WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Artemis Marketing Corp. v. YellowfinState, LLC
Case No. D2013-0059
1. The Parties
The Complainant is Artemis Marketing Corp. of Seffner, Florida, United States of America, represented by Quarles & Brady LLP, United States of America.
The Respondent is YellowfinState, LLC of Toulouse, France.
2. The Domain Name and Registrar
The disputed domain name <roomtogo.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, 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 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 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2031.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 14, 2013. 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 Artemis Marketing Corporation, through its licensees, operates retail furniture stores and sells furniture under the trade mark ROOMS TO GO, throughout the United States of America, and on the Internet at its website “www.roomstogo.com”.
In 2011 approximately 125 stores operated by the Complainant’s licensees and franchisees had estimated sales of USD 1.50 billion and was ranked the number three (3) furniture store retailer in the United States of America by Furniture Today Magazine. A copy of a relevant article from Furniture Today is annexed to the Complaint at Annex 7.
As a result of the Complainant’s extensive marketing of its goods under the mark ROOMS TO GO and other services, the mark ROOMS TO GO has become recognized by consumers throughout the United States as designating the Complainant as the origin and source of the Complainant’s products.
The Complainant is the owner of a number of trade marks for the mark ROOMS TO GO including United States registrations Nos. 1756239, 1801702, 2396055, 3586876 and 3587032. The registrations are valid and subsisting. Copies of the Certificates of registration are attached as Annex 4 to the Complaint. Corresponding assignments of the registrations are annexed at Annex 5 to the Complaint.
In the absence of a Response and any evidence to the contrary, the Panel accepts that the above facts are true. It proceeds to decide this Complaint on the basis of this evidence adduced by the Complainant.
5. Parties’ Contentions
1. The disputed domain name is confusingly similar to the Complainant’s trade mark ROOMS TO GO.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, there is no evidence that the Respondent has been authorized to use the trade mark ROOMS TO GO nor any other evidence of legitimate use.
3. The disputed domain name was registered and used in bad faith. The Complainant submits that the domain name was registered in bad faith in order to create a “parked page” with sponsored links that misuses the Complainant’s mark by taking advantage of Internet users who will type the particular goods or services they are seeking directly into their browsers rather than using an Internet search engine. The Respondent is using the disputed domain name to attract consumers for commercial gain by deceptively leading consumers to believe that the Respondent is affiliated in some way with the Complainant. The Complainant relies upon a printout of the Respondent’s website at Annex 8 to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant of its United States trade mark registrations for the mark ROOMS TO GO. Registration of the Complainant’s mark predates he registration of the disputed domain name. There is no doubt to the Panel that the disputed domain name is confusingly similar to the mark ROOMS TO GO. Accordingly, the Complainant succeeds under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no evidence before the Panel of any rights or legitimate interests in respect of the disputed domain name by the Respondent. Based upon the evidence contained in Annex 8 of the printout of the Respondent’s website, the Panel accepts the submissions of the Complainant that the Respondent has registered the disputed domain name in order to mislead and divert consumers by attracting them through the confusingly similar domain name and then collecting revenue by featuring sponsored links on the webpage at the disputed domain name.
In these circumstances, as the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds for the Complainant that the Respondent has no rights or legitimate interest in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel relies upon the evidence of the Respondent’s website as set out at Annex 8 to the Complaint. In the Panel’s view, there is no doubt that the Respondent is using the website for the purpose of offering for sale furniture through the links on the website. Given the Complainant’s trade mark rights, in the Panel’s view, it follows that the Respondent is taking advantage of Internet users who, being aware of the Complainant’s trade mark rights, will assume that there is an association between the Complainant and the owner of the website. In the Panel’s view this is evidence that the disputed domain name is being used to attract consumers for commercial gain by deceptively leading them to believe that the Respondent is, as owner of the website, affiliated in some way with the Complainant or that its website is sponsored, approved or endorsed by the Complainant.
In the Panel’s view this is sufficient evidence of bad faith under paragraph 4(b)(iv) of the Policy and accordingly the Complainant succeeds under paragraph 4(a)(iii) of the Policy.
For all the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <roomtogo.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: February 28, 2013