WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roset USA Corporation / Roset S.A. v. Perfect Privacy, LLC / Zhifeng Hao
Case No. D2019-0255
1. The Parties
The Complainants are Roset USA Corporation of New York, New York, United States of America (“United States”) and Roset S.A. of Briord, France, represented by Shwal & Platt, United States.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Zhifeng Hao of Huizhou, China, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <togoliving.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 1, 2019, 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 Complainants on February 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 5, 2019.
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 of the Complaint, and the proceedings commenced on February 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Response was filed with the Center on February 27, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 8, 2019. 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 Complainants, Roset USA Corporation (“First Complainant”) and Roset S.A. (“Second Complainant”) are under common ownership and control, as a part of Groupe Roset S.A, which designs, manufactures, and distributes modern furniture under the name of “Ligne Roset”. The company was founded in 1860 and is based in Briord, France. The Complainants have over 200 stores and more than 1,000 retail distributors worldwide. The Complainants manufacture and sell a specific design of sofa, known as its “Togo” line, worldwide.
The First Complainant is the holder of a United States word mark TOGO, which it uses in connection with its furniture products and services. The First Complainant’s TOGO word mark is registered with the United States Patent and Trademark Office (“USPTO”) under No. 3715041 on November 24, 2009, in class 20 for furniture.
The Disputed Domain Name was registered by the Respondent on December 24, 2018, using a proxy service. The Disputed Domain Name currently resolves to a website offering for sale TOGO sofas which are virtually identical to the TOGO line of the Complainants and for which the Complainants hold valid design rights (e.g.,Design registration No. 112398 of February 14, 1974, with the French Institute for Intellectual Property (“INPI”) and United States Design Patent No. 246,492 of November 29, 1977, with the USPTO). On the homepage of the website connected to the Disputed Domain Name, the following text is displayed: “Our experienced craftsmen produce the Togo reproduction that is identical to original Togo Sofa [sic]”. Additionally, on the “About” page of the website connected to the Disputed Domain Name, the following disclaimer is displayed: “Please note that this is not the Togo, nor is it manufactured by or affiliated with Ligne Roset”.
On January 17, 2019, the Complainants’ representative sent a cease and desist letter to the Respondent via priority mail and email notifying the Respondent of the Complainants’ rights and demanding the immediate cease and desist of the use of the Complainants’ trademarks and the corresponding domain name. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainants consider the Disputed Domain Name to be confusingly similar to a trademark in which they claim to have rights. The Complainants further claim that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainants, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainants, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainants. Finally, the Complainants claim that the Disputed Domain Name was registered and is being used in bad faith, as the website connected to the Disputed Domain Name offers for sale alleged “Togo” goods that are likely to be counterfeited products of the Complainants’ original TOGO line.
The Respondent claims to be using the Disputed Domain Name in connection with a genuine business as it does not represent its line of sofas and household goods as being manufactured by the Complainants. The Respondent further contends that the term “Togo Living” is not meant to refer to the Complainants or their TOGO mark but is rather meant to reflect the lifestyle and culture of the country Togo. Finally, the Respondent claims that the designs on the website connected to the Disputed Domain Name are categorically different from those of the Complainants.
6. Discussion and Findings
6.1. Multiple Complainants
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation ((see section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the present case, the Complainants belong to the same corporate group, Groupe Roset S.A., and are thus under common control and management. Since the Complainants both hold rights in the TOGO mark and design, demonstrating their specific common grievance against the Respondent, and given that it would be equitable and procedurally efficient to consolidate the proceeding for both Complainants, the Panel accepts that in the case at hand a single Complaint was brought by two Complainants against a single Respondent.
6.2. Substantive Elements of the Policy
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 Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainants 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 Complainants to succeed they 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 Complainants have 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 Complainants must first establish that there is a trademark or service mark in which they have rights. The Complainants have clearly established that there is a trademark in which the Complainants have rights. The Complainants’ TOGO mark has been registered and used in connection to its furniture products and services.
The Disputed Domain Name incorporates the Complainants’ TOGO trademark in its entirety, merely adding the suffix “living”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
The Panel is of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet‑australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012‑0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007‑1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainants have rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainants’ TOGO trademark. Accordingly, the Complainants have made out the first of the three elements of the Policy that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainants 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 (seeWIPO Overview 3.0, section 2.1, 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 Complainants. There are no indications that a connection between the Complainants 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. The Respondent uses the Disputed Domain Name to refer to a website offering for sale various kinds of sofas which are virtually identical to the Complainants’ protected TOGO design and marketed under the Complainants’ TOGO trademark. Since the Complainants did not authorize this use, the Panel determines that the Respondent is using the website connected to the Disputed Domain Name to offer for sale counterfeit goods. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
Further, the Respondent does not show to be an authorized reseller of the Complainants. To the contrary, the Respondent specifically indicates on the website connected to the Disputed Domain Name that the sofas offered for sale are “Togo reproductions that are identical to the original Togo Sofa”. Furthermore, the Respondent expressly disclaims on its website that the sofas are not manufactured by the Complainants and that the Respondent is not affiliated with the Complainants. The Respondent’s argument that the term “Togo Living” and the sofas offered on its website are not meant to refer to the Complainants or their TOGO mark but are rather meant to reflect the lifestyle and culture of the country Togo is therefore not credible.
As to the disclaimer on the Respondent’s website stating: “Please note that this is not the Togo, nor is it manufactured by or affiliated with Ligne Roset”, the Panel notes that the composition of the Disputed Domain Name is such, that it effectively impersonates or suggests sponsorship or endorsement by the Complainants. See section 2.5.1 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainants succeed on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainants 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 attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainants’ 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 Complainants and their rights in the TOGO trademark when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainants’ distinctive TOGO trademark in its entirety with the addition of the term “living”. Furthermore, the Respondent makes express reference to the Complainants on the website connected to the Disputed Domain Name through a disclaimer indicating that it is not affiliated with the Complainants and that the products sold on the website are identical reproductions of the TOGO products of the Complainants. The Panel therefore finds that the Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).
The Panel finds that by the prominent use of the Complainants’ trademark, the website at the Disputed Domain Name is being used in order to misrepresent itself as an official website of the Complainants or at least to deceive Internet users as to the affiliation, connection, or association of the website with the Complainants.
In the instant case, the Respondent is using the Complainants’ TOGO trademark without the Complainants’ authorization to intentionally sell products reproducing the Complainants’ protected design in order to trade off the Complainants’ goodwill and reputation associated with the TOGO mark. The likelihood of confusion with the Complainants’ mark is clearly with the intention of attracting Internet users for commercial gain, since the purpose of the website is to sell sofas carrying the Complainants’ TOGO mark and design, which are likely to be counterfeited products.
With regards to the above-mentioned disclaimer, the Panel notes that the use of the website at the Disputed Domain Name cannot be considered bona fide as the overall misleading impression that it is in some way affiliated with the Complainants, is not dispelled by such disclaimer. With reference to section 3.7 of the WIPO Overview 3.0, the Panel notes that where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith.
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, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainants also succeed 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 <togoliving.com> be transferred to the Complainants.
Flip Jan Claude Petillion
Date: March 20, 2019