WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Marketing Corp. v. Andres Martinez

Case No. D2013-1505

1. The Parties

The Complainant is Artemis Marketing Corp. of Seffner, Florida, United States of America (“US”), represented by Quarles & Brady LLP, US.

The Respondent is Andres Martinez of Bogota, Colombia.

2. The Domain Name and Registrar

The disputed domain name <roomstogooutlet.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 5, 2013.

The Center verified that the Complaint together with the amended 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 September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2013.

The Center appointed James A. Barker as the sole panelist in this matter on October 11, 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 is the owner of marks registered with the United States Patent and Trademark Office for ROOMS TO GO (registration Nos. 1,756,239; 1,801,702; 2,396,055; 3,586,876; and 3,587,032.), including on the principal register, registered as early as 1993.

The Complainant, through its licensees, operates retail furniture stores and sells furniture under the ROOMS TO GO trademark throughout the US, and on the Internet at its website at “www.roomstogo.com”.

In 2011, the approximately 125 stores operated by Complainant’s licensees and franchisees had estimated sales of USD 1.5 billion, and was ranked at the end of 2012 as the No. 3 furniture store retailer in the US by Furniture Today magazine. A copy of a relevant excerpt of the Furniture Today article was attached to the Complaint.

The Complainant’s registered mark predates the creation of the disputed domain name. The disputed domain name was created on June 19, 2011, according to the ‘creation date’ in the WhoIs record. As confirmed by the Registrar, the disputed domain name was first registered to a privacy service. This meant that the name of the true registrant was not discoverable by the Complainant until after the Complaint was filed, and the relevant details confirmed by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant makes allegations under paragraph 4(a) of the Policy, namely that:

(a) the disputed domain name is confusingly similar to the Complainant’s ROOMS TO GO trademark.

(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent has never been authorized to use its mark; has not used or made preparations to use the disputed domain name in connection with a bona fide offering; is not making a legitimate non-commercial or fair use of the disputed domain name; and the disputed domain name does not correspond to the Respondent’s name.

(c) the disputed domain name was registered, and is being used, in bad faith. In particular, the Respondent registered the disputed domain name with the intent of creating a commercial web page with sponsored links that misuses Complainant’s famous trademark by taking advantage of Internet users seeking the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first matter which the Complainant must demonstrate is that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has demonstrated that it has registered rights in its ROOMS TO GO trademark. Further, although not referenced in the Complaint, the Complainant has been recognised as having rights in its ROOMS TO GO mark in previous proceedings under the Policy: see Artemis Marketing Corp. v. YellowfinState, LLC, WIPO Case No. D2013-0059.

The issue then is whether the disputed domain name is confusingly similar to the Complainant’s mark.

It is well-established that the “.org” extension is not relevant for the purpose of determining this question, because it is a necessary and functional element of the domain name. As such, the only relevant difference between the Complainant’s mark and the disputed domain name is the addition of the descriptive word “outlet”.

The addition of generic words to a mark has been considered in a large number of UDRP decisions under the Policy. There are also a large number of such cases which particularly considered the addition of the term “outlet” as suffix to a complainant’s mark, including cases decided by this Panelist (see Thomas Wuttke v. Fundacion Private Whois, WIPO Case No. D2012-2033).

Most commonly the addition of the term “outlet” appears to have been added where the mark in question was associated with goods, as in this case. Panels have commonly found that the addition of this generic term to a disputed domain name does little to distinguish it from a distinctive mark. As noted by one panel “the generic term ‘outlet’ is commonly used in the retail industry to designate a type of store where manufacturers sell products directly to consumers at discounted prices. The addition of the generic word “outlet” to the Complainant’s [trademark] may lead Internet users to believe that the Complainant operates the website associated with the disputed domain name and sells products through this website.” See Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator, WIPO Case No. D2008-0154.

Similar circumstances exist in this case. The Complainant’s mark is wholly incorporated in the disputed domain name. The addition of the term “outlet” may only serve to potentially reinforce the association with the Complainant’s mark, by creating the misleading impression that the domain name is associated with an “outlet” for the Complainant’s goods.

For these reasons, the Panel finds that the Complainant has established this first element.

B. Rights or Legitimate Interests

The next issue the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name. What a complainant must establish in this respect is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). That WIPO Overview 2.0 is based on some 20,000 cases decided under the Policy, and has been published and maintained to identify, as much as possible, consensus among UDRP decisions. Paragraph 2.1 of the WIPO Overview 2.0 states the panel consensus on this question as follows:

“a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

In this case, the Panel finds that the Complainant has presented a bare prima facie case against the Respondent. The Respondent has chosen not to respond to the Complaint. There is no evidence in the case file which suggests to the Panel that the Respondent might have a right or legitimate interest in the disputed domain name.

The Complainant provided evidence of the Respondent’s website as it was on July 29, 2013. On that day, the Respondent’s website prominently stated that it was a “Rooms to go outlet” and purportedly featured furniture for sale. The Complainant argues that the Respondent is deceptively leading consumers to believe that it is affiliated in some way with the Complainant. The Complainant states that the Respondent is not and has never been authorized to use its mark.

By choosing to submit no reply, the Respondent has provided no explanation or evidence as to whether there is a legitimate connection is between the disputed domain name and its activities. From looking at the Respondent’s website, it is difficult to imagine that there could be one. The evidence of the Respondent’s website suggests strongly that the Respondent is, as the Complainant argues, deliberately seeking to mislead consumers looking for the Respondent’s products. The Respondent provided no alternative explanation.

In these circumstances, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use may be provided in one of the following circumstances:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

In this case, the evidence is strongly suggestive of the last of these circumstances. The Respondent’s website was deliberately constructed to suggest that it is an “outlet” for the Complainant’s products. This also, and necessarily, indicates that the Respondent was aware of the Complainant’s mark and sought to take advantage of it. The Complainant has stated that the Respondent has no authorization or license to do so. The Respondent has also sought to shield its identity by registering the disputed domain name to a privacy service.

This evidence suggests that the disputed domain name has been intentionally used in a deliberate attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website and the product the on a website.

The Panel therefore finds that the Complainant has established that the disputed domain name was registered and has been used in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <roomstogooutlet.org> be transferred to the Complainant.

James A. Barker
Sole Panelist
Date: October 25, 2013