WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. v. Whois Agent (363290973), Whois Privacy Protection Service, Inc. / George Washere
Case No. D2019-2340
1. The Parties
The Complainant is Williams-Sonoma, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Whois Agent (363290973), Whois Privacy Protection Service, Inc., United States / George Washere, Panama.
2. The Domain Name and Registrar
The disputed domain name <williams-soonoma.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 Complainant on October 8, 2019, 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 October 15, 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 October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 21, 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 Complainant was established in 1956 and is a premier specialty retailer of home products that sells its products through retail stores and catalogs, and on the Internet via its e-commerce sites such as “www.williams-sonoma.com”.
The Complainant holds several registrations of the WILLIAMS-SONOMA mark for a wide range of goods and services including the United States trademark WILLIAMS-SONOMA, registered on May 30, 2000, registration number 2353758, for retail services et al. in class 35.
The Respondent registered the disputed domain name on September 3, 2019. The disputed domain name redirects users to a third-party website, which purportedly is part of a malware distribution scheme.
5. Parties’ Contentions
The Complainant asserts, that the disputed domain name is confusingly similar to the Complainant’s WILLIAMS-SONOMA mark, since it contains the mark in its entirety with only the addition of another letter “o”.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It is not authorized by the Complainant in any manner nor is the Respondent an authorized dealer, retailer, or reseller of the Complainant’s goods. Also, the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, nor is it making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name is being used for a website that appears to be disseminating malware.
Finally, the Complainant asserts that the Respondent knew or should have known of the Complainant’s famous WILLIAMS-SONOMA mark and thus registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <williams-soonoma.com> is confusingly similar to the Complainant’s registered trademark WILLIAMS-SONOMA since it contains the mark in its entirety, the only difference being the addition of the letter “o”. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the absence of any reply to the Complaint and the way that the Respondent has been and is using the disputed domain name does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the Complainant’s long term use of its trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, according to the Complainant the Respondent used the disputed domain at the time when the Complaint was filed to redirect to a website that purportedly was part of a malware distribution scheme. Presently, the disputed domain name is still used to redirect to a third-party website that is unrelated to the Complainant and its activities, and from which the Respondent may be able to generate a revenue or otherwise obtain a commercial gain.
The Panel finds that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website as mentioned in terms of Policy paragraph 4(b)(iv).
Noting that the disputed domain name incorporates a registered and reputed trademark, that no Response has been filed, and that there appears to be no plausible good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) are also fulfilled in this case.
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 <williams-soonoma.com> be transferred to the Complainant.
Date: December 10, 2019