WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wayfair LLC v. Domain Admin, Whois Privacy Corp.
Case No. D2018-0672
1. The Parties
The Complainant is Wayfair LLC of Boston, Massachusetts, United States of America ("United States"), represented internally.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas.
2. The Domain Name and Registrar
The Disputed Domain Name <wayfait.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 26, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 14, 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, Wayfair LLC, is an American e-commerce company selling home furniture and decor items from more than 10,000 suppliers with offices and warehouses located in different countries, including the United States, Canada, Germany, and the United Kingdom of Great Britain and Northern Ireland.
The Complainant is the holder of trademarks consisting of WAYFAIR, registered in various countries and used in connection to its e-commerce business. The Complainant's trademark portfolio includes, inter alia, the following trade and service mark registrations:
- WAYFAIR, word mark registered with the United States Patent and Trademark Office (USPTO) under No. 4143919 on May 15, 2012 in class 35.
- WAYFAIR, word mark registered with the European Intellectual Property Office (EUIPO) under No. 1071993 on February 28, 2011 in class 35.
According to the information provided by the Registrar, the registrant of the Disputed Domain Name <wayfait.com> is Domain Admin, Whois Privacy Corp. The Disputed Domain Name was registered on January 16, 2013 using a proxy service. The Disputed Domain Name is currently used to redirect randomly to different e-commerce websites selling home furniture and related goods. The websites to which the Disputed Domain Name randomly redirects include the Complainant's own website as well as websites of its competitors.
On November 17, 2016, before initiating administrative proceedings, the Complainant sent an email to the Respondent's email address noting the Respondent of the potential infringement and demanding the transfer of the Disputed Domain Name for a one-time payment of 500 USD. In an email of January 24, 2018, the Complainant reiterated this request and stated that a failure to respond by February 1 would result in formal legal action to recover the Disputed Domain Name. The Complainant eventually sent a last reminder on February 2, 2018.
Having received no response to its multiple notices, the Complainant contacted the Registrar with an email dated February 21, 2018 to request the disclosure of the Respondent's name and contact details. The Registrar denied this request by stating that customer details would only be disclosed upon receipt of a court order from the Bahamas. The Registrar confirmed that it had forwarded a copy of the Complainant's email to the Respondent.
5. Parties' Contentions
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use and the Respondent is engaged in a clear case of typo-squatting by confusing and profiting from consumers mistyping the Complainant's actual website address. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered and use the Disputed Domain Name to attract for commercial gain, Internet users to 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.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy 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 has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant's WAYFAIR mark has been registered and used in connection to its global e-commerce business.
The Disputed Domain Name incorporates the Complainant's WAYFAIR mark in its entirety with the sole exception of substituting the letter "r" with the letter "t". The substitution of a mere letter does not significantly affect the appearance or pronunciation of the Disputed Domain Name. On most keyboards, the letter "r" is right next to the letter "t", which makes a typographical error more likely. This practice is commonly referred to as typo-squatting and creates virtually identical and/or confusingly similar marks to the Complainant's trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar; WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. There is a high likelihood that Respondent is making commercial gain by virtue of randomly redirecting Internet users to websites selling products connected or identical to goods marketed by the Complainant. Commercial gain appears to be based on the misleading diversion of some consumers, to the extent they navigate to the Disputed Domain Name because they believe it is associated with the Complainant. The likelihood that Internet users are misled is increased by the content of the websites to which the Disputed Domain Name redirects, which includes products advertised on the Complainant's actual websites as well as on the websites of its competitors. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant's trademark in its entirety with the substitution of a single letter. This indicates that the Disputed Domain Name was registered for the purpose of typo-squatting. Moreover, the Disputed Domain Name is programmed to redirect to different websites, which includes the Complainant's actual website. As a result, the Respondent must have had knowledge of the Complainant's rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith.
The Respondent is using the Disputed Domain Name to randomly redirect to other websites offering products identical or similar to those of the Complainant. These websites include the Complainant's actual website as well as those of its competitors. The panel finds that such a use indicates the intentional attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
Furthermore, the Panel holds that the substitution of the letter "r" with the letter "t" in the term WAYFAIR is a form of typo-squatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Therefore, the Panel finds that it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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 <wayfait.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: May 28, 2018