the company was founded, Sonoma. The combination has been registered for seven trade marks and service marks in the U. S. and a number of registrations of the same mark exist in Australia, Hong Kong, Japan, Korea, Singapore, the European Community and New Zealand. It is also the owner of the domain name registration for <williams-sonoma.com>. The company operates some 200 retail stores in the U.S., offering mainly houseware and kitchenware products, under WILLIAMS-SONOMA signs. Products sold carry the trademark. There are catalogues about products of the kind, marked WILLIAMS-SONOMA, which are sent to ca. 2.5 million U. S. homes every month. Complainant operates a web site on which it sells kitchenware and houseware via the Internet under the mark. Respondentís possession of its domain name prevents the Complainant from controlling its mark on the Internet.
The Respondent has no rights or legitimate interest in the domain name <williamsonoma.com>. The WILLIAMS-SONOMA mark is arbitrary, distinctive and unique, subject to great consumer awareness. The Respondent has not acquired any rights of use to the mark by licensing or else. By choosing the domain name the Respondent has sought to create an impression of association with the Complainant. Since no authorised association exists, Respondents interest in its domain name cannot be legitimate. The Respondent takes advantage of consumersí known disposition to misspell domain names to divert Internet traffic by hyperlinking the www.williamsonoma.com domain address to a site located at the domain name www.centerfind.com/food which offers commercial services such as credit card enrolment, domain registration and sports betting, thereby taking advantage of domain name misspellings to divert traffic to a site where commercial gain can be made. The Respondent has not been commonly known by the mark or domain name. Respondent does not have any rights or legitimate interests in the domain name despite the fact that its name as registered is Williams Onoma. The hyperlinked site www.centerfind.com/food/ and its services bear no relation to the Respondentís name.
The address of the Respondent has figured in an earlier domain name case, before the National Arbitration Forum on October 24, 2000, Claim Number: FA 0009000095647, MARRIOTT INTERNATIONAL, Inc. v. (as indicated by the Complainant) Sirenevii Bylvar 23. In that case the name of the Respondent was Polanski. In that case like in the present one the Respondent used its domain name, <mariottrewards.com>, by routing Internet traffic to commercial web sites that promote third party companies which provide diverse services. <mariottrewards.com>,was, like in the present case, registered with BulkRegister. The domain name was considered to be nearly identical to the famous marks MARRIOTT and MARRIOTT REWARDS and to be confusingly similar to other MARRIOTT marks and domain names. It was found to have been registered and used in bad faith upon a finding of no rights or legitimate interests on the part of the Respondent. Furthermore the Complainant has also raised a complaint under ICANN rules related to the domain name WILLIAM-SONOMA.COM Ė Respondent again Polanski Ė WIPO Case No. D2001-0236 Ė also a case about hyperlinking to www.centerfind.com/foo[d]/. What is more, the administrative contact for www.williamsonoma.com, Solncev Michail, was administrative contact in WIPO Case No. D2000-1336, equally relating to hyperlinking intended to suggest an affiliation between Respondentís and Complainantís sites.
The Respondent has registered the domain name <williamsonoma.com> and uses it in bad faith. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name. The Respondent could not have chosen its domain name without prior knowledge of Complainantís mark. The Respondent has attempted to attract, for commercial gain, Internet users to its web site and 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. The Respondent maintains a hyperlink site under its domain name, which exploits consumer misspelling of Complainantís mark to misdirect web traffic to another online commercial location. Also, after leaving the Centerfind website, a browser receives several "spam" attachments or pop-ups of various female celebrities and other promotional material, continuing even after signing off the Internet. The Centerfind site also promotes links to sites for shopping, food and recipes, such goods and services being similar to those offered by Williams-Sonoma at its web site. The Respondent appears to have been engaged in similar behaviour in the past, having thereby established a "prior history of registering domain names consisting of misspelling of widely-known marks".
The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the Administrative Panel transfer the domain name <williamsonoma.com> to the Complainant.
There has been no response from the Respondent.
6. Discussion and Findings
6.1 The domain name <williamsonoma.com> is confusingly similar to the registered trade marks WILLIAMS-SONOMA, notwithstanding the added gTLD .com and the fact that the name contains a hyphen between its two words and does show only one S where the trade marks show two, separated by the hyphen.
6.2 Respondent has not answered to the complaint, neither when sent to its address with no indication of the Respondents name nor within the 20 days from the formal notification given to the Respondent in person, as indicated by the Registrar, on account of the Procedural Order of May 11, 2001, and the communication of the First Amended Complaint. The Respondentís name has not been evidenced to belong to a person carrying that name, nor to any commercial enterprise named Williams Onoma. The Panel finds reason to believe that the name of the Respondent has been chosen just in order to render credibility to its registration and to make possible an intended use, such as alleged by the Complainant, of the domain name. Regarding any possible rights and legitimate interests relating to the domain name the Respondent has failed to shown evidence of such rights or interest. The Panel concludes that there are none.
6.3 The Panel concludes from Complainantís account of earlier cases related to the business sphere of the Respondent that the differences in names under which the domain name registrations in the cases have taken place shall be disregarded when deciding on the issue of bad faith in the present case.
The decision in the MARRIOTT case was based upon a complaint notified to the address of the Respondent in the present case on September 26, 2000, with a deadline for response set to October 16, 2000. The notification must have reached the Respondentís address by the time when it had its present domain name registered.
Other cases adduced by the Complainant let believe that the Respondent has acted and acts within a setting, local and personal, characterised by systematic behaviour in bad faith.
The Panel does not believe that the Respondent has chosen its domain name without knowledge of WILLIAMS-SONOMA. The Respondent has registered and used its domain name in an intentional attempt to attract for commercial gain Internet users to its web site and by hyperlink to another commercial online location (Centerfind), with effects that must be considered to be undesired by anyone attempting to reach a company site of WILLIAMS-SONOMA, Inc., although some goods and services rendered may be similar. Such similarity will, moreover, in itself contribute to the effect of denigrating the trade mark. It creates such a likelihood of confusion with the Complainants mark as is mentioned under 4. b. (iv) of the Uniform Policy.
In view of its findings here above and the content of the First Amended Complaint the Panel disregards the circumstance that the Complainant, with evident knowledge when citing the MARRIOTT case in its complaint that the Respondent in that case was not, as the Complainant there indicated, Sirenevii Bylvar 23 (thus the same Serenevii Bylvar 23 as was initially indicated in the in the present case), but Polanski, thereby initially created the risk of an incorrect finding by the Panel about a greater similarity between the cases than was warranted by the facts.
6.4 The Administrative panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case.
The Administrative Panel requires that the registration of the domain name <williamsonoma.com> be transferred to the Complainant.
Dated: June 5, 2001