WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. Garry Kushin

Case No. D2021-1305

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 Garry Kushin, United States.

2. The Domain Name and Registrar

The disputed domain name <pottery-barn-kids.net> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2021, 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.

The Center appointed Ellen B Shankman as the sole panelist in this matter on June 3, 2021. 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 date of the Domain Name registration was confirmed by the Registrar to be August 28, 2016.

The Complainant commenced using the trademark POTTERY BARN in commerce at least as early as 1956 in connection with a wide variety of home goods, and the trademark POTTERY BARN KIDS at least as early as 1999 (the “POTTERY BARN Marks”). POTTERY BARN KIDS is the subject of U.S. Registration No. 2383910issued by the United States Patent and Trademark Office on September 5, 2000, and POTTERY BARN is the subject of U.S. Registration No. 2021077 issued on December 3, 1996. Under the POTTERY BARN and POTTERY BARN-formative marks, the Complainant for many years has offered a wide range of products and services, including, among many others, mail order and online catalog services, furniture, bedding, toys, rugs and window treatments, accessories, backpacks and luggage, and other printed materials. The POTTERY BARN Marks have been used in connection with such goods continuously from the time adopted until the present, and predate the date of the Domain Name registration.

The Complainant provided screen shots of the website connected with the Domain Name that shows use of the Complainant’s marks and shows how the website connects and links to the websites of the Complainant’s competitors.

The Panel also conducted an independent search to determine that the Domain Name currently resolves to an active site purportedly (re)selling Pottery Barn and Pottery Barn Kids goods.

5. Parties’ Contentions

A. Complainant

The Complainant Williams-Sonoma, Inc. is a premier specialty retailer of home and office furnishings and sells nationwide through retail stores, catalogs, and the internet. The Complainant’s brands, including its Pottery Barn line of home furnishings and textiles, are among the most successful brands in the industry. The Complainant also operates the PBTeen, Pottery Barn Kids, West Elm, Williams Sonoma, Mark and Graham, and Rejuvenation brands. From its beginnings in 1956 selling an array of expertly crafted products, the Pottery Barn brand has expanded to hundreds of offerings from around the world; retail stores in the U.S. and international markets; a direct mail business that distributes millions of catalogs annually; and highly successful e-commerce sites, including <potterybarnkids.com>. The Pottery Barn brand has sold billions of dollars’ worth of merchandise worldwide. For example, the Complainant’s brand’s worldwide revenue has exceeded USD 2 billion for several years, and exceeded USD 2.5 billion in 2020. The Complainant is the exclusive owner of the U.S. Trademark Registrations for the well-known POTTERY BARN Marks. The Complainant maintains registrations in the U.S. and around the world for POTTERY BARN-formative marks and related stylized marks, and have been continuously used since as early as 1956.

The Complaint contends that in registering the Domain Name, the Respondent uses the Complainant’s marks in their entirety to capitalize on consumer confusion and divert online traffic from the Complainant’s websites to the Domain Name, obtaining illicit pecuniary gain by trading on the Complainant’s well-known POTTERY BARN Marks, and/or precluding the Complainant from registering and using the Domain Name.

The Domain Name resolves to a website that falsely passes itself off as “Pottery Barn Kids”, prominently displaying the POTTERY BARN Marks, including in the header of the landing page, and using the meta title “Pottery Barn Kids”. The website contains links promoting the Complainant’s competitors, and links to unauthorized product listings for the Complainant’s products and those of its competitors. The Respondent has coded the links to redirect and pass through other websites as part of an ad network before reaching the final landing page, presumably resulting in referral fees or other revenue to the Respondent.

There can be no doubt that the Respondent registered and is using the Infringing Domain Name to capitalize on the Complainant’s famous mark by luring consumers looking for goods offered under the POTTERY BARN Marks, and directing them to the Complainant’s competitors or to resellers, while generating profits for the Respondent. The Respondent is not authorized to use the Complainant’s trademarks, and is not an authorized dealer, retailer, or reseller of the Complainant’s goods. The Respondent’s Domain Name includes the entire POTTERY BARN KIDS mark, with only the addition of two hyphens, and the generic Top Level Domain (gTLD) “.net”. Not only is the Respondent’s Domain Name confusingly similar, it is identical to the Complainant’s POTTERY BARN KIDS mark. The addition of hyphens is insufficient to distinguish the Domain Name from the Complainant’s marks.

The Respondent’s bad faith registration and use are evident in the Respondent’s leverage of the notoriety of the POTTERY BARN Marks to attract Internet users, monetize the web traffic that flows through the Domain Name (including by directing users to the Complainant’s competitors or to resellers), and derive a financial benefit therefrom. Such use of the Domain Name for profit is an act of bad faith. The Respondent has acted in bad faith by registering and using the Domain Name for a revenue-generating purpose, seeking to attract Internet users by creating a likelihood of confusion with the Complainant’s POTTERY BARN Marks and siphoning Internet traffic away from the Complainant’s official websites. Because of the Respondent’s clear knowledge of the Complainant’s trademark rights, and the Respondent’s use of the Complainant’s marks for unlawful commercial gain, the Complainant argues that it is clear that the Respondent’s actions constitute bad faith use of the Domain Name.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks POTTERY BARN and POTTERY BARN KIDS, in respect of a wide array of household goods. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of hyphens between the words “pottery barn kids” and the gTLD “.net” to the Complainant’s trademarks does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Further, the Respondent has utilized the Complainant’s marks in its website, and as such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent 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 used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for POTTERY BARN and POTTERY BARN KIDS.

Further, the Panel finds that the Domain Name integrates the Complainant’s marks in their entirety and that the Domain Name is confusingly similar to the Complainant’s trademark. In addition, the Panel finds that the mere addition of hyphens between the terms to the Domain Name does not change the overall impression of the Domain Name, being the Complainant’s mark recognizable. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “[t]he incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the POTTERY BARN Marks, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to redirect Internet users to various third party websites, including competing websites, almost certainly for the Respondent’s commercial gain, which is not a legitimate noncommercial purpose.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

The Panel agrees with the Complainant’s argument that the elements of the Domain Name itself, which incorporates the Complainant’s POTTERY BARN and POTTERY BARN KIDS Marks in their entirety, make it clear that the Respondent knew about the Complainant. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). Such unauthorized use with prior knowledge is not legitimate.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

By registering the Domain Name that comprises the Complainant’s trademarks in their entirety, together with the photos of the Complainant’s goods on the website, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. The Panel agrees with the Complainant’s contention that, indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this distinctive sign or about the Complainant to its own website, where sponsored/competitive links had been published. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

A respondent’s use of a complainant’s mark – for said respondent’s commercial benefit – to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with paragraph 4(b)(iv) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.

The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual or constructive knowledge of the Complainant’s trademarks and that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.

In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Indeed, prior UDRP panels have recognized that the POTTERY BARN Marks are well-known and famous. See WilliamsSonoma, Inc. v. Kimjunsoo, WIPO Case No. D2017-0948 (noting that the Complainant is the owner of well-known marks, including POTTERY BARN, POTTERY BARN KIDS, PB KIDS and PB TEEN and transferring the <pbkidskorea.com>, <pbkidskorea.net>, <potterybarnkidskorea.com>, <potterybarnkidskorea.net>, and <potterybarnkorea.net> domain names to the Complainant); Williams-Sonoma, Inc. v. Zhao Jiafei, WIPO Case No. D2014-0938 (finding the Complainant’s marks famous and well-known and transferring the domain names <potterybarn.info> and <williams-sonoma.info> to the Complainant).

The Panel agrees with the Complainant that the Respondent’s bad faith registration and use are evident in the Respondent’s leverage of the notoriety of the POTTERY BARN Marks to attract Internet users, monetize the web traffic that flows through the Domain Name (including by directing users to the Complainant’s competitors or to resellers), and derive a financial benefit therefrom. Such use of the Domain Name for profit is an act of bad faith. See, e.g., LF, LLC v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0726 (“it is evident to the Panel that the Respondent was aware of the Complainant and its trademark as the disputed domain name resolves to a website that provides links to other websites some of which offer home appliances and home improvement products.”)

The Respondent’s bad faith registration and use of the Domain Name are also evidenced by the fact that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s POTTERY BARN Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See e.g. David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (“A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.”).

The Panel finds that this is a classic example of the unfortunate abusive and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent has registered and is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark in bad faith.

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant by evidence of use of its trademarks in the website, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name <pottery-barn-kids.net> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: June 14, 2021