WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wayfair LLC v. Yang Hong Juan

Case No. D2018-0666

1. The Parties

The Complainant is Wayfair LLC of Boston, Massachusetts, United States of America (“United States”), internally represented.

The Respondent is Yang Hong Juan of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <wwwwayfair.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2018, 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. On March 29, 2018, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On April 3, 2018, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 3, 2018. 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 an e-commerce retailer based in the United States. The Complainant is the owner of United States trademark registration number 4143919 for WAYFAIR, registered on May 15, 2012, with a claim of first use in September 2011, specifying online retail store services in the field of, among other things, household furniture, in class 35. That trademark registration remains current. The Complainant obtained trademark registrations in other jurisdictions later. The Complainant operates its primary website at the address “www.wayfair.com”.

The Respondent is an individual ostensibly resident in China. The Respondent is the underlying registrant of the disputed domain name, which was registered in the name of a privacy service.

The disputed domain name was registered on April 17, 2011 and redirects to multiple websites, including online stores unrelated to the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s WAYFAIR trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has operated a website at the disputed domain name since April 17, 2011. Such date is after the date on which the Complainant filed an intent to use the mark WAYFAIR. Due to the similarity between “wwwwayfair.com” and “www.wayfair.com”, the disputed domain name is likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of the Respondent with the Complainant. The content of the website in which a consumer is directed is likely to cause confusion, to cause mistake, and to deceive as to the origins, sponsorship, or approval by the Complainant. The Respondent’s only use is to confuse consumers and prospective consumers of the Complainant who mistype “www.wayfair.com” or who otherwise show initial interest confusion in mistakenly going to the Respondent’s website.

The disputed domain name was registered and is being used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or comments. The fact that the website diverts consumers to Amazon.com Furniture demonstrates that the Respondent is attempting to confuse Internet users. Because the disputed domain name does not direct to a website maintained by the Respondent, or to a website for a company created by the Respondent, it is evident that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is located in the United States, that its pre-Complaint letter to the Respondent was written in English and that the disputed domain name is in the generic Top-Level Domain (“gTLD”) “.com”. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The Respondent did not indicate any wish to reply to the Complaint or otherwise to participate in this proceeding. The Panel notes that Notification of the Complaint was sent to the Respondent in English and Chinese. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence provided, the Panel finds that the Complainant has rights in the WAYFAIR trademark. Although the disputed domain name was registered prior to the trademark, the Panel notes that the text of paragraph 4(a)(i) of the Policy is in the present tense and does not specify that the Complainant must have had registered rights in its trademark at the time at which the disputed domain name was registered. The issue of the timing of the Complainant’s rights is relevant to the third element, considered below.

The disputed domain name contains the Complainant’s WAYFAIR trademark, preceded by the letters “www”. The WAYFAIR trademark remains recognizable within the disputed domain name. Moreover, the omission of a full stop between the “www” prefix and a domain name is a common typographical error. Accordingly, the addition of those letters without a full stop does not dispel confusing similarity between the disputed domain name and the trademark that follows. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659.

The disputed domain name also includes the gTLD suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

“(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

“(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The disputed domain name redirects to other websites, including online stores unrelated to the Complainant. There appears to be no reason to register the disputed domain name <wwwwayfair.com> other than to take advantage of Internet users who mistype the website address “www.wayfair.com” (so-called “typosquatting”). That does not constitute a bona fide offering of goods or services for the purposes of the Policy. This use is either for the commercial gain of the Respondent or the operators of the websites to which the disputed domain name redirects. That is not a legitimate noncommercial or fair use of the disputed domain name. The Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.

The Respondent’s name is “Yang Hong Juan”, not “wwwwayfair”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards registration, the disputed domain name was registered on April 17, 2011, over a year before the Complainant obtained registration of its WAYFAIR trademark in the United States on May 15, 2012 and several months before the Complainant’s claimed first use of its trademark in September 2011. However, the trademark application was filed earlier based on intent to use (on March 3, 2011 according to the Complaint; on February 28, 2011 according to the United States Patent and Trademark Office trademark database). In any case, the disputed domain name was registered after the Complainant filed its trademark application but before it acquired trademark rights.

The Panel does not consider the prior registration of the disputed domain name to be fatal to the Complainant’s claim. The disputed domain name <wwwwayfair.com> wholly incorporates the Complainant’s WAYFAIR trademark, which is a coined word, and its registration is a case of typosquatting of the website address “www.wayfair.com”. Once the Complainant had applied for its trademark, it was very likely, as an e-commerce retailer, to use that address for its official website. There appears to be no plausible reason to register the disputed domain name other than to take advantage of Internet users who mistype that address. These facts indicate that the Respondent registered the disputed domain name in anticipation of the Complainant’s trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.8.2; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The Respondent has not come forward to assert otherwise. Therefore, in this exceptional scenario, the Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards use, the disputed domain name is used to attract Internet users who misspell the Complainant’s official website address and redirect them to other websites, including online stores. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites to which it resolves. This use is intentional and either for the Respondent’s own commercial gain, if it is paid to direct traffic to other websites, or for the commercial gain of the operators of those other websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <wwwwayfair.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: May 7, 2018